LexisNexis® Legal Newsroom
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...

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...

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...

"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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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...

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”...

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,...

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...