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Domain names and fair use

Gerald M. Levine

Domain Man

The continuum of defenses to claims sounding in trademark that runs from free speech, through fair use to nominative fair use is a longtime topic of interest around here, from the beginning of this humble endeavor through right about still.  Luckily, when it comes to domain names, Gerald Levine continues to give it away for free.  Now the author of the gospel for domain name law, Domain Name Arbitration, hasposted a great piece on his blog called, “Noncommercial and Fair Use in Rebutting Claims for Abusive Registration of Domain Names.

I dropped “noncommercial use,” as distinct from fair use, from the title of this post for snappiness purposes only [Update:] — and because I will be dealing with the protected speech part in a subsequent post, please God.

As Gerry points out, this piece extends an earlier treatment of his on the same topic but focusing on judicial, not UDRP arbitration decisions.  You need both.  From the introductory section:

The UDRP lists three nonexclusive circumstances for rebutting lack of rights or legitimate interests in domain names, which if successful also concludes the issue of abusive registration in respondent’s favor. The third circumstance is “you are making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Noticeably, 1) what is legitimate is expressed in the disjunctive (it is either one or the other); and 2) the “without intent” clause is not “without intent for commercial gain” but “without intent for commercial gain to misleadingly divert consumers.”  In other words, there can be commercial gain as long as there is no intent “to misleadingly divert consumers.”  The term “fair use” is generally associated with protected speech; the right to express opinions in the form of commentary or criticism, but nominative fair use which fails under “noncommercial” (because it is definitely not that) qualifies under “fair use.”

How panelists construe these very different “fair use” circumstances open a window into the assessment process and of the determining factors for proving or rebutting legitimacy. In both nominative use and protected speech legitimacy rests on answering the “why?” question. Incorporating trademarks is intended to achieve particular and lawful ends which in either instance is beneficial to consumers even if intolerable to owners.

Why can't UDRP parties just get along like these cute Swarovski bunnies?

Why can’t UDRP adversaries just get along like these cute Swarovski bunnies?

Or perhaps, even if it seems intolerable to owners.  It’s really almost always quite tolerable.  I particularly appreciate Gerry’s formulation:  “In both nominative use and protected speech legitimacy rests on answering the ‘why?’ question.”  Why, that is, are you using that particular trademark?  Good excerpt here that provides great “takeaway” on nominative fair use in the UDRP context:

Over time the right has expanded from dealing in owners’ products (authorized in the case of Okidata but now including unauthorized resellers, service providers, and distributors) to include what is now also permitted under U.S. law, namely using domain names descriptively for goods or services identifiable to consumers from the trademarks but not in competition with the owner. . . .

While Respondents in Oki Data and Jaguar Land Rover passed their tests (authorized dealer of OKIDATA products and offering a service different from and noncompetitive with trademark owner) the Respondent in Swarovski Aktiengesellschaft v. Registration Private, Domains By Proxy, LLC, / Steve Hosie, CJ, LLC, D2015-2351 (WIPO March 7, 2016) () did not. The Respondent contended that “(i) the disputed domain name was purchased legally and within the legal fair use laws concerning domain names, and is being used by the Respondent under ‘Nominative Fair Use.’” The Respondent continued with a list of other reasons the registration was lawful.  However, the three-member Panel in Swarovski was not impressed: Read More…

The odd inversion of the trademark “rights in gross” conundrum

Sunset, Court Plaza

A courthouse

Is reselling domain names a violation of the UDRP? At his blog, Gerald “Mr. UDRP” Levine lays out the question, and then answers it plain and simple (emphasis mine):

On the question of reselling domain names on the secondary market, a dissenting panelist in a 2005 case observed that “[t]here is no doubt Respondent is in the business of being a reseller of domain names that consist of common English words” and then suggested that the “fundamental question before the Panel is whether or not such a business should be allowed under the UDRP.” He concluded that such a business should not be allowed: “I would … find Respondent has engaged in a pattern of preventative domain name registration through its prior conduct of registering domain names that are identical to third-party marks.” Shoe Mart Factory Outlet, Inc. v., Inc. c/o Domain Administrator, FA0504000 462916 (Nat. Arb. Forum June 10, 2005).

