DNA Updates

The entries on this page further supplement and update Domain Name Arbitration, a treatise on trademarks, domain names, & cybersquatting, by Gerald M. Levine with Foreword by Hon. Neil A. Brown QC. (Legal Corner Press 2015). Supplement and Update through August 2016 was released on October 1, 2016 in e-book format.

Domain Name Arbitration and Supplement and Update is available from Publisher or Amazon and Barnes & Noble.  

If you purchased a copy of the treatise (or you haven’t but are planning to) you may wish to  download a free pdf version of the Supplement and Update which includes updates through August 2016. A full Index to the treatise is included in the Supplement and Update as well as separately.  They are available by going to this page and completing, and submitting one or both forms. A link to the files will appear upon successful submission.

Further additions to the Updates will be regularly posted here. Comments or suggestions can be made to Gerald M. Levine or e-mail gmlevine@legalcornerpress.com.
Mr. Levine also reports on Noteworthy Domain Name Decisions on iplegalcorner, 2015 and 2016. His essays are reprinted in <udrpsearch.com> and <circleid.com>.

Download PDF version of Supplement  and Update and full Index to the treatise here.

Additions December 2016

6.01-D.1.c Common Words, Common Phrases
DNA 353.  Opening paragraph first sentence add new footnote after “at a disadvantage.”

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126A This can include trademarks that have lost their distinctiveness to genericide. See Shop Vac Corporation v. Md Oliul Alam / Quick Rank, FA1611001701026 (Forum December 10, 2016) (SHOP VAC and ) (“[I]t appears on the material before the Panel that the word ‘vac’ is commonly used in the industry as an abbreviation for ‘vacuum’ and that the expressions ‘shop vac’and ‘best shop vac’ are in common use with respect to vacuum cleaners other than those of Complainant.”)

6.02-C Cease and Desist Letter
DNA 376 Revise the opening   paragraph to read:
The timing of a cease-and-desist letter (or even a failure to serve one 257A) can be a critical factor in determining parties= respective rights to the disputed domain name, but if the claim lacks merit serving a complaint may be sanctionable. 257B
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257A. See Souq.com FZ LLC v. Ruiling Wang, Comcom Communications LLC, D2016-2085 (WIPO December 12, 2016) () (failure to send notice “has allowed the Respondent to solidify its rights to the Disputed Domain Name.”)

257B See discussion in Reverse Domain Name Hijacking, Section 7.11. Respondent responded to the cease-and-desist notice in Happy as Clams, Inc., a California Corp., DBA Date Like a Grownup v. Heather Dugan, D2014- 1655 (WIPO November 1, 2014) but the parties were unable to reach a settlement of the dispute. Panel explained that it could have sanctioned Complainant but refrained: “A finding of abuse of the administrative proceeding is always discretionary with the Panel. . . [However], [i]n recognition that . . . this appears to be the first time this Complainant or its representative has brought a proceeding, the Panel will refrain from making one in this case.” In Airpet Animal Transport, Inc. v. Marchex Sales, Inc / Brendhan Hight, FA121100 1470056 (Nat. Arb. Forum January 2, 2013) (alleged common law trademark) the three-member Panel was unanimous in finding RDNH: “Complainant applied for a trademark after knowing about Respondent’s domain name and did not disclose that fact to . . . the Panel. Once again, the question is why not? Presumably, Complainant wanted to improve its chances in registering its mark and this proceeding.” See also TOBAM v. M. Thestrup / Best Identity, D2016-1990 (WIPO November 21, 2016) (<tobam.com>) (“Respondent’s warning in response to Complainant’s cease and desist notice is a factor in determining reverse domain name hijacking: “This warning should have given the Complainant serious pause for thought but it ploughed on regardless.”)

Chapter 1

1.01-A Creating legal Processes to Counter Cybersquatting on Trademarks
DNA 6 Add to footnote 3 concerning the Memorandum of Understanding between the Department of Commerce, National Telecommunications and Information Administration and the Internet Corporation for Assigned Names and Numbers effective September 30, 2009:
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3 The MOU expired on September 30, 2016.

1.02-A.2. Protecting Existing Trademarks from Predators and Parasites
DNA18 In the sentence “Except in three…” Delete “three” and add “four” and after the colon add: distribution of malware (fraud and conversion),44A
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44A Evidence of malware infection is relevant in the Panel’s determination of bad faith under paragraph 4(a)(iii) of the Policy. See Humble Bundle, Inc. v. Domain Admin, Whois Privacy Corp., D2016-0914 (WIPO June 21, 2016) (. “[Spreading malware] implies abusive conduct of a particularly serious nature . . . that goes well beyond the activities of the typical cybersquatter”); Euroview Enterprises LLC v. Jinsu Kim, D2016-1124 (WIPO September 12, 2016) (<euroview.com>).

