Category Archives: Reputation in the marketplace

Insufficient Evidence for Respondent’s Lack of Rights or Legitimate Interests – Not Even the Iconic Trademark Owner Is Excused From Having to Offer Proof

Posted on April 10, 2013 by Gmlevine

Just as complainants cannot prevail on the strength of their trademarks which only proves the first requirement that it has standing to maintain the proceedings, so respondents do not forfeit their domain names on default of responding to the complaint. This message continues to be lost even to the most prestigious law firms and the wisest counselors. If nothing but suppositional allegations are offered as proof for paragraphs 4(a)(ii) or 4(a)(iii) relief will be denied. Should that verdict be applied to iconic trademarks such as AOL, as it was in AOL, Inc. v. ChengshuangLi, FA1302001483339 (Nat. Arb. Forum March 26, 2013)? The Panel made the following pronouncement: the “Complainant’s entire argument” on the issue of rights or legitimate interests … Read the rest

Posted in Abusive intent, Burden of proof, Burden of proof / persuasion, Cybersquatting / Not cybersquatting, Default, Insufficiency of evidence, Intent / Tartgeting, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Reputation in the marketplace, UDRP Rule 10(d) (evidence) | Tagged , | Leave a comment

Untrue Allegations In and False Certification of Complaint: Major International Corporation Represented By Counsel

Posted on March 17, 2013 by Gmlevine

Respondents default in responding to complaints approximately 85% of the time so that if there are materially false allegations in the complaint and there is no response the untruths will likely not be picked up. When a respondent appears and challenges the truth of material allegations Complainant (and no less the attorney if complaint bears his certification) has an ethics problem. As the Panel states in The Procter & Gamble Company v. Marchex Sales, Inc., D2012-2179 (WIPO February 22, 2013) () in considering Respondent’s request for a finding of reverse domain name hijacking:

Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International [trademark] registration [which Complainant acquired by

… Read the rest

Posted in Abusive intent, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Priority of use, Reputation in the marketplace, Reverse domain name hijacking, Successor in interest, Targeting / Not targeting, Trademark in mind, UDRP Rule 3(b)(xiv) | Tagged , , , | Leave a comment

No Standing for “Intent to Use” Applications

Posted on December 4, 2012 by Gmlevine

While trademark registration on the Principal Register is prima facie proof of validity and some consideration is given to registrations on the Supplemental Register on proof of acquired distinctiveness, no right accrues to a pending trademark application. The “broad consensus under the Policy is that a trademark application alone is not sufficient to establish rights in a mark.” PRGRS, Inc. v. Pak, D2002-0077 (WIPO April 24, 2002). A certificate of registration satisfies the threshold requirement while a mere application to register a trademark confers no rights. “No such presumption arises from a pending application to register a mark.” Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 17, 2001). Application “for a mark [as opposed to issuance of … Read the rest

Posted in Application for trademark, Burden of proof, Intent to use, Para. 4(a)(i) of the Policy, Reputation in the marketplace, Standing, Targeting / Not targeting, UDRP Rule 10(d) (evidence), UDRP Rule 3(c) | Tagged | Leave a comment

Common Word Trademarks Owned by Major Brand Complainants: How Protectable?

Posted on May 7, 2012 by Gmlevine

Common word trademarks, PRICELESS for example, are no less common for being owned by a major brand complainant and no more protectable from others using identical or confusingly similar words in their ordinary senses than if they were owned by parties of no market stature. As a complainant’s choice descends the scale, the less protectable the trademark. It is not as though common words never ascend in strength. They can when selected as arbitrary signs. The distinctiveness of APPLE, ORANGE and BLACKBERRY (to take only fruit names) is not because the owners are recognized in the marketplace as sources of produce.

The point about commonness and weakness is made in a duo of decisions by the same Panel, Mastercard International … Read the rest

Posted in Abusive intent, Complainant "in mind", Cybersquatting / Not cybersquatting, Likelihood of confusion, Para. 4(a)(ii) of the Policy, Paragraph 4(c) of the Policy, Reputation in the marketplace, Speculating / Monetizing, Targeting / Not targeting, UDRP Rule 10(d) (evidence) | Tagged , , , | Leave a comment

Combinations of Random Letters (Acronyms, Initials and Abbreviations) Capable of Use By Many Third Parties Other Than Complainant

Posted on March 7, 2012 by Gmlevine

Combinations of letters are either acronyms or abbreviations for a company’s name – protectable or not against domain name registrants depending on the trademark’s strength – or simply a string of random letters (“random” that is to respondents) that are capable of use (when acronymic) by many third parties other than complainant trademark holders. Panels have noted that domain names composed of few letters are “extremely prized” Deutsch Welle v. Diamondware Capital Ltd, D2000-1202 (WIPO January 2, 2001); the Panel in Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, D2000-1001 (WIPO October 3, 2000) rejected Complainant’s analogy of “pi” with “vw” or “ibm.” They can be attractive to many persons … Read the rest

Posted in Acronyms / initials / abbreviations, Complainant "in mind", Good faith registration/ Bad faith use, High volume registrant, Para. 4(a)(iii) of the Policy, Para. 4(b)(iv) of the Policy, Reputation in the marketplace, Trademark in mind, UDRP Rule 10(d) (evidence), Website services | Tagged , , | Leave a comment