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Gerald M. Levine
Levine Samuel, LLP
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Trademark and Domain Name News
Category Archives: UDRP
Assessing Similarity of Part for Confusing Similarity of the Whole
The test for establishing confusing similarity is relatively modest. Low though the bar is set, however, it is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts. “The concept of ‘confusingly similar’ lies at the very heart of all trademark conflicts, where the test is whether the names are phonetically, visually or conceptually similar.” Advance Magazine Publishers v. MSA, Inc. & Moniker Privacy Servs., D2007-1743 (WIPO Feb. 28, 2008). In assessing domain names under the first element of the Policy panelists apply rules familiar to trademark infringement. Put another way, Todito.com, S.A. de C.V. v. Affordable Webhosting, Inc., D2004-0688 (Nat. Arb. Forum Oct. 11, 2004):
when determining whether . .
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Challenging Transfer Order Under the Anticybersquatting Consumer Protection Act
There is no administrative appeal to a UDRP order, but the aggrieved party has the right to challenge an order denying or transferring the disputed domain name in a court of law. For the respondent challenger, the UDRP provides a limited stay of 10 days to commence a legal action “against the complainant in a [mutual] jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure.” Paragraph 4(k) of the Policy (second sentence). The “mutual jurisdiction” requirement (discussed below) is a due process right that assures respondent of a venue. Absent a legal action the domain name will be transferred to the complainant.
The Anticybersquatting Consumer Protection Act, 15 U.S.C. §1114(2)(D)(v) (“ACPA”) provides,
A domain
Registration and Re-Registration: Measuring Bad Faith
Panels have long put to rest the argument that re-registration (or renewal of) is equivalent to registration, although there continue to be panelists holding that view. It is illustrated in Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) (“Based upon the record in this proceeding… [the] Panel deems Respondent’s 2009 renewal of the disputed domain name to be the date on which to measure whether the disputed domain name was registered and used in bad faith.”). One rationale for rejecting the argument is consistency. The Panel in PAA Laboratories GmbH v. Printing Arts America, D2004-0338 (WIPO July 13, 2004), although sympathetic to the re-registration as registration view explained that “[i]n making its finding, … Read the rest
Deliberative Conversations and the Making of Domain Name Jurisprudence
You may well ask, What does deliberative conversation have to do with the making of domain name jurisprudence? Mention was made of conversation in the Binary/Unitary Note last week. Ideas have to come from somewhere and once they are uttered interlocutors test and return them as received or modified. There are a number of interesting cases in which dissenters disapproved of the majority’s use of the Policy to transfer the disputed domain name. I pass over these cases for the moment, noting however that the majority view has prevailed, to focus on another early case, Firstgate Internet A.G. .v. David Soung, D2000-1311 (WIPO January 29, 2001) which offers a good illustration of what I mean by deliberative conversation. Initially, … Read the rest
Adopting Complainant’s Trademark For a Criticism Website
Free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name, but it is clearly subsumed in “fair use” and qualifies as a defense under paragraph 4(c)(iii) of the Policy. The defense rests on the proposition that speaking in opposition to a trademark owner was a right worthy of protection. The WIPO Final Report paragraph 172 provides that “Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations would … not be considered to be abusive.” Just as quickly as free speech was recognized as a protectable right there developed two lines of reasoning that continue to split panelists. The split is unsettling because … Read the rest