Friday, May 9, 2008

Big Brown wins the Derby and its misappropriated domain name

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 And just like Big Brown, UPS's complaint to secure 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 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 to access most domain names and websites on the Web and cannot serve to distinguish the Domain Name from Complainant’s trademark. This is essentially a form of typosquatting in which Respondent attempts to rely upon the Internet user’s potential error in leaving out a dot after 'www' to divert the user to a website that appears to be sponsored by or affiliated with Complainant but which is not."

After the determination of typosquatting, the decision of whether to require transfer of the disputed domain was about as close as 20th place Monba was to Big Brown in the Derby. The Respondent used the domain name in connection with a website containing sponsored links and the Panel found that UPS was a famous trademark that the Respondent had knowledge of at the time of registering the disputed domain. Couple those findings with the Respondent's failure to lodge a response, and the decision to transfer was clear.

My only question is what odds would you give a UPS truck against Big Brown in a lap around the track? Perhaps this fancy one with the flames could take Big Brown, but I'd put my money on the Derby winner.

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