Intellectual Property

Recent Posts

Marshaling Private Information and Researching Public Facts
Posted on 9 Feb 2009 by Gerald M. Levine

It is elementary that the evidence a party needs to successfully prosecute or defend a UDRP case comes from two sources: that which it controls (private information) and that which it must obtain from others (unobtainable private – anything that... Read More

Disputes Outside the Scope of the Policy
Posted on 7 Jul 2008 by Gerald M. Levine

The mix of cases always includes the occasional complaint that is unsuited to arbitration under the Policy. While there is some elasticity in the construction of “abusive registration,” business disputes in which the domain name is inseparable... Read More

Personal Names as Domain Names; When Actionable
Posted on 13 Jan 2009 by Gerald M. Levine

2008 has been fruitful for personal name decisions. As a general rule a person aggrieved by a registrant misappropriating his personal name for use on the Internet cannot look for a quick remedy under the UDRP unless he can bring himself within the rule’s... Read More

Dolce & Gabbana fails to obtain <dandg.com>
Posted on 8 Oct 2010 by Hogan Lovells

By David Taylor and Jane Seager of Hogan Lovells dedicated domain name practice In a recent case brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), Dolce & Gabbana s.r.l., the well known Italian fashion company, failed... Read More

Distinguishing Among Theories
Posted on 3 Oct 2008 by Gerald M. Levine

The Policy lists four non‑exclusive examples of bad faith. Each identifies a particular and distinguishable parasitic or predatory act. While it may be true that a respondent’s conduct can be actionable under more than one theory, they should not... Read More

Pairs of Cases: Similar Facts, Different Results
Posted on 2 Jun 2008 by Gerald M. Levine

In the comment “Punting or Admirable Restraint” I reported on a case that the Panel held was not ripe for determination under the Policy. The issue there concerned lack of subject matter jurisdiction and brought into play panelists’... Read More

The Role of Credibility in a UDRP Proceeding
Posted on 9 May 2008 by Gerald M. Levine

UDRP complaints are resolved solely on papers without benefit of discovery and with no right of confrontation. For this reason the pleadings and evidence must be developed with as much care and be as complete as a motion for summary judgment in a civil... Read More

Registrar Violations of Contractual Obligations
Posted on 4 Jun 2008 by Gerald M. Levine

In a letter dated April 16, 2008, WIPO calls ICANN’s attention to "certain registrar-related practices ... having a potentially adverse effect on the function of the ICANN-mandated Uniform Domain Name Dispute Resolution Policy." While... Read More

Demonstrable Preparations to Use: Respondent's Burden Under Paragraph 4(c)(i) of the Policy
Posted on 13 May 2008 by Gerald M. Levine

Domain names composed of generic terms or common words and expressions do not violate the Policy when they “have been registered because of their attraction as dictionary words, and not because of their value as trade marks, ” Land Mark Group... Read More

Consequences of Default
Posted on 10 Dec 2008 by Gerald M. Levine

Policy, ¶4(a) provides that the respondent is “required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) alleges” that its trademark is the target of an abusive registration... Read More

Unilateral Consent to Transfer; Respondent’s Motivation
Posted on 6 Aug 2008 by Gerald M. Levine

Once a case is submitted to a Panel, it is either decided or terminated. If terminated it is either because one of the parties has commenced a civil action or by consent. Consent to transfer takes two forms: either 1) the respondent unilaterally agrees... Read More

Bad Faith Requirements Under Two ADRs: UDRP and ukDRS
Posted on 2 May 2008 by Gerald M. Levine

The UDRP requires that the complainant prove both registration and use in bad faith [¶4(a)(iii)]. In contrast, country code ADRs take a different approach: one or the other, but not both. A couple of recent close decisions respectively under the... Read More

Penalizing the Complainant for Abusing the UDRP Procedure
Posted on 5 Sep 2008 by Gerald M. Levine

Against a complainant who abuses the UDRP procedure – a recent example being Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM , D2008-0641 (WIPO July 31, 2008), who argued entitlement to the domain the registered years before because it had applied... Read More

Geographic Remoteness and Nearness in Proving Knowledge
Posted on 9 Jun 2009 by Gerald M. Levine

Although trademark holders are not limited territorially in maintaining a proceeding under the UDRP – a “complainant’s showing of secondary meaning within a limited geographical area will be sufficient to invoke all of the rights and... Read More

Slumbering on One’s Rights; Laches vs Lapse of Time
Posted on 20 Mar 2009 by Gerald M. Levine

Against cases initiated under the Uniform Domain Name Resolution Policy the consensus is that laches is not a defense to a claim of violation. Paradoxically, however, lapse of time may be fatal. In contrast, laches can be a viable defense to a claim for... Read More

  • Blog Post: Bad Faith Requirements Under Two ADRs: UDRP and ukDRS

    The UDRP requires that the complainant prove both registration and use in bad faith [¶4(a)(iii)]. In contrast, country code ADRs take a different approach: one or the other, but not both. A couple of recent close decisions respectively under the UDRP and ukDRS (Nominet) are instructive in highlighting...
  • Blog Post: The Role of Credibility in a UDRP Proceeding

