The UDRP Blog™

The late Theodore Presser would be proud to know that his lawyers got it right A couple of days ago, here , I reviewed Gookinaid ERG, Inc. v. Valda Krievane , WIPO Case No. D2008-0487 (Alan L. Limbury, May 28, 2008), a case in which the Complainant failed to demonstrate its common law trademark rights, despite the fact that it appeared as though the Complainant had such rights. In other words, the case turned on a failure of proof. That case raised for me a simple question: What level of proof is sufficient to demonstrate common law trademark rights? I found the answer this morning in the newly published decision Theodore Presser Company v. John Smith/Whois Protection , WIPO Case No. D2008-0549 (Christopher J. Pibus, May 29, 2008). In that case, the Panel required the transfer of theodorepresser.com to the owner of the common law trademarks THEODORE PRESSER and THEODORE PRESSER COMPANY. Despite claiming use of the THEODORE PRESSER and THEODORE PRESSER COMPANY marks since 1883, the Comp...

Where the powers that be at Dayton Daily News determined to spend some subscription fees and go after a typosquatter In Cox Newspapers, Inc. d/b/a Dayton Daily News v. PabloPalermao , WIPO Case No. D2008-0372 (Joan Clark, May 19, 2008), the Panel required the transfer of daytondailynew .com to the owner of the registered trademark DAYTON DAILY NEWS. In finding the Respondent's domain confusingly similar to the Complainant's registered trademark, the Panel made clear that the mere deletion of a letter from the Complainant's mark did not obviate confusing similarity: "The removal of the letter 's' is so minor, at the very end of the principal part of the domain name, that it would not prevent the likelihood of confusion between the Complainant’s mark and the disputed domain name." In discussing bad faith, the Panel emphasized that the omission of a letter from the Complainant's trademark evidenced the Respondent's bad faith: "The choice of the...

Here look-- we have a trademark! Please believe us! In one of those cases where the Complainant could have but failed to prevail, the Panel in Gookinaid ERG, Inc. v. Valda Krievane , WIPO Case No. D2008-0487 (Alan L. Limbury, May 28, 2008) refused to transfer gookinaid.com and gookinaid.biz to a Complainant that claimed to own unregistered trademark rights in the designation GOOKINAID and GOOKINAID ERG. The Panel first set out the test for demonstrating unregistered trademark rights under the UDRP: "To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized b...

A map of Middle Earth from the famed The Lord of the Rings series In The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company” , WIPO Case No. D2008-0156 (James A. Barker, May 20, 2008), the Panel required the transfer of middleearthonline.com to the Complainant owner of several registrations for the mark MIDDLE EARTH. Unlike J.R.R. Tolkein's epic The Lord of the Rings series, with which the MIDDLE EARTH mark is associated, the Panel's opinion here was thankfully short and to the point. First, in concluding that the disputed domain was confusingly similar to the Complainant's trademark, the Panel highlighted the fact that the addition of "online" to another's trademark does not obviate confusing similarity: "The disputed domain name is not identical to [the MIDDLE EARTH] mark. But it is clearly confusingly similar. The only difference between them is the addition of the generic term ‘online’. It is well-established that...

One of a number of Golden Door Spa locations In a throwback to the early days of UDRP decisions, the Panel in Golden Door Licensor , L.L.C. v. Protected, WhoisGuard /Chen Bao Shui , WIPO Case No. D2008-0352 (Arne Ringnes , May 13, 2008) required the transfer of goldendoorspa .com to the owner of the GOLDEN DOOR SPA trademark. In most ways, the case was typical-- the domain name was being used in connection with sponsored links to the Complainant's competitors, the Respondent was a serial cybersquatter that had lost a number of UDRP decisions before WIPO , and the Respondent entered no appearance to defend himself. The decision to transfer was about as easy as they come. But what was not so typical, at least anymore, was the fact that the domain name at issue was identical (except for ".com") to the Complainant's well-known trademark. In the early years of the UDRP , say around 2001-2002, most WIPO decisions involved what I call "traditional" cybersqua...

