Bret S. Moore, Attorney at Law, LLC

Prejudice under the UDRP

Published September 6, 2011 | By Bret

A typical question that comes up during a UDRP case is, what happens afterwards if the case is denied? Can you simply try again, or are you prevented from ever filing a UDRP complaint on that particular domain again?

The question involves the legal doctrine of prejudice, in other words, whether a matter has already been determined one way or the other. Under the UDRP, the general rule is that once a complaint has been denied, you may not file another complaint on the same domain against the same respondent. There are some limited circumstances, however, including

when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of… Continue reading →

Posted in UDRP | Tagged common law trademarks, confusingly similar, denied, evidence, gtld, NAF, rights or legitimate interests, WIPO

Damages for copyright infringement

Published September 1, 2011 | By Bret

Once liability for copyright infringement has been established — and it’s usually not that difficult to do so, either you downloaded the copyrighted work or you didn’t — the plaintiff then gets to proceed to the damages phase. (This assumes there’s no criminal liability, which can exist, see 17 USC § 506.)

Monetary damages for copyright infringement can be quite steep. See 17 USC § 504. In particular, while a plaintiff can recover its “actual damages,” it can elect instead to recover statutory damages of between $750 and $30,000 for each work infringed. If you download a lot of music or movies, you can see how those damages might get very large, very fast. Indeed, they can actually go even… Continue reading →

Posted in Copyright | Tagged copyright, damages, Federal, infringement, law, lawsuit, license

Disclaimers, good faith, and legitimate use

Published September 1, 2011 | By Bret

A recent WIPO case covered the use and effect of a disclaimer on a web site. The domain name in question, cineredcr.com, was registered and being used by a company based in Missouri with operations in Costa Rica (hence the “cr” part of the domain name). The Complainant objected on the basis of its numerous RED CINE trademark registrations, and claimed that the Respondent was cybersquatting on the domain name and profiting from misdirected traffic and customer confusion.

But the Panel disagreed.

It is appears from the record that Respondent has used the disputed domain name in connection with a bona fide offering of services in Costa Rica. Respondent has continuously used CineRed and CineRed CR since 2007, which is… Continue reading →

Posted in UDRP | Tagged bad faith registration and use, denied, disclaimer, gtld, registered trademarks, rights or legitimate interests, WIPO

Nominative fair use in domain names

Published August 25, 2011 | By Bret

The crux of a trademark infringement claim is confusion: the unauthorized, complained-of use will cause, or already is causing, confusion. The purpose of a trademark infringement or domain name cybersquatting lawsuit is, therefore, to stop that confusion, or potential for confusion. But there is a recognized interest, in the US at least, in the value and utility of “free speech.” And so the question then becomes, to what extent can you refer to a trademark without express permission?

It’s quite appropriate, even in an obviously commercial context, to refer to a product for comparison purposes, for example, as in the case of a Coke TV commercial that claims it’s better than Pepsi. Car manufacturers do this a lot. Indeed,… Continue reading →

Posted in Trademarks | Tagged confusion, cybersquatting, domain names, fair use, federal registration, infringement, law, lawsuit

Fan sites & the UDRP

Published August 25, 2011 | By Bret

I’ve had several inquiries lately from domain owners about their ownership and use of “fan sites,” or sites that may incorporate a trademark of a famous person or business for the purposes of talking about that person or business, collecting and republishing news about them, and activities like that. The questions I get are, does the trademark owner have the right to force me to give them the domain name, am I cybersquatting on the trademark owner’s rights? The answer, at least under the UDRP, isn’t 100% clear, but there are some general guidelines to keep in mind.

First, as a threshold matter, any fan site must be “clearly active and noncommercial.” What does that mean? It means you can’t… Continue reading →

Posted in UDRP | Tagged celebrities, common law trademarks, confusingly similar, fair use, fan sites, registered trademarks, rights or legitimate interests

An offer to sell for high $ may not be evidence of bad faith

Published August 19, 2011 | By Bret

Nothing, and I mean nothing, makes trademark owners angrier than telling them they can buy your domain for $100,000, or more, particularly if the correlation between their mark and the domain name that you own is very high. This anger can often blind them to the legal issues in question in a UDRP proceeding, as they become so incensed about what they perceive as a demand that amounts to extortion, and may file a UDRP without good evidence to support their argument of bad faith registration and use.