1.03-A The 3-Part Structure
DNA 31 Revise the opening paragraph (no change to footnotes):
Complainant initiates an administrative proceeding by filing a complaint and annexes (which must include proof of trademark rights) with an ICANN certified Provider, 80 This package is unlike pleadings in a court of law in that it performs a dual function in both stating a claim and moving for relief; in this respect it resembles a motion for summary judgment, thus its drafting and content demand a different level of attention than a litigation complaint.80A After reviewing the complaint for compliance (which includes submitting it to the registrar for registrant verification and for locking the domain name) the provider forwards it to the respondent 81 with notice that it has 20 days to respond. If the complaint is not compliant, if it names the proxy rather than beneficial owner of the domain name and the latter is disclosed by the registrar in the verification process, complainant is given the opportunity to cure by filing an amended complaint. 82
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80A Whereas litigation pleadings can survive a motion to dismiss without proof, UDRP complaints cannot hence numerous decisions finding insufficiency of proof in dismissing complaints.

CHAPTER 2

2.-1-B What “Mandatory” Means
DNA 55.  Add to Footnote 13:
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The “mutual jurisdiction” clause is not a submission to personal jurisdiction. See Marchex Sales, Inc. V. Tecnologia Bancaria, S.A. 14cv1306 (E.D. Va. Alexandria Division May 21, 2015) in which the domain name holder challenged a UDRP award in an in rem proceeding. The Court held that “the agreement is limited to a challenge of a decision to the transfer of the domain name…. The language is specific; it involves only a challenge to a panel’s decision to transfer a domain name [and cannot be enlarged to include damages and attorney’s fees].”

CHAPTER 3

3.02 Disputes Outside the Scope of the Policy
3.02-A Policy Not Applicable to Disputes Between Parties with Competing Rights Acting in Good Faith
DNA 78 Add to footnote 18:
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For distribution agreements properly terminated see MasterCraft Boat Company, LLC v. Debbie Hayes, FA1610001696484 (Forum November 23, 2016) () (If a distribution agreement is properly drafted for domain name use to cease upon termination, then continuing use will be a violation of the Policy. Here, without authorization Respondent renewed the registration for the domain name.)

CHAPTER 4

4.01.B.1 Unregistered Trademark Rights Protected
DNA 123  New paragraph following footnote 152
For unregistered trademarks (common law, 1b applications in the U.S, supplemental register in the U.S., and state as opposed to registrations in national registries) complainants must prove their rights, which means demonstrating presence in the marketplace predating registrations of the subject domain names.152A
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152A The language in the Anticybersquatting Consumer Protection Act is more explicit than the UDRP in that it requires the mark to be “distinctive at the time of the registration of the domain name.”

DNA 123. Add to footnote 153
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Trade names are denotative and not protectable as trademarks. See New Jersey Lawyers Service, LLC v. Guaranteed Subpoena Service, Inc., FA1609001695657 (Forum November 10, 2016) (“[E]vidence of use of a trade name is insufficient to prove that Complainant has Common Law rights on a trademark and that such trademark has acquired secondary meaning through the use of a trade name. Previous panels have held that usage as a trade name does not serve to establish common law rights in a mark.”

4.02-C.4 Targeting: Appropriating for Trademark Value
DNA 206. Add new footnote 594A
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594A Duke University v. David Hanley, FA1609001692961 (Forum November 9, 2016) (<duke careers.com>.  The content of the resolving website creates “confusion by suggesting a connection between the website and Complainant through the display of Complainant’s trademarks and mimicry of Complainant’s use of such trademarks and the targeting of graduates of Complainant’s university.)

CHAPTER 5

5.01-C.2.b Fraudulent Transfer of Domain Names
DN264. New footnote after “fraudulent transfer” last phrse in first paragraph.
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96A Victimized owners have also used the ACPA’s in rem jurisdiction to return control of domain name.  See European Performance Engineering, Inc. v. John Doe, et al., 16-cv-00982 (ED Va, Alexandria Division September 9, 2016.

5.01-C.2.c Phishing
DNA 267 Add footnote to “pop-ups”
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109A Twitter, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Domain Support, D2015- 1488 (WIPO October 6, 2015) (Respondent defaulted, but “[b]ased on the evidence provided by Complainant, Respondent only uses the Domain Name as part of a common phishing scheme known as ‘tech support scam pop-up’; such tech support scam presents itself to the user while browsing the web in the form of a pop-up message saying that a virus or other suspicious activity has been detected, often providing a phone number which the user can call to get ‘support’ for the problem. Obviously, such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. Respondent did not submit any response.”

