Archive for the ‘wipo’ Category

Frank Schilling’s Name Administration Wins Another UDRP on 16 Year Old

November 3rd, 2015 Comments off

Frank Schilling’s Name Administration Inc represented as usually by John Berryhill, Ph.D, Esq., has won another UDRP this time on the domain name which was registered on September 28, 1999. “Torneo” is the common Spanish and Italian word for “tournament” The UDRP was filed by Sport and Fashion Management PTE. LTD. of Moscow, Russian […]

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2014 Final UDRP Stats From WIPO & NAF: 0.003% of All Domains Subject to A UDRP/URS

October 16th, 2015 Comments off
This week the WIPO published it stats for the cases it determine under Uniform Domain Name Dispute Resolution Policy (“UDRP”)  in 2014. Back in September the other major organization that hears UDRP and the only one to decide cases filed under the Uniform Rapid Suspension System (“URS”) the National Arbitration Forum (NAF) announced their stats […]

WIPO Publishes 2014 UDRP Figures & 2015 YTD: 14% of WIPO’s 2015 Cases Are New gTLD’s

October 13th, 2015 Comments off
WIPO released it annual report yesterday for 2014 and Year to Date numbers through September 2015. Cases filed ins 2014 were up only 2% from 2013,  with 2,634 cases being lodged by trademarks owners claiming abuse of their mark. Country-code top-level domains (ccTLDs) – accounted for 13% of all filings in 2014 with 71 national […]

Apple Inc. Wins and In UDRP

June 1st, 2015 Comments off
Apple Inc. has now won two domain names in separate UDRP cases. The first one was the domain name in a case that was terminated and the second and latest was which was ruled upon.

As Many As 5K .Com’s Taken Away By Sealed Court Order By Verisign Including Some Of Mine

October 2nd, 2014 Comments off
Overnight I received a notice that several domain names I owned were transferred by a sealed court from Verisign without notice and of course without the court order. The domain names just were transferred by Verisign to another domain and are now listed for sale at another marketplace. Another domainer sent me an identical notice […]

Vertical Axis Holds on to after complainant is denied in UDRP

February 21st, 2014 Comments off

In a 3 panelist ruling Vertical Axis holds on to but there is no finding of Reverse Domain Name Hijacking.

1. The Parties

1.1 The Complainants are Grupo Costamex, S.A. de C.V. (“Costamex”) of Mexico City, Mexico and Operación y Supervisión de Hoteles, S.A. de C.V. (“Opyssa”) of Cancun, Mexico, represented internally.

1.2 The Respondent is Vertical Axis Inc. of Barbados, represented by PC, United States of America.

Factual Background

4.1 The Complainants are part of the same group of companies and conduct business in the tourism sector. One of the Complainants, Costamex, is the parent company in this group. The Complainants’ business began in Mexico in 1984.

4.2 The Complainants’ revenues in 2010 were USD 222 million and they have 30 sales offices around the world. Their customer base comes from a large number of countries but is primarily from the North American continent.

4.3 The Complainants’ business first used the “Park Royal” brand in relation to its hotels in 1989. “Park Royal” hotels have subsequently been opened in various places in Mexico and Puerto Rico. The Complainants’ group of companies has been part of the RCI affiliation program since 1999, which has resulted in its Park Royal hotels being promoted among the RCI’s 3.7 million members around the world.

4.4 The Complainants also promote their business from a website operating from the url “”.

4.5 One of the Complainants, Costamex, is the owner of various trade marks that comprise of or incorporate the term “Park Royal” in one form or another in Mexico, the United States and Puerto Rico. Those marks include:

(i) Mexican registered trade mark no. 669695 for the word mark PARKROYAL in class 42 with a filing date of May 6, 1998. This is the earliest registered trade mark relied upon.

(ii) United States registered trade mark no. 3146797 for the word mark PARK ROYAL in class 39.

4.6 The Respondent is a well-known dealer and speculator in domain names. A company with the name Vertical Axis Inc. was incorporated in the British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland in January 2002, but this would appear to be the predecessor in business to the Respondent, which is incorporated in Barbados with company no. 24264. Although it is registered in Barbados and two of its directors give addresses in Barbados, its third director, Mr. Ham, has an address in Vancouver, Canada.…

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12 Year Old Dictionary Word, Domain Name, Saved In UDRP

August 24th, 2013 Comments off

Parlance Corporation lost a UDRP against on the domain name

Of course the domain name is also a dictionary word and the panel found  “the Complaint fails to establish either bad-faith registration or bad-faith use” so the panel should have found Reverse Domain Name Hijacking but didn’t even discuss the issue.

