Category Archives: Suspension / termination

Invoking UDRP’s Mutual Jurisdiction Under Paragraph 4(k) and Rule 18(a)

Posted on December 10, 2012 by Gmlevine

Registrants in acquiring domain names and trademark owners in complaining of abusive registration are both required to submit to the jurisdiction of stipulated courts with regard to the adjudication of disputes. The requirement in the registration agreement is traceable to ICANN’s Registration Accreditation Agreement with the registration. Paragraph 3.7.7.10 reads: “For the adjudication of disputes concerning or arising from use of the Registered Name, the Registered Name Holder shall submit, without prejudice to other potentially applicable jurisdictions, to the jurisdiction of the courts (1) of the Registered Name Holder’s domicile and (2) where Registrar is located.” The requirement that binds the complaining trademark owner to the same jurisdictions is found in the UDRP at 3(b)(xiii) and Rule 1 of the … Read the rest

Posted in Common law protection, Fraudulent transfer, Mutual jurisdiction, Standing, Suspension / termination, Transfer of domain name, UDRP Rule 1 (Mutual jurisdiction), UDRP Rule 18(a) | Tagged , , , , | Leave a comment

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

Suspending or Terminating a UDRP Proceeding

Posted on June 27, 2012 by Gmlevine

Paragraph 18(a) of the Rules of the Policy authorizes the Panel in its discretion to suspend or terminate a UDRP proceeding or proceed to a decision “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute.” The Rule contemplates that such a filing be made by respondent; if by a complainant, initiating a UDRP proceeding after commencing a legal proceeding would be abusive. Ordinarily, termination decisions are not published, but the Panel in Visible Technologies, Inc. v. Visibli Inc., D2012-0904 (WIPO June 15, 2012) explained why it was necessary in that case:

The fact that the Complainant has also brought the Complaint appears to be an unnecessary

… Read the rest

Posted in Anticybersquatting Consumer Protection Act, Lanham Act, Suspension / termination, UDRP Rule 18(a) | Tagged | 1 Comment

Request to Transfer the Domain Name and Forego the Usual UDRP Analysis

Posted on August 3, 2011 by gmlevine

Rule 17 of the Rules of the Policy provides alternative instructions for terminating a proceeding: “(a) If, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.” Subparagraph (b) also provides alternative instructions: “If, before the Panel’s decision is made, it becomes [1] unnecessary or [2] impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.”

The parties in Victoria’s Secret Stores Brand Management, Inc. v. Siarhei Leonau, FA1106001393866 (Nat. Arb. Forum June 28, 2011) did not exactly “agree on a settlement” – in fact, explicit mutual … Read the rest

Posted in Consent, IP-Trademark, Policing trademark, Suspension / termination, UDRP Rule 17(a), UDRP Rule 17(b) | Leave a comment

Discretion to Terminate a Proceeding When Parties Have Also Commenced a Court Action

Posted on May 25, 2011 by gmlevine

Discretion to Terminate a Proceeding When Parties Have Also Commenced a Court Action

The UDRP is not a coordinate forum to a court of law and was not designed to supplant a court of law. It offers has a circumscribed jurisdiction that empowers the Panel to order a domain name cancelled or transferred to the complainant. That is the extent of the relief a Panel may grant; either form is akin to a mandatory injunction. Nevertheless, a Panel has the discretion to continue the proceedings even in the face of a prior pending action in a court of law. Paragraph 18(a) of the Rules of the Policy provides that “[i]n the event of any legal proceedings initiated prior to or … Read the rest

Posted in Action in court of law, Jurisdiction, Scope of the Policy, Suspension / termination, UDRP Rule 18(a), Within / Outside Scope | Leave a comment