When you use a service which tends to boilerplate all of your pleadings, you sometimes get what you pay for. CitizenHawk does a variety of different online brand protection activities. But a bunch of what it does is automated and boilerplate.
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UDRP Defense: Registration and Use in Bad FaithCategory.
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Do you know what to do if you feel your trademark rights are being violated by another party? What if you get a notice that someone else thinks you are infringing on their trademark rights and intellectual property online? UDRP Attorney Brian Hall discusses the ins and outs of UDRP complaints with Damien Allen on today's program.
- The UDRP (Uniform Domain Name Dispute-Resolution Policy) is process that was established by ICANN or Internet Corporation for Assigned Names and Numbers, for the resolution of disputes regarding the registration and/or use of internet domain names.
- UDRP, is a process that allows somebody who believes they have trademark rights to go out and enforce those trademark rights as it relates to domain names.
- UDRP is not a lawsuit, it’s not filed in a court of law, and no monetary damages are available under the UDRP.
- Filing a UDRP does not preclude the complainant from filing a lawsuit for monetary damages or some other type of relief, injunctive or otherwise.
Announcer: Welcome to Domain Name Law Radio brought to you by Traverse Domain Name Law, internet lawyers specializing in complex litigation and domain law issues such as Domain Disputes, Cybersquatting, Domain Monetization, UDRP and Anticybersquatting Consumer Protection Act cases worldwide. Now here’s your host, Damien Allen.
Damien Allen: Good morning and welcome to Domain Name Law Radio. My name is Damien Allen. Today we’re discussing how to respond to a UDRP complaint with Brian A. Hall of Traverse Legal, PLC. Good morning and welcome to the program, Brian.
A recent reverse domain hijacking decision in Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM is interesting to any lawyer who practices domain dispute law. The law firm bringing the Complaint Lowenstein Sandler PC advertises as a large law firm specializing in domain name disputes as evidenced by a search of their web site for the words "domain name." Considering that the domain name was registered 5 years before Complainant's trademark application was even filed and 3 years before claimed first use of the trademark, and that it contains two generic words, it is hard to imagine whether the lawyers were thinking beyond the billable hour when they filed this one.
WIPO Domain Name Decision: D2008-0641
In addition, the Complainant’s case was weak in other respects. The Complainant provided no strong evidence of its trademark rights. The Complainant has no registered trademark. The Complainant provided evidence of having only a pending application for a registered mark. Neither did the Complainant provide strong evidence of having common law, or unregistered, trademark rights. The Complainant’s evidence in this respect comprised of three pages from its own website, and a small number of articles with incidental references to it, or containing (among others) short quotes of the “CEO of ad network Collective Media”. Those articles were dated between January and March 2008. The evidence from its own website appears to have been obtained in April 2008. The Complainant provided no evidence to support its claim of having unregistered trademark rights in 2005, let alone in 2002 when the disputed domain name was registered.
The Panel therefore finds that the Complainant should have appreciated that its Complaint could not succeed and, as such, was brought in bad faith for the purpose of paragraph 15(e) of the Rules.
Failure to Respond To Trademark Threat Letters & Use of Privacy Services Can Support a Finding Of Bad Faith
There are many trademark risks to domain investors under the UDRP. The opportunity to capitalize on strong generic or descriptive domain names is in many ways dependent on a solid understanding of UDRP decisions and avoiding behavior which would increase a risk of transfer. As investors purchase domains at higher prices, the ability to protect those domains from transfer later on becomes more important. A serious domainer needs to understand that their own behavior can provide ammunition to a complainant seeking a domain transfer order of a high value domain for trademark violations under the UDRP. The WIPO panelists in creditkeeper.com ordered a transfer of a domain purchased by a domain investor for $48,000 based, in large part, on avoidable behavior and poor decision making by the domain investor.
[Trademark law is a key part of your business model. Be smart. Educate yourself on trademark registration and other trademark infringement issues].