The same panelist (again in dissent) in Randall E. Kay v. Sebastian Kleveros / Comcept – Internet Ventures, FA1602001659119 (Forum March 18, 2016) (<>) states

Reselling domain names does not constitute a bona fide offering of goods or services for the purposes of the UDRP. To allow such an absurd construction would eviscerate the UDRP because every respondent could demonstrate rights by simply offering the relevant domain name for sale to the general public at the time of registration. The UDRP could be easily circumvented.

This exaggerates the consequences beyond recognition; buying and selling domain names is neither absurd nor would it eviscerate the UDRP. In fact, it’s legal.

And now you want to read Gerry’s post where he explains his conclusion.  My observation is just this:   Read More…

There’s NoSpace like home

Originally posted 2008-05-05 18:06:45. Republished by Blog Post Promoter

myspace-logoAt least for, which has lost a key domain name battle in England over the domain According to Bell Denning, solicitors for the respondent:

Both the first and the appeal decisions held that the vast majority of MySpace’s claims had no merit – not least because the UK ISP had legitimately registered the name some 6 years before the social networking site had been formed and the Stockport based ISP had been using it to host numerous websites for clients.

Instead argument centred on the most recent use of the domain as a Pay Per Click website, hosting adverts for other websites that users could link to by clicking on them. . . . [The panel] held there was “insufficient material” to uphold MySpace Inc.’s allegations.

Of more general interest was the second main point covered – namely whether parking use that started as legitimate could become abusive when the nature of the adverts hosted changed due to the sudden fame of a third party. In this case the adverts changed to reflect the fame of, but that had happened automatically as a result of the algorithms used by parking company Sedo. MySpace Inc. claimed TWS should have exercised control over the content of the adverts. No, said TWS – that is not a change of use. Read More…

Who’s yer daddy?

Originally posted 2012-08-06 17:28:25. Republished by Blog Post Promoter

GoDaddyMarc Randazza does a great job in explaining, and suggesting at least one answer to the question, “Is GoDaddy a Cybersquatter?”

Generic genericness

Originally posted 2013-06-18 10:42:49. Republished by Blog Post Promoter

IntersessionWhat is “generic genericness”?  I just coined the phrase.  It refers, I maintain, to a genericness defense against infringement made by the junior user of a trademark where the English word on which the defense is premised doesn’t, well, exist, but the defendant maintains that the mark is so generic-y — i.e., so much like other words that really do exist — that it should be treated as generic anyway.

It is an intriguing argument, generically speaking.  But, it seems, a losing one, at least in this UDRP case reported by Gerald Levine:

Trademarks gather strength as they ascend the classification scale. In order, fanciful, arbitrary and suggestive are at the strong end of the scale, while descriptive and generic (if they qualify for registration) are on the weak end. The registry of trademarks includes numerous well-known dictionary words used fancifully or arbitrarily – think fruit: “apple”, “blackberry” and “orange”; or common words combined such as “micro” and “soft” and “America” and “Online.” More common words used descriptively have qualified when by their presence in the marketplace they have achieved secondary meaning. Whether domain name registrants are cybersquatting on the trademark depends on a number of factors that are discussed in Imagine Solutions, Inc. v., Privacy Services / Ravindra Kumar Lahoti, D2013-0268 (WIPO April 17, 2013). In this case, the domain name, is identical to the Complainant’s trademark.

Could it be generic? Yeah, maybe, possibly.  Depends, perhaps, on how many drinks you’ve had.  Either way, however, it’s a problem making this argument after someone else has already coined the term ENCAPTURE and is using it as a trademark:

Respondent argued that “encapture” is a common word. While “en” is a familiar prefix in English, “enthrone”, “enrapture,” “entangle” etc. it does not work with “capture.” “Capture” is a common word, but not “encapture.” What would the word mean? To Respondent the prefix is a substitute for “to ”, but that would violate standard usage. “En” may mean “to put on” (“enthrone”), indicate intensification of an emotional state (“enrapture”), or cause something or someone to become more caught up in (“entangle”). The Panel notes that “Respondent has alleged that the term ENCAPTURE is generic in the sense of describing ‘to capture’. . . .

In other words, Complainant has created a non-word that looks as though it could be a word because it appears to have been properly formed, but in fact its validity to English speakers (as with the fruit examples) depends solely on its use in the marketplace. It works only on the symbolic, not the grammatical level. The Complainant established that the manner in which Respondent was (or had been) using the domain name disqualified it as having a right or legitimate interest in it. While that alone does not establish abusive registration it is certainly consequential in supporting a conclusion that Respondent chose the domain name to take advantage of the trademark.

