PowerPoint Presentation
UDRP & WELL KNOWN TM
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You should be able to
1. Evaluate whether the UDRP will apply
2. Explain what factors make a TM well-known and the factors for recognition of a TM as well-known
Domain Names
FIRST COME, FIRST SERVED BASIS
FIRST TO FILE
ALL AUTOMATED
CONTRACTUALLY AGREE TO ONLINE DISPUTE RESOLUTION BY PANELISTS (NOT COURTS)
Domain Name Disputes
Trademark v Domain Name/ clashing domain name conflicts
Online dispute resolution – by ‘panelists’ e.g. WIPO
UDRP complaint grounds (explanation given at https://www.wipo.int/amc/en/domains/guide/#a1 )
– Confusing similarity
– No legitimate right to use
– Bad faith
Domain Name Dispute – an example
TM for this business (TM registered in 1965)
Used as their domain name
Swarovski.com
Domain name: country level
example: https://www.swarovski.com.cn/
Domain Name Dispute – an example
TM owned by the Swarovski company
swarovski.jewelry
REGISTERED AS A DOMAIN NAME BY X
Domain Name Dispute – UDRP grounds to decide if Swarovski.jewelry can be maintained
swarovski.jewelry
Confusingly similar?
No legitimate right to use?
Bad faith?
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-2351
SEE ARGUMENTS MADE BY BOTH PARTIES & DECISION !!
Domain Name Dispute – UDRP grounds to decide if Swarovski.jewelry can be maintained
swarovski.jewelry
Confusingly similar? yes
No legitimate right to use? No, x selling women’s clothing, not jewerly, so arguing that Swarovski crystals are being used to sell Swarovski based jewelry is not a genuine use
Bad faith? used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademark as to the affiliation of that website
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-2351
SEE ARGUMENTS MADE BY BOTH PARTIES & DECISION !!
Domain Name Disputes
BIOHACKS –
Complainant is H, Germany,
biohacks TM reg. 2019
Registered in 2008
Biohack…. A general term
Domain Name Disputes
BIOHACKS v
Confusingly similar?
No legitimate right to use?
Bad faith?
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-0050
SEE ARGUMENTS MADE BY BOTH PARTIES & DECISION !!
What makes this case different on facts from the previous case?
‘grouse’ websites… to complain about business
e.g. adding ‘sucks’ to the TM, to protest
E LECLERC v
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-0186
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2020-2836
Respondent states that it “registers domain names on the .sucks registry for the benefit of a non-profit, Everything.sucks, which provides an open forum for the public to discuss complaints about anything with which they may find fault”. According to Respondent, users “may create Wiki pages at Everything.sucks, each devoted to commentary on and criticism of a particular subject”. Once a Wiki page is created, Everything.sucks “may register a domain name using the topic of criticism as the SLD [Second-Level Domain] and the TLD [Top-Level Domain] ‘.sucks’ to direct users who wish to engage in criticism of that topic to the relevant Wiki page”.
Well known TM
Extra protection given to ‘famous’ TMs
A 13 PRC TM Law
https://www.natlawreview.com/article/guest-post-well-known-mark-recognitions-china-part-i
This Photo by Unknown Author is licensed under CC BY
TRADEMARK PROTECTION FOR TMs REGISTERED in CHINR ONLY
IDENTICAL MARK IDENTICAL GOODS/SERVICES CONFUSION PRESUMED
SIMILAR MARKS IDENTICAL / SIMILAR GOODS OR SERVICES CONFUSION TO BE ESTABLISHED
TRADEMARK PROTECTION – FOR WELL KNOWN TM
(depending on registered or not registered in China)
Reproduction, imitation, or translation of a well known TM NOT registered in China
IDENTICAL OR SIMILAR GOODS liable to cause public confusion
Reproduction, imitation, or translation of a well known TM registered in China
NON-IDENTICAL OR DISSIMILAR GOODS misleads the public so that the interests of the owner of the registered well-known trademark are likely to be impaired
Which of these do you think is most well known?
This Photo by Unknown Author is licensed under CC BY-SA-NC
This Photo by Unknown Author is licensed under CC BY-SA
Answer different from TM to TM and country to country
Process for recognizing a TM as ‘famous’ – as found in TM law and SC interpretation – A 14 PRC TM Law
determination made by court or govt body
This Photo by Unknown Author is licensed under CC BY-SA-NC
This Photo by Unknown Author is licensed under CC BY-SA
LI SI KA ER DUN
Class 36 for “commercial housing sales services; insurance; capital investment; art valuation; real estate agency; agency; guarantee; raise charitable funds; entrusted management; pawn shop”
Class 42 (Class 43) for “hotels; restaurants; barbeque restaurants; tea rooms; etc.”
ATTEMPTED TO BE REGISTERED AT A DATE LATER THAN RITZ CARLTON
https://www.natlawreview.com/article/guest-post-well-known-mark-recognitions-china-part-iii
Class 42 for “computer service; namely: to query and retrieve the information used on the computer network.”
Class 42 for “intellectual property supervision; computer leasing; computer programming; computer software coding; computer software maintenance; creation and maintenance of websites for others; hosting computer stations (websites)
https://www.natlawreview.com/article/guest-post-well-known-mark-recognitions-china-part-iii
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