UDRP
Uniform Domain Name Dispute Resolution Policy
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I recently was hired to represent the Respondent in a UDRP filed at WIPO over the domain name daedousa.com. I argued that the complaint should be denied, and was successful.
This was a pretty complex contractual dispute between two commercial parties, and the Complainant opted to try to use the UDRP to obtain transfer of a domain name that was originally registered in good faith. That was fatal to the complaint, of course. I can’t tell you how many UDRP inquiries from possible complainants I get—it’s a lot, that’s for sure—that involve very similar circumstances. If you’re trying to obtain a domain name and want to try to do it through the UDRP process, give me a call, first… Continue reading
Yesterday, I won a UDRP matter for my client, the owner of blue-mountain-coffee.com. Here’s a link to the decision at the National Arbitration Forum. My client was quite pleased to retain ownership of the domain, with its obvious geographic and generic connotations. I attacked the complaint on all three prongs of the UDRP, of course, but the Panel was most convinced by the argument under the first prong. Here’s what the panelist said:
Complainant claims that it is a licensee of the Coffee Industry Board, which granted Complainant permission to use the JAMAICA BLUE MOUNTAIN mark. The Panel finds no reason to doubt that Complainant has the right to import, market and sell products marked with the Coffee Marks Limited… Continue reading
Today is the (extended) last day to apply for .xxx Sunrise registrations, to prevent other parties from later registering a domain name with your trademark in it. More information here. I don’t think it’s been definitively decided whether the UDRP will apply to .xxx domains or whether the URS (“rapid suspension”) system will be in place; but that’s a minor detail when you can go ahead and protect your brand right now. (Also, if anyone has any definitive answers on that, let me know and I’ll update here.)
Update: UDRP does apply and URS doesn’t. Thanks to Kevin Murphy (@DomainIncite) for reminding me!
A typical question that comes up during a UDRP case is, what happens afterwards if the case is denied? Can you simply try again, or are you prevented from ever filing a UDRP complaint on that particular domain again?
The question involves the legal doctrine of prejudice, in other words, whether a matter has already been determined one way or the other. Under the UDRP, the general rule is that once a complaint has been denied, you may not file another complaint on the same domain against the same respondent. There are some limited circumstances, however, including
when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of… Continue reading
A recent WIPO case covered the use and effect of a disclaimer on a web site. The domain name in question, cineredcr.com, was registered and being used by a company based in Missouri with operations in Costa Rica (hence the “cr” part of the domain name). The Complainant objected on the basis of its numerous RED CINE trademark registrations, and claimed that the Respondent was cybersquatting on the domain name and profiting from misdirected traffic and customer confusion.
But the Panel disagreed.
It is appears from the record that Respondent has used the disputed domain name in connection with a bona fide offering of services in Costa Rica. Respondent has continuously used CineRed and CineRed CR since 2007, which is… Continue reading
I’ve had several inquiries lately from domain owners about their ownership and use of “fan sites,” or sites that may incorporate a trademark of a famous person or business for the purposes of talking about that person or business, collecting and republishing news about them, and activities like that. The questions I get are, does the trademark owner have the right to force me to give them the domain name, am I cybersquatting on the trademark owner’s rights? The answer, at least under the UDRP, isn’t 100% clear, but there are some general guidelines to keep in mind.
First, as a threshold matter, any fan site must be “clearly active and noncommercial.” What does that mean? It means you can’t… Continue reading
Nothing, and I mean nothing, makes trademark owners angrier than telling them they can buy your domain for $100,000, or more, particularly if the correlation between their mark and the domain name that you own is very high. This anger can often blind them to the legal issues in question in a UDRP proceeding, as they become so incensed about what they perceive as a demand that amounts to extortion, and may file a UDRP without good evidence to support their argument of bad faith registration and use.
Here’s a case precisely on point: the recent denial of a UDRP filed at WIPO over the domain gea.com. The owner of the trademark, GEA Group Aktiengesellschaft of Dusseldorf, Germany, apparently… Continue reading
The makers of the drug and owners of the trademark LEXAPRO filed UDRPs against the owner(s) of three domains: flexapro.com, flexapro.net, and flexapro.info. The cases were semi-consolidated by a WIPO panel into two identical decisions, available here (.net and .info) and here (.com).
The Complainant argued that the flexapro domain names were typosquatting on its registered mark. Typosquatting is the practice of adding, subtracting, or rearranging letters from a domain name with high traffic numbers. A great example of this is the recent Facebook lawsuit against lots of defendants over various misspellings of its “Facebook” trademark. (I’d love to comment about that case further because there’s some interesting theories involved, but I’m involved in it as legal counsel, so that’s… Continue reading
I’ve always thought that three letter, or possibly even four or five letter, domain names are probably invulnerable to transfer under the UDRP, because of the potential for the domain to be an acronym for so many possible business names, which would almost guarantee that a respondent could show some rights or legitimate interests in the name, causing any complaint to fail. Apparently, I was wrong, and a WIPO panel recently ordered the transfer of bjp.com to the Bharatiya Janata Party (BJP) of New Delhi, India.
(By the way, for a look at a truly awful website, check out the Respondent’s representative in this case, the-internet-lawyers.com. Be warned, very flash-intensive, but click on it and “enter” and you’ll… Continue reading
Here’s a very interesting Panel decision that came out of WIPO recently. Starwood Hotels, which owns the “W” hotel brand and trademark, filed a UDRP on several domain names registered by an individual with a history of cybersquatting, as acknowledged by the Panelist. Even though the alleged cybersquatter didn’t respond to the complaint, the Panelist found that Starwood failed to prove up its rights in the claimed mark at issue. What happened here?
The mark at issue in this case was the single-letter mark W, and W HOTELS. The Panelist discussed at length the analysis required to evaluate the first prong of the UDRP, and ultimately decided that while there was a mark at issue, it wasn’t particularly strong.… Continue reading