201905.12

Thesun.com: “the sun shines for everyone”

Can trademark owners such as “The Sun” prohibit third parties from registering domain names that are identical to those trademarks? The issue raised is that of weakly distinctive trademarks because of the genericity of the word or words of which they are composed. Owners of such trademarks are inexorably exposed to stiff competition in the…

201904.14

Trademarks and domain names: it’s hard to be an acronym trademark!

At the conclusion of the WIPO D2019-0263 case, the panelist rejected the request from Groupement des cartes bancaires to obtain the transfer of the domain name cb.markets (WIPO, D2019-0263, Grouping Bank Cards v. Domain Administrator, Coinbase, Inc., April 2, 2019, denied). It is essentially on the ground of the criterion relating to the right or…

201810.23

Skyscanner loses UDRP complaint in surprising decision

On 5th October 2018, the WIPO Arbitration and Mediation Centre published a decision related to the domain name fly-scanner.com and ordered that the domain name remains with the respondent (D2018-1782). This decision may appear as surprising at first sight given Skyscanner’s huge market share and 60 million active users. Let’s try and understand the decision. The Complainant…

201808.03

Frivolous UDRP Complaints: Time to Claim Damages

Innovation HQ, Inc. has owned the domain weeds.com for several years. At the end of 2017, the domain name led to a single page with links made up of generic terms related to horticulture and gardening. This page also announced that the domain name was for sale. Weeds, Inc. owns trademarks that include the word…

201806.06

UDRP: the Boomerang Effect of the Response

The Uniform Dispute Resolution Policy (UDRP) procedure to obtain the transfer of a domain name is a straightforward proceeding, within which the evidentiary requirement is rather low. To obtain a favorable decision, the Complainant must satisfy three conditions: the domain name must be identical or similar to a trademark to which the Complainant has rights;…

201805.15

DreamWorks Animation Wins a Cybersquatting Case Against a Trademark Troll

In the field of intellectual property, a troll is an individual or a company that produces nothing but shows enough audacity to initiate proceedings to have an infringement of its alleged rights recognized. In 2014, the Troll producer won a UDRP case concerning two domain names: orientaldreamworks.com and shanghaidreamworks.com (D2014-0171, Dreamworks Animation LLC v. Hongyun…