Category Archive

The Challenge of Properly Applying Telstra The key element of the well-known Telstra standard: “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”.  while appearing to be simple and intuitive is quite challenging to apply. It is an odd standard that deviates from the …

Complainants Must Establish Reputation as of Date of Domain Registration We often see Complainants making the mistake of proving their reputation as of the time of filing the Complaint, but that is inadequate. Rather, the material date is the date of registration since that is the point in time that we must evaluate whether the Complainant’s reputation was the reason …

Panel Takes the “Holistic Approach” to Oki Data As noted in UDRP Perspectives at 2.3, although the Oki Data test has consistently been applied since 2001, it is best used as a guide and adapted as necessary by Panels. In other words, it is not enshrined in stone, but rather can be a helpful yardstick by which to measure the …

Intentionality and Trademark Infringement Can a Respondent’s belief that a Complainant abandoned its trademark, combined with due diligence, vitiate a claim of bad faith registration? Yes, as the Panel found in this case. Here, the Respondent provided an apparently credible explanation of the reasons that it believed that it had the right to register and use the Domain Name. The …

Policy Requires That Bad Faith Must Target ‘Complainant, Specifically’, Not Unrelated Third Parties We sometimes see Respondent’s misapprehend what a “generic” or “descriptive” term is. Here, the Respondent argued that the Disputed Domain Name “consists of two generic terms, ‘cyber’ and ‘nautic’, however as the Panel pointed out, this “does not establish that the combined term, “cybernautic,” is generic or …

Free Speech/Criticism as Legitimate Interest The 3-member Forum Panel in  <veatchcarlson. com>  denied the complaint and found that the Respondent has a legitimate interest in using the disputed domain name for criticizing the Complainant.  The issue of free speech/criticism remains one of the grey areas in UDRP jurisprudence. Continue reading the commentary here.  Register today for the CIIDRC’s Domain Disputes …

Complainant Fails to Prove Prior Trademark Rights The Panel was of course, correct that a trademark right must predate the disputed domain name for there to be bad faith registration. As noted in UDRP Perspectives at 3.2, for bad faith registration to have occurred, the trademark must predate the Respondent’s domain name registration. UDRP Panels routinely determine that a domain …

Armoured Vehicle Business Dispute Involving Competing Trademark Registrations You will note that the Panel stated that “the Respondent in this case did not request a finding of RDNH, but such a finding seems appropriate in the circumstances”. This approach fulfils the Panel’s obligation to consider whether a Complaint is abusive in every case that warrants such consideration, regardless of whether …

Panel: Respondent’s Prerogative to Seek Any Price it Wishes for a Generic-Word Domain Name Although the Panel ultimately rejected the claim for RDNH, the Panel did consider it – as is its duty to under the Rules where the facts so warrant, as was the case here. RDNH is a discretionary remedy and Panels have significant latitude in accepting or …

Does Res Judicata Apply to Refiled UDRP Complaints? Looking back at the original case, the Complainant’s arguments (as summarized in the second decision) do not seem to quite match what transpired there. The US trademark registration application was filed on the same day that the complainant’s domain name was registered, January 23, 2019.  The Complainant’s trademark registration application was filed …