Tag Archives: Acquired distinctiveness

Invoking UDRP’s Mutual Jurisdiction Under Paragraph 4(k) and Rule 18(a)

Posted on December 10, 2012 by Gmlevine

Registrants in acquiring domain names and trademark owners in complaining of abusive registration are both required to submit to the jurisdiction of stipulated courts with regard to the adjudication of disputes. The requirement in the registration agreement is traceable to ICANN’s Registration Accreditation Agreement with the registration. Paragraph 3.7.7.10 reads: “For the adjudication of disputes concerning or arising from use of the Registered Name, the Registered Name Holder shall submit, without prejudice to other potentially applicable jurisdictions, to the jurisdiction of the courts (1) of the Registered Name Holder’s domicile and (2) where Registrar is located.” The requirement that binds the complaining trademark owner to the same jurisdictions is found in the UDRP at 3(b)(xiii) and Rule 1 of the … Read the rest

Posted in Common law protection, Fraudulent transfer, Mutual jurisdiction, Standing, Suspension / termination, Transfer of domain name, UDRP Rule 1 (Mutual jurisdiction), UDRP Rule 18(a) | Tagged , , , , | Leave a comment

Acquired Distinctiveness Through 5 or More Years of Use

Posted on May 14, 2012 by Gmlevine

Words and phrases in common use are attractive equally to purveyors and domainers. That one has a trademark does not disqualify the other from registering an identical or confusingly similar composition as long as proof fails to demonstrate bad faith. While registration confers distinctiveness, trademarks on the lower rung acquire this virtue over time. Trademarks qualified for registration under Section 2(f) of the Lanham Act (15 U.S.C. §1052(f)) for example are concededly generic or descriptive. This being the case, it is equally true that as a trademark descends in rank it has less protection. PetsMed Express Inc. v. JLB a/k/a Joseph Brinton, D2009-0179 (WIPO April 6, 2009) (“The Policy was not intended to permit a party who elects to … Read the rest

Posted in Abusive intent, Affixes / suffixes, Common expressions, Cybersquatting, Generic/Descriptive terms, Legitimate use, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Targeting / Not targeting | Tagged , , | Leave a comment