Uniform Domain Name Dispute Resolution Policy
Uniform Domain Name Dispute Resolution Policy
Here’s a point to keep in mind, particularly when defending against a UDRP filing.
[K]nowingly registering as a domain name an identical name to that used by a competitor for substantially identical services is not necessarily an abuse apt to be dealt with under the Policy, even if resultant confusion of Internet users is inevitable. . . . If the name in issue is merely a description common to a particular trade and is being used by the Respondent in relation to that trade, the registration and use of the Domain Name may well fall outside the scope of the Policy. Were it otherwise, domain name registrants could effectively monopolise descriptive terms. The owner of <fish.com>, for… Continue reading
Here’s a very interesting, and instructive, case that just came out of WIPO. It deals with the legal issue of authority — the ability of an employee to bind his employer to an agreement — and more specifically “apparent authority,” which is whether the fellow in question has the trappings of someone we’d expect to have that authority. The question that often arises is, was the person who was relying on the employee’s word acting reasonably in relying on that employee’s statements about the deal? This usually depends on who the employee is, what his title is, and facts like that.
If your first thought is, “What the heck’s this got to do with the UDRP?” you’re definitely on the right… Continue reading
Visa recently lost a UDRP over premiercard.com, even though it does have a Community (EU) trademark registration on the word PREMIER dating from 2002 and a French registration dating from 1996, along with the obvious use in commerce in the financial, credit card sense. Is this another case of the geography defense?
Yes and no. The Respondent, located in Charlestown, St. Kitts and Nevis (I’m not sure if that’s two islands, or what), claimed that it had no knowledge of Complainant’s trademark registration in 2008 when it registered the domain name. The Panel noted
The Complainant has not furnished any evidence of the reputation of the mark to assist this Panel in deciding on the credibility of this… Continue reading
In a domain name, that is. A recent decision out of NAF showcases this important point. In the decision, Dancesoft filed a complaint about dancepartners.com, claiming that the domain infringed on its DANCEPARTNER.COM mark. The mark was registered in 2004, with a claimed first use in commerce of about 2003 (although Complainant claimed it was using its site in 1998). The domain was registered in December 1999, by the Respondent.
The Panel’s decision summarizes — at length — the parties’ arguments. For the most part, Complainant argued that the domain was confusingly similar to its domain name / mark, and that the Respondent had demanded unjustifiable payment to transfer it. The Respondent wisely attacked the enforceability of the mark,… Continue reading
One of the ways your UDRP can get dismissed by the Panel without a decision one way or the other is if there is some sort of underlying business or contract dispute, or even litigation, going on at the same time as the UDRP. This recent NAF dismissal highlights some of these contract dispute circumstances. The domain at issue there was naturalsapphirecompany.com. Apparently it was registered by the Respondent as part of a deal with the Complainant to set up a website, or websites, even using the Complainant’s credit card to do so. Of course, the Respondent was still listed as the owner of the domain name.
This is an important consideration, as a best practices issue: under no… Continue reading
Wow, this recent WIPO decision has it all: a big firm (Latham & Watkins) getting splatted, a Respondent who didn’t even bother to respond, a little bit of the “geography defense” and some genericness arguments about the claimed mark, a failure to show proof of common law rights in a mark, a domain registered in 1999, and some laches language! Here it is: American Funds Distributors, Inc. and the Capital Group Companies, Inc. v. Eunice May.
So, what the heck happened? Well, Latham got “Lathamed” sort of, heh.
First, the domain name at issue: americanfund.com. Note the missing “s” … the Complainant argued that this was a clear case of “typosquatting,” a deliberate misspelling of the trademark to profit… Continue reading
Discussion forums are like online bulletin boards, where people can exchange “posts” back and forth, posing and answering questions on an infinite variety of topics. But what if someone is using a domain name that incorporates your brand’s mark to host their forum? Does the UDRP provide any opportunity to seize control of the domain name in that situation?
It might. As is often the case, it usually depends on the particular circumstances of the use at issue. This recent WIPO decision on bewinnersforum.com highlights one of the potential pitfalls for brand owners seeking to exert control over third party folks. The Complainant owned several registrations on “BEWINNERS” in the EU and Austria., and apparently has something to do… Continue reading
The strongest response that a registrant can raise usually comes in the form of an argument that goes like this: “I live in <xyz>, and there’s no way I could have possibly known about the <trade/service>mark rights in country <ABC>. Therefore, there’s no evidence of bad faith.”
I’ll call this the Geography Defense. Because trademark and service mark protections vary by jurisdiction (country, or even state / province), it’s entirely possible that a smaller, local or regional mark might be very well known in its limited geographic area, but completely unknown to the world at large. So, a registrant in India may not be aware of a small retail goods producer in Portland, Maine.
Of course, everyone always wants to… Continue reading
For the purposes of the UDRP, the analysis of the third prong — whether the domain was registered and is being used in bad faith — starts with looking at the date of original registration. But if the current registrant is not the original registrant, things get a little more interesting.
Under the majority view, merely renewing your original registration is not a “new registration” sufficient to restart the bad faith calculus, usually. There are circumstances where it might, as the link points out, including where
” . . . the registrant changed its use of the domain name prior to renewal; such use amounts to textbook cybersquatting; and the registrant nevertheless proceeded to renew the domain name registration… Continue reading
I had coffee with the esteemed Doug Isenberg this morning, and he posed an interesting question during our chat. Generally speaking, the top level domain (“TLD”) is ignored for the purposes of a UDRP, but what about the instances where it forms some part of the actual mark? Where this is most often likely encountered would be with country code TLDs (“ccTLDs”), for example .ly, .me, .co, etc.
I did some quick research and found a case that seems directly on point. According to project.me GmbH v. Alan Lin, DME2009-0008 (WIPO Nov. 11, 2009),
[t]his Panel considers that the appropriate approach in this case to determining identicalness or similarity of the disputed .me domain name with the Complainant’s trademark… Continue reading