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Gerald M. Levine
Levine Samuel, LLP
130 West 42nd Street,
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(212) 596-0851Trademark Databases
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Trademark and Domain Name News
Category Archives: Website content
Parties in Same Business and Operating in the Same Geographical Area
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 different market, Geographical distance, Same industry, Taking advantage of trademark, Temporal distance
1 Comment
Good Faith in Adding or Subtracting Plural Suffixes to Descriptive Strings
It is often pointed out that small differences matter when analyzing whether a disputed domain name is confusingly similar to a mark. This discernment is traceable to a 9th Circuit Court of Appeals case, Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (2002) (“Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”). The same conclusion can be extended to the second element of the Policy. Trademarks composed of descriptive strings as easily describe a complainant’s business as they do a respondent offering similar services. The addition or … 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
Asserting Rights to Domain Names Allegedly Owned by Client Customer Who Either Is No Longer in Business or a Figment of the Respondent's Imagination
Domain names violate the Policy when the purpose for their registration is to take advantage of another’s trademark. Intent is an implicit element of proof. This is why common words used as domain names for their everyday meaning without proof that the respondent had the complainant’s trademark in mind resist monopolization. In many instances, the question of good and bad faith is determined by context. The respondent in Viking Office Products, Inc. v. Natasha Flaherty a/k/a ARS – N6YBV, FA1104001383534 (Nat. Arb. Forum May 31, 2011) (discussed June 14) persuasively explained her choice of “Viking” but the respondent in Viking Office Products, Inc. v. Multisys Computers Limited, FA1104001385981 (Nat. Arb. Forum June 15, 2011) did not.
Context does … 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