5.05-D Forming a Domain Name by Incorporating Complainant=s Trademark Plus an Additional Term
5.05-D.1 When the Additional Term Leads Back to the Trademark
DNA 310.  Add after “abusive registration” in opening paragraph:
When marks are well-known or famous, appropriating them as dominant elements of domain names signals implicit knowledge of them. 331

Add to footnote 331
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De Beers Intangibles Limited v. Ivetta Mavrova, D2016-1466 (WIPO August 30, 2016) (“[I]t has been held in many UDRP decisions and has become a consensus view among panelists that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP.”)

5.05-E.1.a Implicit Knowledge of Mark
DNA 315. Add after “are not fully reproducible as domain names”:
and as such are commonly disregarded in assessing identity or confusing similarity.

DNA 315 Add to footnote 356
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356 B&H Foto & Electronics Corp. v. Avi Lang, D2016-0525 (WIPO May 19, 2016) (<bhphoto.video>); Fosbrooke, Inc. v. ravindra bala, FA1608001689535 (Forum October 1, 2016) (T&N and <tnmattress.com>.

CHAPTER 6

6.01-B Rights and Legitimate Interests Are Dictated by Conduct
6.01-B.1 Active Website
DNA 332 New first paragraph
Respondents acquire no right or legitimate interest in domain names by merely registering them, but if they satisfy any of the circumstances set forth in paragraph 4(c) of the Policy, which may include monetizing their use or operating businesses acquiring and selling domain names, and they either have priority through registration or complainants lack any proof of pretextual conduct, they have unassailable rights or interests in them.

6.01-B.2.a Inferring Bad Faith Registration from Passive Use
DNA 334.  Following footnote 25 add new text and replace the text of footnote 26:
A dictionary word registered as a domain name that could be either legitimate or not, is not legitimate if passively held and respondent offers neither excusable explanation nor demonstrable evidence of future use.  “Aeried” for example could either be illegitimate if the added “d” (see Typosquatting, Section 5.05-E) is an intentional ploy, or legitimate if the registration was without intent to capitalize on AERIE. To overcome the inference of typosquatting respondent would have to “actually show [an] intent to use [the domain name in a manner] that did not encroach on Complainant’s protected commercial area.” 26
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26  Retail Royalty Company and AE Direct Co LLC v. Daniel Cormier, FA1610001698852 (Forum November 23, 2016) (<aeried.com>) (“The Panel does not agree with Respondent’s contention here because Respondent has no use or planned use to support such a claim [that it has intentions for the domain name].”)

DNA 334-335 Delete “Passage of time does not cure illegitimacy” and begin new paragraph with “Since exonerating evidence is solely within respondent’s control….”

6.01-D.1.c Common Words, Common Phrases
DNA 353.  Opening paragraph first sentence add new footnote after “at a disadvantage.”

__________________
126A This can include trademarks that have lost their distinctiveness to genericide. See Shop Vac Corporation v. Md Oliul Alam / Quick Rank, FA1611001701026 (Forum December 10, 2016) (SHOP VAC and ) (“[I]t appears on the material before the Panel that the word ‘vac’ is commonly used in the industry as an abbreviation for ‘vacuum’ and that the expressions ‘shop vac’and ‘best shop vac’ are in common use with respect to vacuum cleaners other than those of Complainant.”)

6.02-C Cease and Desist Letter
DNA 376 Revise the opening   paragraph to read:
The timing of a cease-and-desist letter (or even a failure to serve one 257A) can be a critical factor in determining parties= respective rights to the disputed domain name, but if the claim lacks merit serving a complaint may be sanctionable. 257B
_______________
257A. See Souq.com FZ LLC v. Ruiling Wang, Comcom Communications LLC, D2016-2085 (WIPO December 12, 2016) () (failure to send notice “has allowed the Respondent to solidify its rights to the Disputed Domain Name.”)