Here are the relevant findings by the one member panel:

The Complainant alleged that it owns A registered trademark PARLANCE and has used it since at least 1996 for its business, which is the provision of telephone operator services using speech recognition technology.

The mark was registered in June 1999.

The domain name was registered in August 2001, some 12 years ago but the panel also did not discuss the delay in bringing the proceeding either.

I think it was a lazy decision but a no brainier for the domain holder

“The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith because it is in the business of buying and selling domain names. 

“The Respondent owns over 5000 domain names and it replied to an email from Complainant with an offer to acquire the disputed domain name, stating that the Complainant is not eligible to acquire or purchase the domain name (apparently the Respondent only sells domain names to entities that acquired a related mark after the domain name was registered)

“The Respondent states that it registered the disputed domain name for its own business use immediately upon abandonment by the prior registrant. 

The Respondent executes name conception, logos and brand graphics, trademark research, and promotional copy for new start-ups and for corporations. 

Founded in Silicon Valley and based there until 2005, the Respondent holds, and manages for clients, generic and coined domains from and for use in its business. 

There are hundreds of companies in the US alone which offer the service of coining and locating names which are viable for a new mark use. Ideally the name proffered has an obtainable intuitive dotcom. The service is neither novel nor obscure, with demand over the past 20 years increasing alongside the growth of the internet.

“As the Respondent correctly points out, there is case law under the Policy to the effect that a business dealing in generic domain names is prima facie legitimate.

“As a result, it does have a legitimate interest in the domain name.

Since “parlance” is a word in the English language, and the Respondent is in the business of registering domain names composed of common words, the Panel holds that the Complainant has failed to satisfy its burden of proving that the Respondent lacks rights or legitimate interests.…

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Russian Registrar Regtime Ltd. Lose Two Legal Rights Objections To PIR’s .OPR & .Verisign’s .KOM

August 23rd, 2013 Comments off

Regtime Ltd. and Legato Ltd of the Russian Federation  just lost two separate Legal Rights Objections at WIPO on the new gTLD strings .OPR and .KOM

In The .OPR case the company objected to the Public Interest Registry (PIR) application of .OPR.

PIR operates the .Org registry.

The second objection was to Verisign’s new gTLD application for .Kom which is the more interesting decision in my opinion.

Regtime has functioned as an ICANN-accredited registrar since 2007. Regtime was the original owner of the word trademark КОМ, registered in the Russian Federation on August 4, 2009 with registration number 385,701 КОМ trademark”).

In the .KOM case Regtime says that in 2000, only ASCII domain names were available for registration in the Russian Federation.

Regtime recognized that VeriSign, Inc.’s solution, which required Internet users to switch character sets in order to type in a single IDN, did not fully meet the needs of Russian speaking Internet users, who wanted fully Cyrillic domain names.

Regtime licensed’s technology in order to provide a privately offered fully Cyrillic product with both the second level and the top-level sections in Cyrillic, described by the Objectors as the “КОМ Cyrillic IDN Product”. Because Regtime was not an ICANN- accredited registry operator like VeriSign, Inc., it could not create a Cyrillic version of an existing TLD, so its product would not be in the ICANN root and would only resolve if the Internet user downloaded a browser plug-in (known as “i-client”) that enabled the browser to resolve Regtime’s КОМ Cyrillic product, or the Internet user’s ISP applied a patch to its system which would enable the Internet user’s browser to resolve Regtime’s products. VeriSign, Inc. was an investor in, so it was fully aware of Regtime’s activities with regard to its КОМ Cyrillic product.
According to the Objectors, Regtime launched its КОМ Cyrillic product in March 2001 and issued press releases announcing the availability of its fully Cyrillic products through a number of channels including PRNewswire, Yahoo, and Techweb. On May 22, 2001, Regtime commenced a large public relations campaign to publicize its КОМ Cyrillic product in partnership with Interfax, the leading Russian International Information Group, which included a press conference with the leading Russian IT journalists and major television stations, as well as television ads on the major Russian National channels. The total expenditure by Regtime for this campaign was approximately USD 60,000. As a result, Regtime’s КОМ Cyrillic product received significant subsequent media attention, including by the BBC.…

Categories: External Articles, new gTLDs, wipo Tags:

Donuts Beats Back Academy Sports Legal Rights Objection To new gTLD .Academy

August 19th, 2013 Comments off

Academy, LTD., d/b/a Academy Sports + Outdoors lost is Legal Rights Objection filed against Half Oaks, LLC (a Donuts compny) application for the new gTLD .Academy finding that “the common generic use of the term “academy”, as well as the lack of clear evidence showing widespread public recognition of the Objector’s ACADEMY marks, standing alone, weigh heavily in the Applicant’s favor. In this case, the Panel finds that such considerations must result in rejection of the Objector’s Objection.”

