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.
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
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
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
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
I’ve been kicking around writing about a recent WIPO panel decision that I thought may have been wrongly decided for over a month now; finally getting around to doing it, and I think I’ve finally come to understand that it was not wrongly decided. A Finnish company, Progman Consulting Oy, filed a UDRP over the domain name progman.com. The Panel dismissed/denied the complaint, stating:
The Complainant submits that <progman.com> is confusingly similar to the companyname Progman Consulting Oy. For the Complainant to succeed, the domain name <progman.com> must be confusingly similar to a trademark or service mark in which the Complainant has rights. The existence of the company name (as distinct from trademark rights per se in that… Continue reading