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 domain to redirect consumers to its website.
Use of a domain name to redirect consumers to a website offering goods or services that compete with those of an owner of a trademark with priority does not demonstrate a Respondent's rights or legitimate interests in a domain name:
"While the record does reflect the Respondent’s use of the disputed domain name prior to notice of this dispute to redirect Internet users to the Respondent’s 'advancedexpress.com' website, such does not constitute the use of the domain in connection with a bona fide offering of goods or within the meaning of paragraph 4(c)(i) [of the UDRP]."
As to the Respondent competitor's bad faith:
"The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another.... The Respondent and the Complainant compete in the package and document delivery business, and the Panel finds that the Respondent’s likely primary motive for registering the mark was an intent to profit from and exploit the goodwill developed in the Complainant’s mark, by using the domain name to divert Internet users to the Respondent’s commercial website, creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the services offered thereon." (Internal citation omitted.)
Despite the Panel's straightforward and sensible opinion, one can't help but wonder whether the Respondent would have had a chance to prevail if it argued that it made a descriptive use of the terms in the domain name. The Respondent provides "delivery" services "overnight," so the argument was there to be made. As for the fact that the Respondent's domain included the term "overnite," instead of "overnight," U.S. law (where both parties are located) generally provides that misspelled variations of descriptive terms are themselves descriptive. See TMEP 1209.03(j) ("A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark").
I've got another UPS case ready if Big Brown completes the Triple Crown at the Belmont Stakes in three weeks. Until the next post time, enjoy this video of my view from the 1/16th pole as Big Brown sprinted to victory at the Preakness:
Sunday, May 18, 2008
Big Brown posts another win and earns another post
Posted by William J. Morris III at Sunday, May 18, 2008
Labels: bad faith - competing goods/services, confusing similarity - addition of generic/descriptive term, rights or legitimate interests - offering competing goods or services