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 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.
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
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
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
It is always the Complainant’s burden to prove out its case under the UDRP that the Respondent (1) registered a domain name that is identical or confusingly similar to the Complainant’s rights in a mark, (2) that the Respondent has no rights or legitimate interests in the domain name at issue, and (3) that the Respondent registered and is using the domain name in bad faith. What that means is that you cannot simply fill in a few blanks of the templates that the various UDRP arbitration providers have posted on their websites for your use, and expect to receive a good result, even where the Respondent doesn’t respond.
Take this recent NAF case for example. I’m not sure if… 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