The UDRP Blog™

In SecretLab SG Pte Ltd v. Jason Bright, Secret Lab LLC , WIPO Case No. D2018-2807 (Clive L. Elliott, February 7, 2019), the Panel refused to transfer the disputed domains secretlab.com and thesecretlab.com to the owner of several registrations for the mark SECRETLAB. It is not often that a UDRP Complainant has its complaint denied, but the facts in this case did not favor a transfer and Respondent lawyered-up to mount a vigorous defense against Complainant's claims. Looking at the three elements of a UDRP claim, the Panel first examined whether the disputed domains were identical or confusingly similar to a mark owned by Complainant. As Complainant owned several registrations consisting of the term SECRETLAB, the Panel found the requisite similarity between the disputed domains and Complainant's registered trademark. Things started to go south for Complainant, however, once the Panel turned its attention to the second element of a UDRP claim, namely, whether Respondent h...

In Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico , WIPO Case No. D2018-2882 (James Bridgeman, January 27, 2019), the Panel transferred calivnklein.com to the owner of the famous CALVIN KLEIN trademark. If you just read the previous sentence and thought this was a straight up cybersquatter case, where the infringer registers a domain name corresponding with the exact trademark of a brand owner, look at the disputed domain again closely-- it is actually a classic example of typosquatting, whereby infringers capture domain traffic where an Internet user is seeking a particular brand owner but mistakenly mistypes the web address of such brand owner. This case is also a perfect example of how quickly an infringing domain can be recovered via a UDRP action filed with WIPO. In this instance, the infringer registered the disputed domain on December 10, 2018, Complainant filed its com...

In a classic typosquatting case involving inversion of letters, the Panel in Costco Wholesale Membership Inc., Costco Wholesale Corp. v. Domain Administrator, See PrivacyGuardian.org / Markus Tamn , WIPO Case No. D2018-2523 (Pablo A. Palazzi, December 20, 2018), transferred the domain costoc.com to the well-known warehousing giant Costco. The entire process from filing the Complaint to the date of decision was 45 days, or roughly the equivalent of hours I spend per year standing in line at Costco. The Panel first confirmed that the disputed domain was confusingly similar to a trademark owned by Complainant, noting that "[t]he inversion of the letters 'c' and 'o' in the Disputed Domain Name represents a misspelling that does not provide sufficient distinction from the Complainant's trademark." Next examining whether Respondent held any rights or legitimate interests in the disputed domain, the Panel found no such rights or interests. More specifica...

In Steven Madden, Ltd. v. Domain Admin, Whois Privacy Corp. , WIPO Case No. D2018-2474 (Jane Seager, December 24, 2018), the Panel transferred the domain stevenmadden.com to the famous footwear, apparel, and accessories brand known as Steve Madden. Respondent, a Chinese individual, did not respond to the Complaint. Turning to the first of the three elements of a UDRP claim, the Panel found that the disputed domain was confusingly similar to trademarks owned by the Complainant. Interestingly, despite its corporate name Steven Madden, Ltd., Complainant apparently does not own any STEVEN MADDEN trademarks, but does own several registration for STEVE MADDEN and also a registration for STEVEN BY STEVE MADDEN. The Panel found that the disputed domain was confusingly similar to both of these marks, emphasizing that “'Steven' is an obvious variation on the spelling of the name 'Steve', which forms part of the Complainant’s [STEVE MADDEN] trademark." Continuing, the Pa...

In TPS Parking Management, LLC v. Liujunyao , WIPO Case No. D2018-2252 (Douglas Clark, December 11, 2018), the Panel ordered the transfer of theparkingspotcoupon.com to TPS Parking Management, LLC, owner of the THEPARKINGSPOT and SPOT trademarks. The individual Respondent did not submit a response. As always, Complainant was tasked with satisfying the three elements of a UDRP claim, namely: 1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; 2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and 3. The disputed domain name has been registered and used in bad faith. These elements are discussed in turn below. Regarding the first element, the Panel readily determined that the disputed domain was confusingly similar to Complainant's trademark, as the disputed domain includes the entirety of the THEPARKINGSPOT trademark, with the mere addition of the d...

In a straightforward, old-fashioned typosquatting dispute, Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Vladimir Snezko , WIPO Case No. D2017-2405 (Andrea Jaeger-Lenz, February 2, 2018), the Panel ordered transfer of the domain costoco.com to the wholesale company Costco. Respondent, which had held the disputed domain since 2000, did not respond to the UDRP complaint. Starting with the first of the three factors necessary for a complainant to prevail in a UDRP dispute, namely, whether the disputed domain is identical or confusingly similar to the complainant's trademark, the Panel noted that "[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark." The Panel found that that minor differences between the disputed domain and Complainant's COSTCO trademark did not obviate the visual and phonetic similarities between them, and thus fo...