Category Archive

We hope you will enjoy this edition of the Digest (vol. 4.3), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us): ‣ Complainant Relies on Odd Copyright Registration But Escapes RDNH (jye .com *with commentary) ‣ Insufficient Evidence to Apply “Telstra” (hackensackmeridianhealth .xyz *with commentary) ‣ Refiled Complaint Succeeds But is this …

We hope you will enjoy this edition of the Digest (vol. 4.2), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us): ‣ Telstra Doctrine Narrow in Application (tractus .com *with commentary) ‣ Century Domain Alleged Stolen (century .com *with commentary) ‣ Complaint Inadequate but Succeeds Anyhow (thenaturesconservancy .org *with commentary) ‣ Lack …

We hope you will enjoy this edition of the Digest (vol. 4.1), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us): ‣ Respondent Had Right to Buy Trademarked Term at Auction (sleeprx .com) ‣ Non-Use of ‘GM Europe’ Leads to Inference of Bad Faith (gmeurope .com) ‣ Valuable Three-Letter .COM Not Registered …

Complainant Attempts to “Monopolize” Common Indian Term Under the first part of the test, the Panelist quite rightly denied confusing similarity despite the fact that both the Complainant’s mark and the disputed Domain Name contained the word, “jodi”. As the Panelist inter alia pointed out, not only were the marks not confusingly similar in a side-by-side comparison, but since the …

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 …