Interesting tidbit from ICANNWatch about a domain name/trademark dipsute between the New York Stock Exchange and Afilias, the .info registry.  The author of the piece, who is involved in litigation with Afilias, posted a study here suggesting that approximately two thirds of the applications filed under Afiias’ sunrise program for .INFO were fraudulent.

Complainant, which does business as Stickopotamus, alleged it owned federal registrations for STICKOPOTAMUS.  A competitor in the sticker business obtained STICKOPOTAMUS.COM.   Are you leaning toward any party yet?  Complainant lost.  It didn’t document its claims that it owned trademark registrations.  Decision via UDRPlaw.net.

That which goes without saying sometimes goes without proving.

A group of ICANN registrars have banded together to oppose Verisign’s proposed Wait Listing Service, a provess for selling places in line to wait for domain names to expire.  Thus Verisign could obtain revenue from lots and lots of people off the same name.  The StopWLS group moved today for a temporary restraining order against ICANN to stop implemenation of WLS.  Its press release did not indicate if Verisign was named in the suit.  A Canadian company sued ICANN about this yesterday.  Information on Stop WLS here.  Verisign’s original proposal for WLS here.  A company that would be affected by WLS here. 

An issue that I would rather ICANN spent its resources on here.

UPDATE:  Here is an Internet.com article on the lawsuit that contains a quote from an ICANN spokesperson that appears to be mistaken about the nature of the WLS, which mistake is elaborated upon here at ICANNWatch.

Mega Bloks has prevailed over Lego in the Federal Court of Appeal in Canada in a matter regarding the look and feel of the studs and its interlocking toy blocks.  Coverage here.  The decision should be available here at some point.  Discussion of the lower court decision is here.

The Mega/Lego dispute has been going on for some time.  A discussion of a French case between the parties is here.

This is why you can never tell a client that you will definitely win. The District Court may display a ‘considerable misunderstanding’ of the likelihood of confusion analysis and you lose. 

Virgin Enterprises owns the famous VIRGIN mark which it uses on a wide range of goods and services, including electronic equipment megastores.  It also sells wireless service in other countries.  Defendants sold wireless phones and wireless service under the VIRGIN mark.  At the District Court level, Virgin LOST on the grounds that its rights did not extend to telecommunications services.  The fact that Virgin is already using the mark in connection with wireless services in some jurisdictions  suggests that wireless is within Virgin’s likely area of expansion here.

On appeal, the Second Circuit said “Of course there is a likelihood of confusion.”

Note to beginning trademark lawyers: this is why it is not the end of the world when you are not perfect:  Even a District Court Judge (and his clerks, who probably were on law review), can issue an opinion that the Circuit Court will state shows a considerable misunderstanding of the likelihood of confusion analysis.

Interesting aside:  Defendants had retained plaintiff’s long-time law firm for the opinion to clear possible marks, including VIRGIN. Defendant alleged that the law firm cleared the mark.  Virgin’s law firm entered an affidavit that it had refused to search the mark.  Virgin’s law firm wasn’t disqualified for a conflict of interest.  Defendant wasn’t reprimanded for making a false claim.  ???

Virgin Enterprises v. Nawab, et. al., 02-7491 11 (2d Cir. July 11, 2003).