You might say he tried to “encapture” the goodwill of the markholder, which the UDRP, in its trademark-like way, forbids.  You could say it — but you wouldn’t be talking English.  There’s no such thing, see, as generic genericness.

dot… Pineapple?

Originally posted 2013-04-01 00:01:28. Republished by Blog Post Promoter

LoC got wind—and then a copy—of this letter, dated as of the date of this post, to ICANN in support of the creation of a new top-level domain. Further updates as events warrant.

An excerpt:


The undersigned respectfully present this white paper to the Internet Corporation for Assigned Names and Numbers (ICANN) in order to advance the case for the creation of a new top-level domain (TLD), to wit: “.pineapple.” The creation of such a TLD would without question help resolve the longstanding debate over what Internet content is pineapple-related, and thereby aid service providers in discharging their responsibility under the Tropical Plant Communications Act of 1996.

View the entire white paper here.


Merchant of Baloney

Originally posted 2014-10-26 19:37:36. Republished by Blog Post Promoter

Hilarious posting on John Welch’s TTAB Blog about what looks like PTO connivance in the wild and wacky career of would-be trademark king Leo “Likelihood of Derision” Stoller.

There is a Merchant of Venice restaurant out there, though, John. Doesn’t sound so kosher, but I wonder what they charge for the quarter-pounder of flesh?

“Domain Name Arbitration”: An Old Testament for a New Body of Law


The new UDRP Bible.

Internet law, “we” used to say, is a young man’s game.  We stopped saying it though — not because political correctness mandates that we say “young person,” though it does.

But no, “we” stopped saying it when we got old.  Wine ages well, but do lawyers?

Funny you should ask.

Now what we say (and we say it in all sincerity) is that lots of young lawyers get the Internet, but they’re still only young lawyers. On the other hand, an old, experienced, battle-scarred, been-there-done-that lawyer who also gets the Internet?  That’s a lawyer you hire!

I mean me, of course.  But how can I stand before Gerald M. Levine, master of UDRP domain name arbitration, who has just released the definitive guide to that topic?  It’s called Domain Name Arbitration: A practical guide to asserting and defending claims of cybersquatting under the Uniform Domain Name Dispute Resolution PolicyIt’s self-published, just like LIKELIHOOD OF CONFUSION, which means it’s a lot less expensive than if it were somebody-else published.  But it’s a darned fine book of words all the same.

That’s no surprise. Gerry Levine has been at this for a while; he was admitted to practice in New York the year I became a bar mitzvah.  That could in theory make him only little more than ten years older than your blogger, which is, yeah, old, for an “Internet lawyer.”  But actually Gerry’s way older than that — before law school Gerry he had already received a Ph.D in English Literature from NYU and taught for several years at Queens College at City University in New York.

Gerald M. Levine UDRP Expert

Veteran, yes, but not half as crusty as your blogger.

While I’m not sure why Gerry, who had been practicing litigation and ADR and working as an arbitrator for years before there was even such a thing as an Internet — heck, it may even have predated Al Gore’s bar mitzvah! — decided to develop a focus on UDRP practice in the middle of his second career, I’m glad he did. Read More…

Susan Crawford: Why I Voted For XXX

Originally posted 2007-03-31 23:09:23. Republished by Blog Post Promoter.

Susan Crawford explains, at considerable length, why she voted with the minority at ICANN on the defeated proposal to open up a “xxx” new domain registry for dirty Internet websites:

I continue to be dissatisfied with elements of the proposed xxx contract, including but not limited to the “rapid takedown” provision of Appendix S,[1] which is manifestly designed to placate trademark owners and ignores the many due process concerns that have been expressed about the existing UDRP.

XXXI mean, there are a whole lot of other issues here, and you should read her and other comments on why this vote went this way and what it means for Internet governance, which I for one care little about. I can barely govern myself. But I do find her reference to the influence of Big IP pretty interesting.

My proposal, by the way: I’d already herd the 5% of non-pornographic websites into a ghetto ending in, I don’t know, “.ok.”

Best of 2007: Tastefully done

Posted on July 20, 2007.

Brett Trout has a primer on “domain tasting” and its unsavory accompaniments. This is one of the “emerging issues” — just when I thought domain names were yesterday’s appetizer.

Domain tasters are a boon for those unpleasant uninvited companions, cybersquatters. They will devour your trademark — unless you pick up the check. Very poor taste, indeed.