The three member WIPO panel went on to note:

The Panel’s Determinations on the Three Standards

1. Taking unfair advantage of the distinctive character or the reputation of an Objector’s mark

The Objector argued that allowing the Application to proceed would create the opportunity for the Applicant to unfairly take advantage of the public’s misperception that the Objector operates or is otherwise associated with the < .academy> gTLD. The Panel finds this argument unpersuasive. The mere delegation of a < .academy> gTLD is unlikely to create any public confusion of the kind alleged, particularly given the generic and common nature and widespread use of the word “academy”.

If a second level domain was to be registered in such a way as to infringe on the Objector’s trademark rights, the Objector could rely on the UDRP and/or the URS, and, depending on the circumstances, might also be entitled to redress in an appropriate Court.

Furthermore, any advantage from a second level domain registration would accrue primarily to the second level registrant, not to the Applicant. It is therefore hard to understand how the Applicant is taking advantage by its use of the < .academy> gTLD.

2. Unjustifiably impairing the distinctive character or the reputation of the Objector’s mark

The Panel is not persuaded by the evidence presented that the mere existence of the proposed < .academy> gTLD could impair the distinctive character or the reputation of any of the Objector’s ACADEMY marks, let alone do so “unjustifiably”. Given the widespread usage of the term “academy” in daily speech and in other unrelated trademarks, the < .academy> gTLD cannot be seen as impairing the distinctive character of Objector’s marks.

3. Otherwise creating an impermissible likelihood of confusion between the applied-for gTLD and the Objector’s mark

Any confusion which could arise between the < .academy> gTLD string, standing alone, and the Objector’s ACADEMY marks (or with any of the Objector’s “family” of ACADEMY marks) may be insignificant.

The complication comes from the potential for confusion at the second level.…

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Biotechnology Industry Organization Loses WIPO Legal Rights Objection On New gTLD .Bio

August 19th, 2013 Comments off

Biotechnology Industry Organization of Washington, lost its Legal Rights Objection filed against Starting Dot applied for new gTLD .bio.

Here are the relevance findings by the one member WIPO panel:

A fundamental issue in this proceeding is the appropriate recognition of the word “bio” by different sectors of the public, founded on differences in the basic meaning of the word, and on differences in uses in different parts of the world.

From the Objector’s perspective, the word “bio” has become recognized as a powerful brand, signifying the services of its industry association and related activities.

From the Respondent’s perspective, the word “bio” itself is not perceived as a trade-mark, but as a word in common currency (in France and Germany in particular) which denotes organic characteristics in food or farming, and a variety of other meanings.

Respondent has gathered evidence showing that the word “bio” is widely used in third party trade-marks and domain names.

It also appears that Objector has tolerated widespread use of the term for many purposes (which even includes some examples of conferences in the field of biology).

No examples of enforcement against bio-formative domain names under the Uniform Domain Name Dispute Resolution Policy were identified. In the Panel’s view, this tends to show co-existence among many users of “bio” related signs, supporting Respondent’s contention that “bio” has many meanings and functions as a multi-facetted generic descriptor.

This factor favours the Respondent.

No specific conduct on the part of Respondent which could constitute evidence of an intention to trade on Objector’s reputation or the core elements of its business has been identified. On the evidence, the Panel therefore finds that Respondent intends to use the < .bio> string for the legitimate purposes described in its application.

In terms of awareness of Objector’s trade-mark rights, it appears likely that Respondent might have had at least some awareness, given the Internet presence of Objector’s business and its international registrations of the BIO marks. However, in this Panel’s view, this factor does not carry significant weight when there is otherwise no evidence that Respondent is attempting to trade on those rights.

In this matter, there has also been no suggestion that Respondent has engaged in a serial pattern of acquiring questionable gTLD strings.

Respondent’s application sets out the most reliable evidence of its plans for the < .bio> string. In this Panel’s view those stated plans indicate a bona fide offering of services related primarily to the operation of a platform for the sale and distribution of properly certified organic wares.…

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