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