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UDRP Claim Denied Over Later Registered Trademark PDF Print E-mail
Written by brett   
Friday, 14 October 2011 18:05

In the case of Apollo Industries Limited v. Motocentric, No: FA1405200, the Complainant claimed rights to a domain name that was registered some ten years prior to its adoption and use as a trademark by the Complainant! What’s more, until 2003, the Complainant had used the domain name for a business that employed forty people. The Panel summarily denied the overreaching trademark claim, holding “Complainant’s unsupported assertions of bad faith registration to be inadequate to establish that the domain was registered in bad faith.”

This case is a fairly blatant example of overreaching by a trademark holder. As a practical matter, a domain name registrant cannot register a domain name with a bad faith intent to profit off of a trademark that does not exist. It’s also a waste of money for the Complainant. It’s incumbent upon lawyers to educate their clients about what constitutes an abusive filing.

Read more... [UDRP Claim Denied Over Later Registered Trademark]
 
UDRP Claim Denied Over Later Registered Trademark PDF Print E-mail
Written by brett   
Friday, 14 October 2011 18:05

In the case of Apollo Industries Limited v. Motocentric, No: FA1405200, the Complainant claimed rights to a domain name that was registered some ten years prior to its adoption and use as a trademark by the Complainant! What’s more, until 2003, the Complainant had used the domain name for a business that employed forty people. The Panel summarily denied the overreaching trademark claim, holding “Complainant’s unsupported assertions of bad faith registration to be inadequate to establish that the domain was registered in bad faith.”

This case is a fairly blatant example of overreaching by a trademark holder. As a practical matter, a domain name registrant cannot register a domain name with a bad faith intent to profit off of a trademark that does not exist. It’s also a waste of money for the Complainant. It’s incumbent upon lawyers to educate their clients about what constitutes an abusive filing.

Read more... [UDRP Claim Denied Over Later Registered Trademark]
 
Who’s the Boss PDF Print E-mail
Written by brett   
Tuesday, 27 September 2011 09:38

There are those times. There’s a business dispute. There’s a domain name or fifty. And there’s the UDRP. It’s far lest costly, as a general rule, to file a UDRP than it is to litigate in court. What to do? When is a dispute actionable under the UDRP and when is it a business dispute? The answer is not always clear.

In Autoboss Tech., Inc. v. Cardiag cardiag / Cardiag Inc., FA 1405219 (Sept. 23, 2011), a manufacturer filed a claim against its former distributor over the registration and use of the <AutoBoss.us> domain name. Confronted with an unclear factual record and conflicting claims, the Panel found that “the Domain Name is only one element of a much broader commercial dispute between the parties that involves Complainant’s termination of Respondent’s distributorship allegedly without notice, the recovery of costs advanced by Respondent to promote the business of Respondent as a distributor of Complainant’s products, and possible improper interruption of business relationships between Respondent and its customers by Complainant.” Quoting a prior decision, the Panel denied the claim:

[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes . . . . The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.

In hindsight, this appears to be a clear case for the courts, however, the facts are not always so clear, and parties sometimes will feign the nature or extent of a commercial or business relationship in order to thwart the UDRP.

Read more... [Who’s the Boss]
 
Who’s the Boss PDF Print E-mail
Written by brett   
Tuesday, 27 September 2011 09:38

There are those times. There’s a business dispute. There’s a domain name or fifty. And there’s the UDRP. It’s far lest costly, as a general rule, to file a UDRP than it is to litigate in court. What to do? When is a dispute actionable under the UDRP and when is it a business dispute? The answer is not always clear.

In Autoboss Tech., Inc. v. Cardiag cardiag / Cardiag Inc., FA 1405219 (Sept. 23, 2011), a manufacturer filed a claim against its former distributor over the registration and use of the <AutoBoss.us> domain name. Confronted with an unclear factual record and conflicting claims, the Panel found that “the Domain Name is only one element of a much broader commercial dispute between the parties that involves Complainant’s termination of Respondent’s distributorship allegedly without notice, the recovery of costs advanced by Respondent to promote the business of Respondent as a distributor of Complainant’s products, and possible improper interruption of business relationships between Respondent and its customers by Complainant.” Quoting a prior decision, the Panel denied the claim:

[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes . . . . The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.

In hindsight, this appears to be a clear case for the courts, however, the facts are not always so clear, and parties sometimes will feign the nature or extent of a commercial or business relationship in order to thwart the UDRP.

Read more... [Who’s the Boss]
 
Can I Trademark the Title of a Single Work PDF Print E-mail
Written by brett   
Thursday, 22 September 2011 12:15

The title of a single creative work is not a registrable trademark with the U.S. Trademark Office (USPTO). Single creative works typically include, but are not limited to, books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs and films. The basis for the USPTO refusal is that the title of a single work (for example, the album Sgt. Pepper’s Lonely Hearts Club Band) fails to function as a source identifier because consumers will identify the title as a sole creative work rather than the source of the work (in our example, The Beatles).

However, a title may be registered when it has been used on a series of creative works or is a type of work in which the content changes with every issue or performance. Therefore, in order to register a title with the USPTO an applicant must demonstrate that the title is used on at least two different creative works. This issue is particularly important to authors, musicians and filmmakers seeking trademark protection for titles to their creative endeavors.

Read more... [Can I Trademark the Title of a Single Work]
 
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