Tag Archives: different market

Date of First Use in Commerce in Application for Trademark Not Evidence

Posted on May 29, 2012 by Gmlevine

As a general rule, there can be no bad faith registration of a domain name registered prior to the existence of a trademark. For a complainant to prevail on the first requirement that it has a trademark right, the date of first use in commerce disclosed in the application must pre-date the registration of the domain name. Where the timing of a trademark is in issue complainant must do more than point to the date of first use in its application. Hidden Values, Inc. v. Spirit Marketing c/o Paul Morrissette, FA1204001437627 (Nat. Arb. Forum May 15, 2012) (KIDS DIRECTORY and). Trademark application filed 2005, registered 2010, citing a first use in commerce 1990. The domain name was registered January … Read the rest

Posted in Abusive intent, Burden of proof, Complainant "in mind", Cybersquatting / Not cybersquatting, Domain names, First to register, Para. 4(a)(iii) of the Policy, Paragraph 4(b) of the Policy, Paragraph 4(c) of the Policy, Totality of facts | Tagged , , , , , | Leave a comment

Combinations of Random Letters (Acronyms, Initials and Abbreviations) Capable of Use By Many Third Parties Other Than Complainant

Posted on March 7, 2012 by Gmlevine

Combinations of letters are either acronyms or abbreviations for a company’s name – protectable or not against domain name registrants depending on the trademark’s strength – or simply a string of random letters (“random” that is to respondents) that are capable of use (when acronymic) by many third parties other than complainant trademark holders. Panels have noted that domain names composed of few letters are “extremely prized” Deutsch Welle v. Diamondware Capital Ltd, D2000-1202 (WIPO January 2, 2001); the Panel in Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, D2000-1001 (WIPO October 3, 2000) rejected Complainant’s analogy of “pi” with “vw” or “ibm.” They can be attractive to many persons … Read the rest

Posted in Acronyms / initials / abbreviations, Complainant "in mind", Good faith registration/ Bad faith use, High volume registrant, Para. 4(a)(iii) of the Policy, Para. 4(b)(iv) of the Policy, Reputation in the marketplace, Trademark in mind, UDRP Rule 10(d) (evidence), Website services | Tagged , , | Leave a comment

Multiple Users of Term Other than Trademark Owner

Posted on February 8, 2012 by Gmlevine

There have been a number of recent UDRP cases in which complainants’ trademarks are composed of letters or words that have currency for other users in the marketplace. Two, three and four letter strings, for example, are valuable names that could also be acronyms. Examples: <rmhp.com> and <tds.com>. The Panel in Rocky Mountain Health Maintenance Organization, Incorporated v. Domain Administrator / PortMedia, FA1112001418881 (Nat. Arb. Forum January 27, 2012) noted that the domain name was not exactly an acronym. The Respondent in Telephone and Data Systems, Inc. v. Protected Domain Services – Customer ID: NCR-813584 / Daniel Wang, D2011-0435 (WIPO May 10, 2011) pointed out that there are “numerous other United States trademark registrations for TDS for a … Read the rest

Posted in Common expressions, Complainant "in mind", Complex facts / Not cybersquattting, Innocent registration, Insufficiency of evidence, Para. 4(a)(i) of the Policy, Para. 4(b)(iv) of the Policy, Para. 4(c)(i) of the Policy, Targeting / Not targeting, Trademark in mind, UDRP Rule 10(d) (evidence), Unregistered trademark | Tagged , , , , | Leave a 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

Trademark Terms Distinctive in One Territorial Jurisdiction, Undistinctive in Another

Posted on November 10, 2011 by Gmlevine

Distinctiveness (despite the affirmativeness of the word) is a fluid concept. It could mean “distinctive” in its class but not “distinctive enough” to prevent others from using it for their own purposes in a different class. So, too, a term accepted by a trademark office can be regarded as distinctive within its jurisdiction, but un-distinctive in another. Words that may appear arbitrary in one jurisdiction, in another may have a cultural meaning. For example, in CeWe Color AG & Co. OHG v. Shenbun Limited, D2008-0810 (WIPO July 10, 2008) (<cewe.net>), the Complainant believed that its trademark CEWE was arbitrary, as it is in Germany, but Respondent showed that “cewe” is used as a “slang word in the Bahasa Indonesia … Read the rest

Posted in Abusive intent, Commercial gain, Cybersquatting, Geographic distance, Insufficiency of evidence, Knowledge, Reputation in the marketplace | Tagged , , | Leave a comment