Category Archives: Surname

Mixed Use (Vanity Email and PPC) of Surname Trademarks

Posted on November 25, 2012 by Gmlevine

var _gaq = _gaq || [];
_gaq.push(['_setAccount', 'UA-11310882-1']);
_gaq.push(['_trackPageview']);

(function() {
var ga = document.createElement(‘script’); ga.type = ‘text/javascript’; ga.async = true;
ga.src = (‘https:’ == document.location.protocol ? ‘https://ssl’ : ‘http://www’) + ‘.google-analytics.com/ga.js’;
var s = document.getElementsByTagName(‘script’)[0]; s.parentNode.insertBefore(ga, s);
})();

Registering surnames for operating a vanity email service is a legitimate business model. The problem comes when the trademark is well-known or famous and respondent also deploys the domain name for an advertising website. Tucows.com Co. is at the center of this kind of dispute. It has succeeded where the use is consistent with the model – Ancien Restaurant Chartier v. Tucows.com Co., D2008-0272 (WIPO May 6, 2008); Markel Corporation. v. Tucows.com Co., D2007-1750 (WIPO June 5, 2008)– and … Read the rest

Posted in Abusive intent, Advertising, Cybersquatting, Para. 4(a)(ii) of the Policy, Para. 4(b)(iv) of the Policy, Pay-per-click, Personal name, Surname, Suspension / termination, Vanity e-mail | Tagged , , | Leave a comment

Surname Trademarks and Rights to Corresponding Domain Names

Posted on September 21, 2011 by gmlevine

Surnames may qualify as trademarks, but to the extent they are common (and provided that there is no intent to take advantage of the complainant or its trademark) they share with trademark owners the right to use them in domain names. Ordinarily, surnames are treated no differently than generic words. (Surnames qua surnames are not registrable as trademarks, §1052(e)(4) of the Trademark Act). Merely competing for space and attention with a trademark holder to use one’s own name for one’s own Internet presence does not rise to an infringement. A respondent has a right to a “domain name [that] reflects [his] initials [and his] … first and middle name, combined with [his] entire last name,” Modefine S.A. v. A.R. Mani… Read the rest

Posted in ftp services, Legitimate use, Para. 4(c)(ii) of the Policy, Personal name, Surname, Vanity e-mail, Website services | Leave a comment

Complaining Law Firm and Partners: UDRP's Limited Subject Matter Jurisdiction

Posted on July 22, 2011 by gmlevine

Paragraph 4(c)(iii) of the Policy reads: “[Y]ou are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” As the Panel points out in Proskauer Rose LLP v. Leslie Turner, D2011-0675 (WIPO June 30, 2011) “free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name … [but] the list … is not exclusive.” UDRP panelists quickly concluded that free speech for criticism and commentary was subsumed in “legitimate noncommercial or fair use.” Also, “[t]he Internet is above all a framework for global communication, and the right to free … Read the rest

Posted in Defamation, Fair use, Noncommercial, Para. 4(a)(i) of the Policy, Para. 4(c)(iii) of the Policy, Personal name, Surname | Leave a comment

Proving Trademark Right: Unregistered and Tradename

Posted on July 17, 2011 by gmlevine

Paragraph 4(a)(i) of the Policy is silent on the rights the complainant seeks to vindicate. However, within the first few months of inception Panels concluded that the term “rights” in paragraph 4(a)(i) of the Policy was inclusive. The Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names,” The British Broadcasting Corporation v. Jaime Renteria, D2000-0050 (WIPO March 23, 2000); SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO April 13, 2000). This construction is supported by the WIPO Final Report, at paragraph 150(ii) – “[t]he procedure should allow all relevant rights and interests of the parties to be considered.” It is also supported in the representation and warranty … Read the rest

Posted in IP-Trademark, Para. 4(a)(i) of the Policy, Personal name, Standing, Surname, Trade names, Unregistered trademark | Leave a comment

Heavy Burden of Proving Bad Faith for Surname Trademarks

Posted on September 17, 2010 by gmlevine

Complainants whose trademarks are composed of surnames relatively rare in their marketplace but held by a respondent bearing that name do not have a superior right to the disputed domain name whatever their pedigree may be. The well established rule is that “[t]rademark owners shall not be allowed to use the Policy to dispossess summarily a third party of a domain name reflecting his or her surname,” G.A. Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO July 20, 2001). It is not cybersquatting for a respondent to register a domain name identical or confusingly similar to a trademark that he has a right to maintain. Paragraph 4(c)(ii) of the Policy provides that the respondent is entitled to the domain name … Read the rest

Posted in Good faith registration, Para. 4(a)(i) of the Policy, Para. 4(c)(ii) of the Policy, Personal name, Proof, Surname, UDRP Rule 10(d) (evidence) | Leave a comment