Category Archives: Totality of facts

Parties in Same Business and Operating in the Same Geographical Area

Posted on January 24, 2012 by Gmlevine

Distance is not only geographical and temporal but also measured by product or service offerings. The principle underlying temporal distance is that the respondent could not have registered the domain name in bad faith if the trademark had not then come into existence. Subsequent bad faith use (except in the view of panelists who argue for “retrospective” bad faith) is not grounds for forfeiture of the domain name under UDRP. The greater the distance of all three combined the less likely that the complainant can prevail on the bad faith element, which is the ultimate test.

Geographical distance by itself does not favor the respondent’s good faith claim, but temporal distance (acquiring the domain name prior to existence of the … Read the rest

Posted in Denial of knowledge, Geographic distance, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Prima facie case, Totality of facts, Website content | Tagged , , , , | 1 Comment

Regaining a Hijacked Domain Name

Posted on September 16, 2011 by gmlevine

“Given the human capacity for mischief in all its forms the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to exhaustively enumerate all its varieties,” Worldcom Exchange, Inc v. Wei.com, Inc., D2004-0955 (WIPO January 5, 2005) (<wei.com>). One of the unlisted bases of bad faith is domain name hijacking. The most recent example is Piearson Industries, Inc. d/b/a Centerfire Firearms v. Dan F / Joe Mayo, FA1107001397844 (Nat. Arb. Forum August 12, 2011). “While Respondent’s use of the disputed <centerfirefirearms.com> domain name does not fit squarely within the elements of Policy ¶ 4(b), the Panel can, and does, find evidence of bad faith registration under Policy ¶ 4(b).” citing Do The Hustle, … Read the rest

Posted in Fraudulent transfer, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Paragraph 4(c) of the Policy, Recovering domain name, Targeting, Totality of facts, UDRP Rule 10(d) (evidence) | Leave a comment

Totality of Facts Analysis of Bad Faith for Common Words and Descriptive Phrases

Posted on July 20, 2011 by gmlevine

Friction between holders of trademarks composed of common words or descriptive phrases and domain name registrants rests on the variable meanings of the words and phrases. For the complainant its choice acts as a source indicator; for the respondent the same words convey only their attributed (cultural) meanings. As a general rule respondents have a right to register and use domain names composed of commonly used words and descriptive phrases provided that the registrations are in good faith. The proviso “good faith” most obviously applies to registrations that precede a complainant’s trademark acquisition. Post-registration puts in issue respondent’s knowledge of the complainant’s trademark and use of the domain name. Respondents’ often expressed view that common words and phrases are always … Read the rest

Posted in Abusive intent, Burden of proof, Constructive notice, Dictionary words/Descriptive terms, Generic/Descriptive terms, Later acquired trademark rights, Para. 4(a)(iii) of the Policy, Totality of facts | Leave a comment