24
Mar/05

WIPO Releases UDRP FAQs


WIPO has released ” WIPO Overview of WIPO Panel Views of Selected UDRP Cases.”  Your questions regarding the UDRP:

1. First UDRP Element

1.1 Does ownership of a registered trademark to which the domain name is confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?
1.2 Is the content of a web site relevant in determining confusing similarity?
1.3 Is a domain name consisting of a trademark and a negative term confusingly similar to the complainant’s trademark? (“sucks cases”)
1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered/acquired unregistered trademark rights after the disputed domain name was registered?
1.5 Can a complainant show rights in a geographical term or identifier?
1.6 Can a complainant show rights in a personal name?
1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
1.8 Does a trademark licensee or a related company to a trademark holder have rights in a trademark under the UDRP?

2. Second UDRP Element

2.1 Is the complainant required to prove that the respondent lacks rights or legitimate interests in the disputed domain name?
2.2 Does a respondent automatically have a legitimate interest in a domain name comprised of a generic word(s)?
2.3 Can a reseller have a right or a legitimate interest in the disputed domain name?
2.4 Does a respondent using the domain name for a criticism site generate rights and legitimate interests?
2.5 Can a fan site constitute a right or legitimate interest in the disputed domain name?

3. Third UDRP Element

3.1 Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?
3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder? (Passive holding)
3.3 What constitutes a pattern of conduct of preventing a trade or service mark owner from reflecting the mark in a corresponding domain name?
3.4 Can constructive notice form a basis for finding registration and/or use in bad faith?
3.5 What is the role of a disclaimer on the web page of a disputed domain name?
3.6 Can statements made in settlement discussions be relevant to showing bad faith?
3.7 Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether domain name was registered in bad faith?

4. Procedural Questions

4.1 What deference should be owed to past UDRP decisions dealing with similar factual matters and legal issues?
4.2 Can a panel accept an unsolicited supplemental filing?
4.3 What is the proper language of the proceeding?
4.4 Under what circumstance should a refiled case be accepted by a panel?
4.5 Can a panel perform independent research when reaching the decision?
4.6 Does the failure of the respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?

Answered here.

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