What everyone secretly wants for Christmas, a Marvel vertical band saw. In Marvel Manufacturing Company Inc. v. Koba Internet Sales, LP , WIPO Case No. D2008-0265 (Peter L. Michaelson, May 5, 2008), the Panel refused to transfer marvelsawparts.com to the Complainant owner of the MARVEL trademark for sawing machines and blades. The Respondent was an unauthorized seller of aftermarket Marvel brand saw replacement parts. The Panel first concluded that marvelsawparts.com was confusingly similar to the Complainant's MARVEL mark. In so doing, the Panel rejected the Respondent's argument that the existence of other MARVEL trademarks owned by third-parties diluted the Complainant's mark such that confusing similarity should not be found. According to the Panel: "Under UDRP precedent, a very simple test is used to assess whether a domain name is confusingly similar to a mark: compare the domain with the mark to assess differences there between and then determine whether those ...

One of two Wagamama® noodle house locations in Boston. Bet my friends in the UK love this place too. In Wagamama Limited v. Park Hae Dong, Hae Dong Limited , WIPO Case No. D2008-0301 (Ross Wilson, May 6, 2008), the Panel required the transfer of wgamama.com to the Complainant owner the WAGAMAMA trademark. The Panel first reaffirmed several other decisions in holding that a domain name that omits a letter of another's trademark is confusingly similar for purposes of the UDRP: "The Respondent’s disputed domain name differs from the Complainant’s mark by simply one letter. In the disputed domain name the first 'a' is omitted. The Panel finds that the Respondent is obviously engaging in deliberately misspelling a known trademark - a practice commonly known as 'typosquatting'. The practice has been condemned by many panels and found to be confusingly similar to the marks which they mimic." Because the Respondent used the domain in connection with a website of...

My view of Big Brown just prior to post time It wasn't even close. Big Brown, the 1-5 favorite (that is 1-5, not 5-1!) to win the Preakness, delivered another convincing first place finish and moved one win away from being the first Triple Crown winner in 30 years. The prized thoroughbred and its namesake, United Parcel Service ("UPS"), are undefeated both in racing and before WIPO. After Big Brown claimed the roses at the Kentucky Derby, I reviewed a contemporaneous UDRP victory for UPS, here . Another win, another post for Big Brown. In United Parcel Service of America Inc. v. Advanced Express.com , WIPO Case No. D2007-0080 (William R. Towns, March 28, 2007), the Panel required the transfer of overnitedelivery.com to UPS. Without any response from the Respondent, the outcome was never really in doubt. The Big Brown namesake owns an incontestable registration for the mark OVERNITE, the Respondent offers competing delivery services, and the Respondent used the disputed do...

As a tribute to my beloved Philadelphia Flyers, who finally put the beat-down on the Pittsburgh Penguins last night, I am going to break from the normal format and review an older decision involving the best team in all of sports. In Philadelphia Flyers, Inc. v. credoNIC.com/DOMAIN FOR SALE , WIPO Case No. D2006-0199 (Richard W. Page, April 21, 2006), the Panel required the transfer of flyersalumni.com to the top franchise in NHL hockey and owner of the FLYERS trademark. In finding flyersalumni.com confusingly similar to the Complainant's FLYERS trademark, the Panel emphasized that "the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of other generic or descriptive terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark." (Internal citations omitted.) ...

Don't Mess With Texas!!!!....unless you are dealing with Texas International Property Associates. In a case where you knew the result upon seeing the Respondent's name, Messe Frankfurt GmbH v. Texas International Property Associates , WIPO Case No. D2008-0375 (Clive L. Elliott, April 29, 2008), the Panel required the transfer of messefrankfurtusa .com to the owner of the MESSE FRANKFURT mark. The case was no contest, as the Respondent notorious cybersquatter begged for mercy from the Panel by offering to voluntarily transfer the disputed domain name to the Complainant. When a Respondent consents to a transfer, a Panel has two options: "The Panel may find that in a circumstance such as this, where Respondent has unequivocally consented to the transfer of the disputed domain name, it should forgo the traditional UDRP analysis and order the immediate transfer of the domain name. The Panel may alternately find that the efficacy of such consent notwithstanding, there may nev...

