Category Archives: Trademark in mind

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

Defending Legitimate Interests: Common Words, Prejudice and Lapse of Time

Posted on June 11, 2012 by Gmlevine

We appear to have reached a stage on the Internet in which every dictionary word and many combinations have been spoken for as domain names. So much is this so that owners of newly minted trademarks composed of common words (who have not investigated domain name availability) find themselves having to buy the corresponding domain names from holders who have anticipated them. Although there have been quixotic proceedings to capture domain names, those acquired prior to trademark acquisition cannot by definition have been registered in bad faith. There are also situations in which long-standing trademark owners of common words and combinations wake up to find that others latterly registered domain names corresponding to their trademarks.

Capturing domain names identical or … Read the rest

Posted in Abusive intent, Burden of proof / persuasion, Common expressions, Dictionary words/Descriptive terms, Evidence, Laches, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Trademark in mind | Tagged , , | Leave a comment

Disputes Between Same Parties; Different Panels, Different Results

Posted on June 4, 2012 by Gmlevine

When Panels in different cases involving the same parties rule differently the question is whether one is wrong and the other right. Or, can both be right without their awards being inconsistent? A number of commentators have pointed to two cases brought by Bloomberg Finance L.P. questioningly.  In Case 1, Bloomberg Finance L.P. v. bloomberg, FA1204001440735 (Nat. Arb. Forum May 29, 2012) the Panel denied the Complaint, the effect of which leaves the domain name with the Respondent. In case 2, Bloomberg Finance L.P. v. Bloomberg Realty (India) Private Limited / Bloomberg, FA1204001439263 (Nat. Arb. Forum May 30, 2012) the Panel granted the Complaint for 14 domain name and denied two which it found were not confusingly similar … Read the rest

Posted in Dismissal vs denial of complaint, Para. 4 of the Policy, Para. 4(c)(iii) of the Policy, Paragraph 4(c) of the Policy, Scope of the Policy, Trademark in mind, Within / Outside Scope | Tagged , , | Leave a comment

Legitimacy and Good Faith Undermined by Knowledge of Complainant and its Trademark

Posted on May 21, 2012 by Gmlevine

Speculating, offering to sell and monetizing domain names composed or dictionary words and descriptive phrases without more are not actionable under the Policy even if respondent fails the right or legitimate interest test. The more is proof of intent at the time of registration to take advantage of complainant’s reputation in the marketplace. Bad faith is undermined or bolstered by respondent’s attempt (if it appears) to rebut complainant’s prima facie case. If rebuttal fails, bad faith principally rests on respondent’s knowledge of (or willful blindness to) complainant and its trademark and the content of the domain name. Knowledge is awareness of the complainant and its trademark, but there must also be targeting.

The point about abusive registration is underscored in … Read the rest

Posted in Abusive intent, Complainant "in mind", Cybersquatting, Denial of knowledge, Evidence, Knowledge, Para. 4(b)(i) of the Policy, Targeting, Trademark in mind | 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