Category Archives: UDRP

Inadvertent Lapse of Both Trademark Registration and Domain Name

Posted on April 22, 2013 by Gmlevine

Falling out of the trademark registry for failure to file a section 8 affidavit may be embarrassing but not fatal; losing a domain name for inadvertence may be fatal depending on the strength or weakness of the trademark. In the canon of defenses, however, lapse does not prejudice a complainant’s standing to challenge a domain name holder. In Department of General Services, State of Maryland v. Domain Privacy Group, FA130300 1488524 (Nat. Arb. Forum April 2, 2013) Complainant’s trademark EMARYLAND MARKETPLACE was cancelled on October 5, 2012: the cause, “changeover in State personnel.” The Maryland Department of General Services re-applied for the trademark on February 13, 2013. Respondent jumped on the expired domain name immediately upon lapse.

In response … Read the rest

Posted in Abusive intent, bad faith use, Common law protection, Complainant "in mind", Cybersquatting, Inadvertent lapse of renewal, Para. 4(b)(iv) of the Policy, Renewal / Re-registration, Targeting, UDRP, Website content | Tagged , , | Leave a comment

Protecting Corresponding Domain Names to Trademarks When ICANN Expands Space for new gTLDs

Posted on April 1, 2013 by Gmlevine

ICANN has recently approved several rights protection mechanisms to counter cybersquatting for new gTLDs, including the Trademark Clearing House program (TMCH) which allows brand owners to submit their trademark details for entry into a centralized database and enable the rights holder, after verification, to participate in the sunrise program and Trademark Claims service across all eligible new gTLDs. The TMCH is described in a circular dated January 11, 2012. Sunrise rights refer to a stipulated period during which an owner of a registered trademark may register domain names in new generic Top Level Domains (gTLDs) prior to the registrar accepting registrations from the general public. Not all owners or trademark counsel are acquainted with the procedure to protect the … Read the rest

Posted in Inadvertent lapse of renewal, Sunrise, UDRP | Tagged , , , , | Leave a comment

Safe Harbor Under the ACPA: Reasonable Grounds for Believing Use Not Unlawful

Posted on March 12, 2013 by Gmlevine

Both the Anticybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Resolution Policy, paragraph 4(c)(i-iii) (UDRP) prescribe safe harbor defenses, but the ACPA provides a defense not expressly found in the UDRP: bad faith “shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.”15 U.S.C. §1125(d)(1)(B)(ii). The question is, How is the statute to be construed, narrowly or forgivingly? A good review of the answer, narrowly, can be found in Web-Adviso v. Trump, 11-cv-1413 (EDNY, February 28, 2013).

The ACPA imposes civil liability on a person who, “without regard to the goods … Read the rest

Posted in Anticybersquatting Consumer Protection Act, Cybersquatting, UDRP | Tagged , | Leave a comment

Demonstrable Preparations for Use Before Notice

Posted on March 7, 2013 by Gmlevine

The 3-member Panel in Cheezburger, Inc. v. WeKnowMemes LLC (c/o Dynadot Privacy), D2012-2452 (WIPO February 19, 2013) considered confusing similarity between KNOW YOUR MEME and <weknowthemes.com> “a close question … [b]ut the overall impression is sufficiently similar, especially for the Domain Name used for a competing website, that the Panel concludes the first Policy element has been satisfied.” While this met the test for standing, it was insufficient in light of Respondent’s rebuttal evidence that before notice it had established a web based service. It is a complainant’s burden to demonstrate that respondent chose the domain name with the intention of taking advantage of the trademark.

Where a domain name is a phrase composed of dictionary words that is … Read the rest

Posted in Acttive / passive use, Burden of proof / persuasion, Common expressions, Cybersquatting / Not cybersquatting, Evidence, Generic/Descriptive terms, Legitimate use, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, UDRP, Website content, Website services | Tagged , | Leave a comment

Allegations Alone are not Proof of a Trademark Right; Subsidiary Must Prove Consent

Posted on February 8, 2013 by Gmlevine

Although timing of a trademark registration is not a factor for standing it is critical in assessing bad faith. Unless complainant is able to persuasively demonstrate that its commercial persona preceded registration of the domain name the complaint must be dismissed since no amount of post-registration reputation can overcome evidence that the trademark was nonexistent at the earlier time. A variation on this principle is claimed authority by a subsidiary or division of a the trademark owner whose evidence falls short of demonstrating the relationship. The Complainant in Old Republic Home Protection Co., Inc. v. Direct Privacy ID 7F9AB, D2012-2366 (WIPO January 11, 2013) alleges a corporate relationship with the trademark owner. But the allegation is insufficient without proof.  … Read the rest

Posted in Authorized use, Para. 4(a)(i) of the Policy, Permissive use, Proof, Standing, UDRP, UDRP Rule 10(d) (evidence) | Tagged , , , , | Leave a comment