Category Archive

Who Solicited Who? As readers will know, different jurisdictions have different procedures for trademark registrations. As the Panel observed in this particular case, the Complainant’s French trademark was registered on October 14, 2011, but was made effective from March 30, 2011, i.e. the date of application, as is apparently the French practice. Usually, a registration with such retroactive effect wouldn’t …

No Place for Constructive Notice in UDRP Once again, a Complainant has erroneously relied on “constructive notice”. The Panel properly dismissed this allegation, in part relying upon Gerald Levine’s treatise (“Clash”). As noted in UDRP Perspectives at 3.4, there is no place for the concept of “constructive knowledge” of trademarks under the Policy. In The Way International Inc. v. Diamond …

First Domain Registered Before Complainant Rights, Second One After The Panel correctly determined that a domain name simply cannot have been registered in bad faith when the registration predates a trademark right, as noted in UDRP Perspectives at 3.2. It is axiomatic that a Respondent could not have registered a domain name in bad faith before a Complainant acquired rights in the …

Trademark Infringement and the UDRP Notably, the Panel properly rejected the doctrine of “constructive notice” in the context of the UDRP. As noted in UDRP Perspectives at 3.4, there is no place for the concept of “constructive notice” of trademarks under the Policy. The essence of a Complaint is an allegation of bad faith targeting of the Complainant. For that …

Panel: Complainant’s Certification “Could Not Properly Have Been Given” “First come, first served” is a particularly compelling and clear general principle that one learns in childhood, but it is equally applicable to UDRP disputes as the Panel found in this case. The Panel noted that the Respondent had registered the .com Domain Name back in 2009 – six years prior …

Genuine Criticism Websites Enjoy Safe Harbor Under UDRP The Panel correctly dismissed the Complaint. Whether one has sympathy or not for the target of a critical website, and whether or not one believes that the UDRP can be adapted to address cases of unfair or defamatory websites, the fact is that the UDRP was not intended to be and must …

Selling Tesla Accessories Bona Fide and Nominative Fair Use As clearly stated by the Panel, “the Policy was created to address obvious cases of cybersquatting”. It was not intended to address all trademark disputes involving domain names”, referencing the WIPO Overview 3.0 at 4.14.6 which states in part, “panels have tended to deny the case not on the UDRP merits …

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 …