The UDRP Blog™

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...