    UDRP complaints are resolved solely on papers without benefit of discovery and with no right of confrontation. For this reason the pleadings and evidence must be developed with as much care and be as complete as a motion for summary judgment in a civil action. It is a mistake to discount credibility...
  • Blog Post: Demonstrable Preparations to Use: Respondent's Burden Under Paragraph 4(c)(i) of the Policy

    Domain names composed of generic terms or common words and expressions do not violate the Policy when they “have been registered because of their attraction as dictionary words, and not because of their value as trade marks, ” Land Mark Group v. Digi Media.com , FA0406000285459 (Nat. Arb...
  • Blog Post: "Punting" or "Admirable Restraint", Subject Matter Jurisdiction and Scope of the Policy

    The Panel in Family Watchdog LLC v. Lester Schweiss , D2008-0183 (WIPO April 23, 2008) (Complaint dismissed) found that although the Complainant had received a certificate of registration for its trademark, the registration was currently being contested before the TTAB in a cancellation proceeding. That...
  • Blog Post: Pairs of Cases: Similar Facts, Different Results

    In the comment “Punting or Admirable Restraint” I reported on a case that the Panel held was not ripe for determination under the Policy. The issue there concerned lack of subject matter jurisdiction and brought into play panelists’ discretion in dismissing a complaint. This comment...
  • Blog Post: Registrar Violations of Contractual Obligations

    In a letter dated April 16, 2008, WIPO calls ICANN’s attention to "certain registrar-related practices ... having a potentially adverse effect on the function of the ICANN-mandated Uniform Domain Name Dispute Resolution Policy." While only a handful of registrars is implicated, the letter...
  • Blog Post: Disputes Outside the Scope of the Policy

    The mix of cases always includes the occasional complaint that is unsuited to arbitration under the Policy. While there is some elasticity in the construction of “abusive registration,” business disputes in which the domain name is inseparable from “much larger, complex disputes between...
  • Blog Post: Unilateral Consent to Transfer; Respondent’s Motivation

    Once a case is submitted to a Panel, it is either decided or terminated. If terminated it is either because one of the parties has commenced a civil action or by consent. Consent to transfer takes two forms: either 1) the respondent unilaterally agrees to relinquish its registration; or 2) the parties...
  • Blog Post: Penalizing the Complainant for Abusing the UDRP Procedure

    Against a complainant who abuses the UDRP procedure – a recent example being Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM , D2008-0641 (WIPO July 31, 2008), who argued entitlement to the domain the registered years before because it had applied for a trademark of that name and wanted it...
  • Blog Post: Distinguishing Among Theories

    The Policy lists four non‑exclusive examples of bad faith. Each identifies a particular and distinguishable parasitic or predatory act. While it may be true that a respondent’s conduct can be actionable under more than one theory, they should not be blurred or blended any more than theories of...
  • Blog Post: Consequences of Default

    Policy, ¶4(a) provides that the respondent is “required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) alleges” that its trademark is the target of an abusive registration. However, the term “mandatory” should...
  • Blog Post: Personal Names as Domain Names; When Actionable

    2008 has been fruitful for personal name decisions. As a general rule a person aggrieved by a registrant misappropriating his personal name for use on the Internet cannot look for a quick remedy under the UDRP unless he can bring himself within the rule’s exception. Paragraph 199 of the Second...
  • Blog Post: Marshaling Private Information and Researching Public Facts

    It is elementary that the evidence a party needs to successfully prosecute or defend a UDRP case comes from two sources: that which it controls (private information) and that which it must obtain from others (unobtainable private – anything that reveals motivation and intent – and accessible...
  • Blog Post: Factual Circumstances Favoring Respondents

    The mere fact that a significant proportion of proceedings are decided without any respondent participation – an equivocal advantage because default is not an admission under the UDRP as it is in a court of law – is no guarantee that the complainant will prevail; and, the incidence of dismissal...
  • Blog Post: Slumbering on One’s Rights; Laches vs Lapse of Time

    Against cases initiated under the Uniform Domain Name Resolution Policy the consensus is that laches is not a defense to a claim of violation. Paradoxically, however, lapse of time may be fatal. In contrast, laches can be a viable defense to a claim for trademark infringement under the Lanham Act if...
  • Blog Post: Exercising Discretionary Authority to Request Additional Statements and Documents

    Rule 12 of the Rules of the Policy authorize a Panel “in its sole discretion” to request “further statements or documents from either of the parties.” The purpose is to assist the Panel in reaching a decision. However, panelists have exercised their “sole discretion”...
  • Blog Post: Geographic Remoteness and Nearness in Proving Knowledge

    Although trademark holders are not limited territorially in maintaining a proceeding under the UDRP – a “complainant’s showing of secondary meaning within a limited geographical area will be sufficient to invoke all of the rights and protections of the Policy,” Party Maniacs,...
  • Blog Post: Dolce & Gabbana fails to obtain <dandg.com>

    By David Taylor and Jane Seager of Hogan Lovells dedicated domain name practice In a recent case brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), Dolce & Gabbana s.r.l., the well known Italian fashion company, failed to obtain the domain name (the Domain Name), despite...