Category Archive

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 …

Is This a Trademark Dispute or Cybersquatting? The Respondent in <ensure-nest .com> has an apparently genuine business and website selling ENSURE-branded bird nests, thereby demonstrating that this smacks of a trademark dispute rather than a cybersquatting dispute. Read more here.  We hope you will enjoy this edition of the Digest (vol. 3.38), as we review these noteworthy recent decisions, with …

The most notable aspects of <sage .ai> case are: Dealing in domain names in the secondary market is a legitimate trading activity. By its very nature, domain name investing is speculative. A domainer usually has the intention of reselling domain names at a price in excess of the purchase price. Being a domainer is a risky business and is not …

The Challenge of Applying the Passive Holding Doctrine in the Absence of a Response by Nat Cohen. While most disputes are undefended, that usually poses little problem for a Panel as the Disputed Domain Name is often put to an obvious bad faith use or it is often the typosquat of a famous, distinctive mark. Read here We hope you will …

Ultra Premium Two-Letter .COM Recovered in Theft Case Two-letter .com domain names like PV .com are extraordinarily valuable and sought after. They are the ultra-luxury real estate of the domain name space. Think, Rodeo Drive in Beverly Hills, the Peak in Hong Kong, and Belgravia in London. Just last week, the ultra-premium domain name, VT.com sold for USD $2.5 million. …