Category Archives: Website content

Trademarks Composed of Elements that Include Dictionary Words

Posted on May 17, 2013 by Gmlevine

Trademarks gather strength as they ascend the classification scale. In order, fanciful, arbitrary and suggestive are at the strong end of the scale, while descriptive and generic (if they qualify for registration) are on the weak end. The registry of trademarks includes numerous well-known dictionary words used fancifully or arbitrarily – think fruit: “apple”, “blackberry” and “orange”; or common words combined such as “micro” and “soft” and “America” and “Online.” More common words used descriptively have qualified when by their presence in the marketplace they have achieved secondary meaning. Whether domain name registrants are cybersquatting on the trademark depends on a number of factors that are discussed in Imagine Solutions, Inc. v. Encapture.com, Privacy Services / Ravindra Kumar Lahoti, … Read the rest

Posted in Acttive / passive use, Complainant "in mind", Generic/Descriptive terms, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(b)(iv) of the Policy, Paragraph 4(b) of the Policy, Secondary meaning, Targeting, Timing of registration, Totality of facts, UDRP Rule 15(a), Website content | Tagged , , , , , , | Leave a comment

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

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

Offer to Purchase vs. Counter Offer

Posted on November 4, 2012 by Gmlevine

It makes a difference which party initiates a negotiation to sell or purchase a disputed domain name. In SIX Group AG v. Xedoc Holding SA, D2012-1548 (WIPO October 11, 2012) the Complainant’s cause for complaint concerned Respondent’s redirected use of as a pornographic website . But, “six” is a weak mark: “there is extensive third party use of the term ‘six’, both as trade marks and as domain names, and that it cannot by any stretch of the imagination be considered famous or exclusively associated with the Complainant.” The question of “rights or legitimate interests” in a domain name identical or confusingly similar to a trademark (however weak it may be) depends on use only if there is evidence … Read the rest

Posted in bad faith use, Burden of proof / persuasion, Complainant "in mind", Cybersquatting / Not cybersquatting, Defenses, Diverting to another website, Legitimate use, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Pay-per-click, Pornography, Targeting, Website content | Tagged , , | 1 Comment

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