GigaLaw Blog

Insights and analysis about domain names and other Internet legal issues – by Doug Isenberg

When Two Trademarks Aren’t Confusingly Similar to One Trademark

When Two Trademarks Aren’t Confusingly Similar to One Trademark

As I’ve written before, domain name disputes involving multiple trademarks sometimes raise interesting issues, including whether a panel can order a domain name transferred to one entity without consent of the other. While panels typically have found ways to resolve this issue, one particularly troubling fact pattern arises when a panel denies a complaint simply because a disputed domain name contains trademarks owned by two different entities. The situation presents itself when a panel considers whether a domain name containing two trademarks is “identical or confusingly similar” to a single trademark — that is, the trademark owned by the complainant... read more

Thoughts About the Proposed Copyright Alternative Dispute Resolution Policy

A proposal from the Domain Name Association (DNA) would provide copyright owners with a new tool to fight online infringement — but the idea is, like other efforts to protect intellectual property rights on the Internet, proving controversial. The proposed Copyright Alternative Dispute Resolution Policy is one of four parts of the DNA’s “Healthy Domains Initiative” (HDI). It is designed to: construct a voluntary framework for copyright infringement disputes, so copyright holders could use a more efficient and cost-effective system for clear cases of copyright abuse other than going to court and registries and registrars are not forced to... read more

How to Suspend a .us Domain Name

Although rarely used, the usTLD Rapid Suspension Dispute Policy (usRS) allows a trademark owner to seek the suspension of a domain name in the .us country-code top-level domain (ccTLD). The usRS has many things in common with the Uniform Rapid Suspension System (URS), which applies to domain names in the new generic top-level domains (gTLD). Among other things: Both policies are administered by the Forum. Both policies have filing fees that start at only $375. Both policies have strict, 500-word limits on complaints. Both policies have awkward mechanisms for addressing defaults and appealing decisions. Both policies require a... read more

When a ‘Response Fee’ is Required in a URS Case

Although filing fees in domain name disputes are usually paid for by the trademark owner that files a complaint, the Uniform Rapid Suspension System (URS) contains a little-noticed provision that, in large cases, requires the domain name registrant to pay a fee to defend itself. The so-called “Response Fee” is only required in URS cases that include 15 or more disputed domain names. Specifically, paragraph 2.2 of the URS states: Complaints listing fifteen (15) or more disputed domain names registered by the same registrant will be subject to a Response Fee which will be refundable to the prevailing party. Under... read more

When to Consider ‘Both Sides of the Dot’ in a Domain Name Dispute

Yet another UDRP decision has found the top-level domain name relevant for purposes of confusing similarity. In the case, filed by Michelin, the panel found the domain name <tyre.plus> confusingly similar to the trademark TYREPLUS. Specifically, the panel wrote: If one ignores the “dot” between the Second-Level Domain (“tyre”) and the Top-Level Domain (“plus”), the mark and the Domain Name are identical. In most cases under the Policy, the Top-Level Domain (“TLD”) is ignored when considering confusing similarity. In recent years, however, and particularly with the emergence of numerous new TLDs, panels in certain circumstances have deemed it appropriate to... read more

Differing UDRP Decisions Show That Facts Matter

“Past performance does not necessarily predict future results.” That’s what the U.S. Securities and Exchange Commission requires mutual funds tell investors. But it’s also true about domain name disputes. Cases in point: In four recent proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), the operator of a large bank won two decisions but lost two others, despite a track record of having won more than 30 previous UDRP disputes. The complainant was Webster Financial Corporation, and all four of the cases involved the same trademark (HSA BANK) and the same type of activity by the domain... read more

How a ‘Defensive Registration’ Can Defeat a UDRP Complaint

A company that registers a domain name containing someone else’s trademark may be engaging in the acceptable practice of “defensive registration” if (among other things) the domain name is a typographical variation of the registrant’s own trademark. That’s the outcome of a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), a case in which the domain name in dispute, idocler.com, contained the complainant’s DOCLER trademark — but also contained a typo of the respondent’s DOLCER trademark. The UDRP complaint was filed by Docler IP S.à r.l. and related companies, all in Europe, that own the... read more

It’s Official: 2016 Was a Record Year for Domain Name Disputes

As I predicted more than three months ago, 2016 turned out to be a record year for domain name disputes, including under the Uniform Domain Name Dispute Resolution Policy (UDRP). That’s according to statistics from the World Intellectual Property Organization (WIPO), the only UDRP service provider that publishes real-time data on domain name disputes. WIPO’s statistics show 3,022 cases in 2016 — an increase of almost 10 percent from 2015. The previous most-active year for domain name disputes was 2012, and the number of cases has been on the rise ever since. In addition to a rise in the number... read more

Here’s the Largest URS Complaint Ever Filed

A complaint under the Uniform Rapid Suspension System (URS) may — like the Uniform Domain Name Dispute Resolution Policy (UDRP) — include more than one domain name, but few URS complaints have done so. Now, one new URS case just changed everything. In the largest URS case ever filed, an expert at the Forum ordered the suspension of 474 domain names in a single proceeding. The URS complaint was filed by Ashley Furniture Industries, Inc. (“Ashley Furniture”), against Fahri Hadikusuma. Ashley Furniture, which describes itself as the largest home furniture retailer and manufacturer in the United States and the... read more
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