Lewis and Hand, LLP | New York Law Firm » UDRP

FirstShowing.com UDRP Fails to .net Desired Outcome

admin — Thu, 24 Feb 2011 17:02:51 +0000

The owner of FirstShowing.net filed a UDRP complaint against the registrant of FirstShowing.com, contending that the domain name had been registered in bad faith. (click here) In a case where the Complainant sought to use the .net version of a domain name to acquire the more commercial .com extension, the Panel found that, “[the] evidence does not indicate that Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.” The Complainant also failed to submit sufficient evidence from which the Panel could conclude that the Complainant had trademark rights in the domain name at the time that the Respondent registered the domain. Lewis & Hand represented the Respondent.

L & H Defends ScoutInvestments.com

admin — Fri, 18 Feb 2011 20:27:44 +0000

In the matter of UMB Financial Corporation v. Cynthia Galant, Case No. D2010-1855 (WIPO, Jan. 31, 2011), the three-member Panel unanimously ruled in favor of the Respondent in denying UMB’s claim of cybersquatting. Although the Panel found that there was confusing similarity between UMB’s registered SCOUT trademark, and the domain name, the Panel cited case law noting the differences between hedge fund and mutual fund trading, and held that, “we are unable to agree that Complainant has met its burden of showing bad faith registration and use based on the mere registration of a similar domain name for use in the financial services field.”

Clorox® Doesn’t Clean Up in UDRP

MelissaA — Fri, 20 Aug 2010 22:09:13 +0000

Under a split decision issued by WIPO, Lewis & Hand, LLP successfully defends the generic Spanish-language domain name cloro.com from overreaching claims of abusive cybersquatting by the trademark owner, with the majority of the Panel finding: “Businesses are entitled to register domain names with generic meaning and value as an investment and decide what to do with them later. They may use them for any non-infringing use, or sell them, as they see fit.” The Clorox Company v. Domains for sale, dba Netegg, Case No. D2010-0831 (August 13, 2010).

UDRP Complaint Up In Smoke

MelissaA — Tue, 30 Mar 2010 15:59:04 +0000

Lewis & Hand, LLP successfully defended 51 domain names registered during the course of a 5 year authorized distribution relationship in WIPO proceeding Storz & Bickel GmbH & Co. KG v. MSI Imports LLC, Case No. D2009-1769. See related coverage on Wired.com.

Paperless UDRPs Are Here!

MelissaA — Fri, 11 Dec 2009 23:05:52 +0000

WIPO, one of the primary domain name dispute arbitration forums, just announced that it will be requiring all UDRP filings to be made electronically, no hard copies required or permitted, starting March 1, 2010, with the option to file electronic-only or by paper through February 28. Not only is the change designed to speed up the notification process for newly filed complaints, the move to e-filing should significantly decrease the cost of prosecuting and defending UDRP complaints – as the expense of shipping documents to Geneva has a way of adding up – especially when opting for a three-member panel! At 50 megabytes total, the file-size limits should be generous enough to cover even the lengthy stack of exhibits that tend to accompany a well-documented case. And not to worry – to be sure proper notice of a dispute is given, WIPO will still take care of sending written notice of a complaint to the respondent’s physical address. Now if only the National Arbitration Forum (NAF) would follow WIPO’s lead – NAF is still penalizing UDRP respondents for failing to fax or mail hard copies of responsive papers and all exhibits for receipt by the forum on the due date.

Retroactive “Bad Faith” in Recent UDRP Decisions

MelissaA — Tue, 01 Dec 2009 16:01:51 +0000

Five UDRP decisions may signal a surprising trend. Following a position first espoused by M. Scott Donahey earlier this year, yet another UDRP panelist recently opined in WIPO Case No. D2009-1278, that “[t]here seems no reason in logic or in principle why the availability of redress [under the UDRP] should be limited to situations where bad faith is present at the time of acquisition of the domain name.” Of course, for most of the past decade, the basis for that position was the UDRP, itself, which by its plain language requires some showing of “registration and use in bad faith” – in contrast to United States federal trademark laws that only require evidence of bad faith use, like the Anti-Cybersquatting Protection Act (ACPA). In view of these recent decisions, it may be more likely for a registrant to be found to violate the UDRP based on a subsequent use (or non-use) of a domain name, even where the complainant does not allege that the domain name was actually registered in bad faith.

WIPO Pushes the Accelerator on the UDRP

melissa — Tue, 03 Nov 2009 23:40:54 +0000

WIPO has just announced that it will launch a fast track option for the Uniform Domain Name Dispute Resolution Policy (UDRP), which will likely become available in the first few months of 2010. The “fast track” is meant to give trademark owners and other complainants an opportunity to expedite the decision process for relatively straightforward cases. The new process will also be cheaper than a full proceeding, although WIPO has not yet published the fee schedule. A UDRP proceeding filed with WIPO currently takes from 45-90 days, from commencement to decision, and costs $1,500 for up to 5 domain names (single panelist).