A fancy room at the Sofitel Berlin Schweizerhof Ever try to book a hotel for an INTA annual meeting in the last weeks leading up to the meeting? Yeah, you feel me, right? No way you are scoring a room at a fancy hotel, and if you do find such a room, you are paying the equivalent of several Thomson search reports to get it. Thus, in the spirit of the upcoming INTA annual meeting, I couldn't resist the following case. In ACCOR v. Vista Holdings, Inc. , WIPO Case No. D2008-0291 (Dietrich Beier, April 21, 2008), the Panel required the transfer of accorhoteels.com to the hotel chain owner of the ACCOR mark. The Panel swiftly concluded that accorhoteels.com was confusingly similar to the Complainant's ACCOR mark, that the failed-to-Respond(ent) had no rights or legitimate interests in the domain, and that the disputed domain was registered and used in bad faith. This case was one of those complete knock-outs that you just love to read as a trademark attorney. While the facts, reaso...

There seems to be no stopping Big Brown. The horse dominated the Kentucky Derby, is the hands-down favorite to win the Preakness, and has its eye on the prized Triple Crown. But Big Brown's namesake, United Parcel Service of America, Inc. ("UPS"), is focused on a different "triple," namely, the "www" contained in the domain name wwwups.org. And just like Big Brown, UPS's complaint to secure wwwups.org was a runaway winner. In United Parcel Service of America, Inc. v. Michael Robert , WIPO Case No. D2008-0339 (John R. Keys, Jr., April 29, 2008), the Panel required the transfer of wwwups.org to UPS. The Panel, consistent with several prior Panel decisions, found that the addition of "www" to UPS's trademark did not obviate a finding of confusing similarity: "In this case, the use of the letters 'www', generally signifying and used to obtain access to the Worldwide Web, is a generic code used by virtually all Internet users ...

In Family Watchdog LLC v. Lester Schweiss , WIPO Case No. D2008-0183 (William R. Towns, April 23, 2008), the Panel refused to transfer familywatchdog .com, familywatchdog .net, and familywatchdog .org to the owner of a U.S. Trademark Registration for the mark FAMILY WATCHDOG. In so doing, the Panel made clear the limitations of seeking redress under the UDRP . The Panel spent considerable effort recounting the facts and allegations between the parties, which involved multiple cease-and-desist letters, offers to sell the disputed domains, filing of trademark infringement complaints with the concerned registrars, and a pending petition before the TTAB to cancel the Complainant's federal trademark registration. Faced with conflicting factual claims and an assortment of legal claims, the Panel took the high road: "On the basis of the statements and documents submitted by the Parties, the Panel has concluded that this case involves disputes regarding trademark rights and usage, t...

In F. Hoffmann -La Roche AG v. Julio Alvares , WIPO Case No. D2008-0254 (Andrea Jaeger - Lenz , April 18, 2008), the Panel compelled the transfer of easybuyvalium .org to the Complainant, which owned the registered trademark VALIUM. In finding that the domain name was confusingly similar to the Complainant's trademark, the Panel emphasized that the addition of "easy" and "buy" to the Complainant's trademark increased the likelihood of confusion as to the source of the drugs offered by the Respondent. According to the Panel: "With regard to the additional descriptive words 'easy' and 'buy', the Panel accepts the Complainant’s assertion that the mere addition of these generic terms does not necessarily avoid confusing similarity to the Complainant’s trademark...Furthermore, the generic terms are likely to create confusion as to the source of the offered products. Generally speaking, the use of a registered trademark in a domain name allow...

