Category Archive

Mar-a-Lago is a Florida Man’s Pet Memorial? While the panel found that Respondent’s explanation for its registering the disputed Domain Name “strain[s] credulity”, it noted that the website content did provide at least some modicum of support. More importantly, the MAR-A-LAGO trademark registration submitted into evidence by the Complainant issued in April of 1997, one month after Respondent registered the …

The UDRP and Free Speech: Inclusion of “Warning” Sufficient to Negate Risk of Impersonation There are a number of interesting points in this decision and I would focus on the following two: The presence of “warning” in the disputed domain name and significance of qualifying terms in free speech and criticism UDRP cases; and Other circumstances the Panel found relevant …

Totality of the Circumstances Point to Fair Use by Unauthorized Reseller This case is yet another application of the nominative (fair) use doctrine under the UDRP, see par. 2.8.1 of WIPO Overview 3.0 and the “Oki Data test” (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Respondent offered “A320” aircraft training materials on his website and …

Snap! We got RDNH’d! It is satisfying to see that the Panel critically reviewed the Complainant’s claim of common law rights. All too often Panels will give a Complainant an undeserved pass under this part of the three-part UDRP test, but here, the Panel declined to find common law rights based upon a close look at the provided evidence, which …

BEDS.COM: ‘Wilful Blindness’ Only Applies to Distinctive Marks You may recall that I have from time to time focused on what it takes to demonstrate acquired distinctiveness or a “secondary meaning” in an otherwise descriptive or generic term. This issue has again arisen in this case because the Complainant alleged common law trademark rights in BEDS.COM due to an “extensive …

We hope you will enjoy this edition of the Digest (vol. 3.43), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us): ‣ Playhouse.com: Play Around and Find Out (playhouse .com) ‣ Nominative Fair Use: Lack of Disclaimer Not Fatal to Respondent’s Case  (italysegwaytours .com *with commentary) ‣ Business/Contractual Dispute Outside The Scope …

When it Comes to 3-Letter .Coms, Complainants Usually Fail Three-letter .com domain names are generally amongst the most sought after because they often correspond to common abbreviations or are otherwise broadly used by many parties. As such, rarely is their value primarily or exclusively attributable to a single trademark holder, with notable exceptions being such brands as IBM, BMW, and …

PPC Links Related to Domain Name Demonstrate Legitimate Interest Most of the time UDRPs are brought to enforce trademark rights. At other times however, they are brought to get a domain name seen as important to a new marketing or branding strategy. The disputed Domain Name was originally created in 1998 and registered by the Respondent it in 2017. What …

Website Content Assists in Demonstrating Confusingly Similarity and Bad Faith Registration  The three-member Panel rightly took note of the generic nature of the words comprised in the disputed Domain Name, noting that “Smoky Mountain” is a geographic signifier referring to “The Great Smoky Mountains that border Tennessee and North Carolina in the southeastern United States”… Read more here.  We hope …

“Unrebutted Circumstantial Evidence” Leads to Transfer of Dictionary Term Domain Name There is a price to be paid by not responding to a Complaint. Responding to a legal proceeding, and the UDRP in particular, affords the registrant with the opportunity of putting its facts and arguments before the Panel and rebutting the Complainant’s facts and arguments. One can therefore not …