Category Archives: Response to complaint

Rights to Dictionary Words and Common Phrases as Trademarks and Domain Names

Posted on August 10, 2011 by gmlevine

As a trademark descends on the scale of protectability its holder has less cause for complaint. If it were otherwise a trademark holder would have the ability to lock up and command a community’s cultural and linguistic heritage. Registering a domain name composed of common words and descriptive phrases is not abusive merely by being identical or confusingly similar to a complainant’s trademark. Although trademark holders and domain name registrants have as a common purpose to attract attention they are different in kind. A holder deploys its trademark as a source indicator whereas a non abusive respondent chooses a domain name for its power to attract Internet users for what the name is understood to mean without reference to any … Read the rest

Posted in Dictionary words/Descriptive terms, Good faith registration, Knowledge, Links to competitive goods or services, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Response to complaint, Targeting / Not targeting | Leave a comment

First to Register Entitled to Domain Name if Registered in Good Faith

Posted on November 13, 2010 by gmlevine

The doctrine that the first person to register a domain name is entitled to keep it does not secure a right under all circumstances, Educational Tertiary Service v TOEFL, D2000-0044 (WIPO March 16, 2000), although it will if the registration is made in good faith, XIHA Oy v. Qiu Shengjie, Chen Qing Mei, D2010-1204 (WIPO October 28, 2010). A registrant cannot, for example, intentionally appropriate a trademark for its domain name and claim priority because the trademark holder failed to register it first ,which was the case in Educational Tertiary Service. Good faith is evidenced in one of two ways. The domain name was registered prior to the acquisition of a registered or common law trademark. Or, … Read the rest

Posted in Burden of proof, Earlier registered domain name, First to register, Later acquired trademark rights, Para. 4(c)(i) of the Policy, Response to complaint | Leave a comment

Rare Though a Word May Be If It Is Recorded in a Dictionary It Is Available For Non Trademark Use

Posted on September 20, 2010 by gmlevine

Hershey manufactures a “candy twist” under the trademark TWIZZLERS. The word “twizzler” does not appear in standard desk dictionaries; it is not to be found in Merriam Webster’s Third International Dictionary. It is found in the Oxford English Dictionary where its first use is recorded as 1825. It appears to have entered the vocabulary as dialect word meaning “a twist or turn; a change of direction” (as in “there may be so many turns and twizzles”). A “twizzle” appears to be an industrial part in a spinning machine. In its verb form it means “to rotate rapidly, spin, twirl.” The candy that goes by the name “twizzlers” consists of lengths of licorice twisted around each other. One supposes that a … Read the rest

Posted in Dictionary words/Descriptive terms, Knowledge, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Proof, Response to complaint, UDRP | Leave a comment

Making Changes to the Website After Notice and Filing of Complaint

Posted on August 27, 2010 by gmlevine

Despite misgivings expressed by some panelists over the past year (the Octogen line of cases), where there is no evidence of bad faith registration the Policy does not penalize a respondent for changing use before notice and filing of complaint. After notice and filing of complaint there are different rules. Inadvertent transgressors typically involving domain names composed of generic or descriptive words and combinations used in their commonplace sense are treated more kindly than respondents advertently taking advantage of the complainant or its trademark. Yesterday’s case, American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Nat. Arb. Forum July 27, 2010)(<americanway.com>) brought attention to this issue and it is worth reporting.

The Panel in that case noted … Read the rest

Posted in Cybersquatting, Evidence, Good faith registration, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Response to complaint, UDRP | Leave a comment

The Work of Early Panels in Establishing the UDRP Jurisprudence

Posted on August 19, 2010 by gmlevine

The first five UDRP decisions (1 commenced in1999 and the first four of 2000) were decided in Complainants’ favor without Respondents’ participation. Default gives the complainant an advantage, but only to the extent that the Panel is working with a one-sided record. Otherwise, the burden of proof remains with the complainant on all elements of the Policy. Failure to appear and plead is not an admission of bad faith registration and use as it is in a court of law. The fifth decision, Telaxis Communications Corp. v. William E. Minkle, D2000-0005 (WIPO March 5, 2000) is based on a full record. It reveals that the parties had entered into negotiations without success, but once the UDRP proceedings commenced there … Read the rest

Posted in Cybersquatting, Domain names, IP-Trademark, Jurisprudence, Lanham Act, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Response to complaint, UDRP | Leave a comment