In Forever 21 v. Matthias Moench , WIPO Case No. D2008-0258 (J. Nelson Landry, April 16, 2008), the Panel required the transfer of foever.com. The Complainant owned the registered mark FOREVER 21, and the Panel was readily satisfied that the omission of the first "r" in FOREVER within the disputed domain evidenced actionable typosquatting. This conclusion was bolstered by the fact that the Respondent used the disputed domain in connection with a website containing a link farm, and had been on the losing end of four prior UDRP decisions. In reaching its decision, the Panel addressed two "potential" defenses. I say "potential" because these defenses would have had a better chance of success if the Respondent filed an argumentative response. As in the majority of UDRP cases, however, the Respondent defaulted and suffered the consequences of such default. The first potential defense related to the scope of the Complainant's trademark rights and the Respond...

In Georgia Power Company, the Southern Company v. Wang Congming , WIPO Case No. D2008-0234 (David Taylor, April 16, 2008), the Panel required the transfer of gerogiapower.com to the Complainant. Aside from the addition of the top level domain (.com) and the inversion of the "o" and "r" in "Georgia," the domain name was identical to the Complainant's registered GEORGIA POWER trademark. The case is a classic example of typosquatting, where domain profiteers seek to capture on typing mistakes made by Internet surfers seeking a particular website. In this case, the Panel found that "[t]he misspelling of the GEORGIA POWER mark in the domain name is with intent to intercept and siphon off traffic from its intended destination and direct them to the Respondent’s website." This conclusion was easy for the Panel, as "[t]he website under the disputed domain name contains links to 'Georgia Power', 'Georgia Power New Service', 'O...

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In Red Bull GmbH v. Carl Gamel , WIPO Case No. D2008-0253 ( Debrett G. Lyons, April 14, 2008), the Panel required the transfer of redbullsucks .com to the Complainant. In many "sucks" cases (where a party registers a domain name identical to another's trademark with the mere addition of "sucks" and a top-level domain (e.g. ".com")) the Panel refuses to transfer the "sucks" domain. In such cases, it is held that the Respondent is making a "fair use" of the domain name in that it uses the domain's corresponding website solely as a non-commercial gripe site about the trademark owner. In this case, however, the Respondent used its website to complain about the trademark owner and sell competing goods. Therefore, judgment in favor of the Complainant was predictable based on prior decisions. The Panel did go out of its way, however, to specifically disagree with two assertions made by the Complainant, which are discussed below. Fi...

In Futurebazaar India Ltd. v. Rashid Arashid , Chen Xianshang , Bao Shui Chen , WIPO Case No. D2008-0175 (John Swinson , April 10, 2008), the Panel required the transfer of futurebazar.com to a Complainant claiming rights in FUTUREBAZAAR and (more importantly) the domain name futurebazaar.com . With the Respondents defaulting, having a reputation as cyber pirates, and using the disputed domain in connection with a website featuring sponsored links, this matter appeared to be another straightforward typosquatting dispute. The plot thickened, however, when it became clear that the initial Respondent registered the disputed domain before the Complainant filed trademark applications for FUTUREBAZAAR and before Complainant embarked on a $2 million advertising campaign to generate goodwill and establish common law rights in the FUTUREBAZAAR mark. Faced with these facts, the Panel had to acknowledge that "[s] ometimes in similar circumstances, it is difficult to prove bad fait...

Welcome! I've always had an interest in and followed decisions pertaining to the Uniform Domain Name Dispute Resolution Policy (" UDRP "). Perhaps my interest stems from the fact that, as a young lawyer fresh out of law school, nobody really thought I had much knowledge or experience-- except in the area of Internet law. It was the very fact that I was young that gave people confidence in my understanding of the laws in this area of practice. So I ran with it and determined that I would live up to the reputation that apparently preceded me. And here today more than eight years later, I am still practicing in the area of Internet law, enforcing my clients' rights as they pertain to domain names, keyword advertising, use of Google AdWords, hyperlinking, framing, and use of metatags . I have the privilege of serving on the International Trademark Association's Whois Subcommittee to the Internet Committee, a group that develops policy pertaining to use of proxy se...