257B See discussion in Reverse Domain Name Hijacking, Section 7.11. Respondent responded to the cease-and-desist notice in Happy as Clams, Inc., a California Corp., DBA Date Like a Grownup v. Heather Dugan, D2014- 1655 (WIPO November 1, 2014) but the parties were unable to reach a settlement of the dispute. Panel explained that it could have sanctioned Complainant but refrained: “A finding of abuse of the administrative proceeding is always discretionary with the Panel. . . [However], [i]n recognition that . . . this appears to be the first time this Complainant or its representative has brought a proceeding, the Panel will refrain from making one in this case.” In Airpet Animal Transport, Inc. v. Marchex Sales, Inc / Brendhan Hight, FA121100 1470056 (Nat. Arb. Forum January 2, 2013) (alleged common law trademark) the three-member Panel was unanimous in finding RDNH: “Complainant applied for a trademark after knowing about Respondent’s domain name and did not disclose that fact to . . . the Panel. Once again, the question is why not? Presumably, Complainant wanted to improve its chances in registering its mark and this proceeding.” See also TOBAM v. M. Thestrup / Best Identity, D2016-1990 (WIPO November 21, 2016) (<tobam.com>) (“Respondent’s warning in response to Complainant’s cease and desist notice is a factor in determining reverse domain name hijacking: “This warning should have given the Complainant serious pause for thought but it ploughed on regardless.”)

6.04-A.2 Ambivalence of Application
DNA 394 Add after footnote 369:
but any commercial use of the domain name would render its registration infringing.

DNA 394 Last lines of the paragraph on this page delete “form” and add “composition.”

DNA 394 New sentence following “U.S. case law.”
Some View 1 panelists are firmer on domain names identical to trademarks but allow fair use for domain names composed of <trademark+[qualifier, such as “sucks”]>.

DNA 395 New second paragraph:
The split among panelists is generally based on their engendered views or the domiciles of the parties. While legitimate free speech rights may be considered an international norm, the U.S. is unique in having the right embedded as a Constitutional principle. As a result, parties’ citizenship can make a difference to the outcome of a dispute. 370A
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370A Compare for example White Ribbon Australia v. Whois Privacy Protection Service, Inc / Erin Pizzey, D2016-1234 (WIPO September 5, 2016) (<whiteribbon.org> in which the parties are Australian and U.S. citizens: “Respondent has the right to freedom of speech, [but the Panel] is of the view that there is a clear distinction between a right to express critical views and freedom of speech, and a right or legitimate interest in respect of a domain name which is identical to a complainant’s trademark”) and in Fraternal Order of Moai, Inc v. Tim Glazneraim, FA160700 1686147 (Forum August 30, 2016) (<fraternalorderof moai.com> and in which the parties are U.S. citizens, and having considered the “First Amendment of the United States Constitution” the Panel held the registration of the domain name was not abusive.)

CHAPTER 7

7.06-A Procedural Orders
DNA 471 Add foonote 247A
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247A Panel requested Rule 12 is properly used to clarify issues. See Viacom International Inc. and MTV Networks Europe v. Rattan Singh Mahon, D2000-1440 (WIPO December 22, 2000) (“[I]t would, and should, be in exceptional cases only that supplementary submissions are requested by a Panel. If requesting supplementary submissions were to become unexceptional, the dispute resolution procedure under the Uniform Policy and Rules would most likely become significantly more resource-consuming to all the actors (i.e. the parties, the dispute resolution service provider, and the Administrative Panel) than is currently the case, as the unfolding scenario in this case demonstrates. Such an outcome seems contrary.”
It should not be used to assist a party, VideoLink, Inc. v. Xantech Corporation. FA1503001608735 (Forum May 12, 2015) (“At the request of the Panel pursuant to Rule 12, Complainant provided an Additional Submission contending that the UDRP analysis should occur not when Respondent originally registered the domain name but when Respondent renewed the domain name in June 2010.”) However, renewal of registration is not grounds for forfeiture under the UDRP. See  7.12-B.2 Provider Supplemental Rules, Nat. Arb. Forum for discussion on Rule 7 which provides for additional submissions.

7.10-B.1 Objectively Groundless Complaint
DNA 490. Add the following after footnote 330 followed by new footnote, 330A:
The classic improper conduct is using the Policy to increase leverage in negotiations to purchase a domain name which has been called the “Plan B” strategy.330A
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330A Patricks Universal Export Pty Ltd. v. David Greenblatt, D2016-0653 (WIPO June 21, 2016) (<patricks.com>) (“Complainant’s only real gripe is the price Respondent demanded for the Domain Name, making this a classic “Plan B” case).

DNA 501. Add the following to the end of the paragraph that ends with “termination.”
Moreover, “the net effect of refusing an objection in these terms would be to allow any complainant to avoid the only form of sanction which the Policy provides for the making of a complaint in bad faith merely by applying for voluntary termination of proceeding once it becomes aware that a response has been filed.”390A
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390A Intellect Design Arena Limited v. Moniker Privacy Services/David Wieland, iEstates.com, LLC, D2016-1349 (WIPO August 29, 2016) (<unmail.com>).

CHAPTER 8

 

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