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
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
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
There is a bit of a disconnect between the physical world of business and trademark, and the Internet world of domain names and, importantly, search. In the physical world, everything hinges on branding, recognizability, fame — a “mark” that is generic or descriptive in nature, like “Tissues,” is generally speaking not a mark at all, because it could refer to a huge number of different products made and sold by different businesses.
But in the Internet world, where domain names act as the real estate where business and commerce happen, there’s real value in these words. Why? Because people are often using these generic words when they’re searching for something through one of the many search engines. A user might… Continue reading
For the most part, UDRP denials are the most interesting decisions to read and analyze. However, a recent transfer by a WIPO panel is worth noting here, because it involved a 3-letter gTLD domain name: ppd.com.
On the surface, a 3-letter domain name would seem to be so susceptible of generic reference that it would be almost immune to attack under the UDRP. Unless the company is on the scale of an IBM, a 3-letter domain name could be used as a reference for a whole host of things, almost an infinite number of combinations of words. PPD would seem to me to stand for “post paid” but that’s just me.
In any event, the Complainant here was successful… Continue reading
For the most part, the Internet is a wilderness of free speech, properly so, I think. Sites like RipOffReport.com and the legion of consumer advocacy sites like it offer consumers a place to vent their frustrations about the companies they’ve dealt with, whether those complaints or gripes are really justified or not. That’s been businesses’ chief complaint about this activity — at worst, unfounded complaints can be fostered by competitors to tarnish or damage their brand and business, and the sites that host the complaints are both shielded from liability for the content and offer corporate sponsorship services (for a substantial fee) to help a company maintain control over its image, clean up the complaints, what have you. I’m not… Continue reading
A recent WIPO decision covering the randallsisland.com domain name has some great language about geographic places contained within a domain name.
Generally speaking, it is difficult for a Complainant to prevail, even where they do have a mark that contains the geographic identifier, against a domain name that is purely a geographic place name. This is because geographic places are by nature generic references to some physical place, which probably has a lot of businesses contained within it. It would appear to be highly unlikely that anyone would ever be confused about a generic place domain name, so long as it was being used in some generic, non-confusing fashion. And since confusion is really the touchstone of any trademark infringement… Continue reading
It is fairly common for people to register domain names involving their name, to use as a blog, for e-mail purposes, to share photos with friends and family, or even for a business. And because lots of us have common names, there’s naturally going to be a lot of overlap.
In the registration/development context, is there anything wrong with registering a domain name around a common surname, or last/family name, even if you don’t share that name? It seems like it would be exceedingly difficult to prevail against such a registrant, and here’s a recent case that illustrates exactly why that is so.
The owner of a mark on HINKLEY LIGHTING filed a UDRP over hinkley.com, and lost. The… Continue reading