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
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
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.
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
Under the first prong of the UDRP, a Complainant has to show that they have rights in a mark that is being unfairly used by the domain name at issue. This doesn’t mean that the Complainant has to be the actual owner or originator of the mark at tissue, they could be a licensed user of the mark (as in the case of a distributor or retail seller of the product/service) or simply someone who bought the mark. But they do have to show evidence of how they acquired the rights, and if they are merely a licensed user then they have to show that the actual mark owner approves of, or is included in, the UDRP filing.
I’ve been dreading writing about this, but I ought to cover it because it’s important and interesting. I recently represented a client as a complainant in a UDRP that was not successful, unfortunately. The reason the UDRP was unsuccessful, according to the Panel, was because we were unable to show rights in a mark at issue, the first prong of the UDRP. The problem was the client did not have a registered mark.
Although it is possible to file a UDRP on the basis of a common law mark, it can be difficult to prove. A business may not even have much in the way of records to support this sort of argument, because this just isn’t the sort… 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
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
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