Cybersquatting & Domain Dispute Lawyer Attorney Law Firm - Domain Dispute Arbitration Panel Finds Authorize.net Waived Rights to Complain of Trademark Infringment After Over 10 Years of Use

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2008.07.15

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Cybersquatting help: If I receive a cease and desist letter from a lawyer saying i am infringing a trademark, what should I do? What shouldn't I do?

By requesting this disclaimer be added to the page it shows that Authorize.net essentially blessed the use of Authorized.net by the reseller. The panel found that Authorize.net was aware of the use of Authorized.net much earlier and didn’t do anything about it. The sole panelist, Richard G. Lyon, even quoted part of a Sherlock Holmes novel to question why Authorize.net dodged the question as to why it took a decade after the the domain was registered to file the complaint:

“There is…no explanation for Complainant’s six years of silence before the 2005 email requesting a trademark acknowledgment,” Lyon wrote. “The Reply’s omission of this issue is either inexplicable or the eloquent dog that did nothing in the night.”

The most closely analogous factual pattern the Panel could find is National Futures Association v. John L. Person, WIPO Case No. D2005-0690. Respondent in that case had been affiliated with complainant for many years. In 1999 he obtained the disputed domain name and began sending out advertisements displaying it. Respondent submitted proofs of his advertisements to complainant for approval, they were reviewed by complainant’s staff and given references numbers confirming review, and they were apparently approved. In 2004 complainant sent respondent a notice of non-compliance with association rules regarding the documentation required for customer testimonials displayed on respondent’s website, but did not then address respondent’s use of the disputed domain name. The complaint was filed a year later. In denying the complaint the panel stated: “Based on the circumstances presented here, the Panel concludes that Respondent has a legitimate interest in the Domain Name because it used the Domain Name for a bona fide offering of goods and services with Complainant’s knowledge and acquiescence for several years before any notice of an objection by Complainant.”

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