Here’s a case precisely on point: the recent denial of a UDRP filed at WIPO over the domain gea.com. The owner of the trademark, GEA Group Aktiengesellschaft of Dusseldorf, Germany, apparently… Continue reading →

Posted in UDRP | Tagged bad faith registration and use, denied, evidence, fair use, gtld, laches or statute of limitations, registered trademarks, rights or legitimate interests, WIPO

First Descents v. Eddie Bauer

Published August 16, 2011 | By Bret

First Descents, a nonprofit organization based in Colorado, has filed a trademark infringement lawsuit in federal district court over national retailer Eddie Bauer’s use/registration of the trademarks First Ascent and First Descent. A copy of the complaint is available here.

This case is interesting because First Descents owns the rights to use its mark on clothing and the like, and it would seem to be potentially confused with Eddie Bauer’s First Descent/First Ascent marks, if used on clothing. Interestingly, Eddie Bauer is apparently attempting to claim prior use through “tacking,” which is the legal process of “joining of consecutive periods of possession by different persons to treat the periods as one continuous period.” Black’s Law Dictionary, 9th Ed.… Continue reading →

Posted in Trademarks | Tagged branding, confusion, federal registration, infringement, law, lawsuit, license

Lexapro v. Flexapro: typosquatting or product name?

Published August 15, 2011 | By Bret

The makers of the drug and owners of the trademark LEXAPRO filed UDRPs against the owner(s) of three domains: flexapro.com, flexapro.net, and flexapro.info. The cases were semi-consolidated by a WIPO panel into two identical decisions, available here (.net and .info) and here (.com).

The Complainant argued that the flexapro domain names were typosquatting on its registered mark. Typosquatting is the practice of adding, subtracting, or rearranging letters from a domain name with high traffic numbers. A great example of this is the recent Facebook lawsuit against lots of defendants over various misspellings of its “Facebook” trademark. (I’d love to comment about that case further because there’s some interesting theories involved, but I’m involved in it as legal counsel, so that’s… Continue reading →

Posted in UDRP | Tagged bad faith registration and use, denied, federal law, registered trademarks, rights or legitimate interests, WIPO

Copyright & Criminal Law

Published August 15, 2011 | By Bret

A new bill proposed by Congress (House Bill 1981) would require that Internet service providers (ISPs) collect and store information that connects a user’s computer IP address with their personal data, including name, address, and credit card information. Some commentators, including the EFF, have expressed serious concerns about the difficult-to-oppose-because-of-its-name “Protecting Children from Internet Pornographers Act of 2011.” I mean, who supports child porn? Nobody (except the seriously depraved). But as with the PATRIOT Act, which followed in the wake of the September 11, 2001 terrorist attacks on the World Trade Center in New York City, this bill also carries the Trojan horse-like potential for massive abuse by law enforcement, because it would allow them to obtain… Continue reading →

Posted in Copyright | Tagged copyright, Federal, law, legislation, privacy

A three letter domain lost via UDRP

Published August 12, 2011 | By Bret

I’ve always thought that three letter, or possibly even four or five letter, domain names are probably invulnerable to transfer under the UDRP, because of the potential for the domain to be an acronym for so many possible business names, which would almost guarantee that a respondent could show some rights or legitimate interests in the name, causing any complaint to fail. Apparently, I was wrong, and a WIPO panel recently ordered the transfer of bjp.com to the Bharatiya Janata Party (BJP) of New Delhi, India.

(By the way, for a look at a truly awful website, check out the Respondent’s representative in this case, the-internet-lawyers.com. Be warned, very flash-intensive, but click on it and “enter” and you’ll… Continue reading →

Posted in UDRP | Tagged bad faith registration and use, common law trademarks, evidence, gtld, rights or legitimate interests, transferred, WIPO

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