The UDRP Blog™

In LegalZoom.com, Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes , WIPO Case No. D2017-1894 (Alfred Meijboom, November 14, 2017), the Panel transferred the domain name zoomlegal.com to LegalZoom, the online provider of legal services, including trademark related services. LegalZoom, which boasts on its trademark services page of how it "knows the ropes," and tells its potential customers "[l]et's join forces in protecting your brand," chose itself to join forces with an outside law firm to protect its own brand. That fact, in and of itself, is the story here. More on that later. As for the merits of the case, this was about as routine as it gets in a UDRP dispute. The Respondent defaulted. LegalZoom demonstrated trademark rights in the mark LEGALZOOM and LEGALZOOM.COM. The disputed domain merely reverses the order of the words in the LEGALZOOM mark. According to the Panel, "[t]his reversal of two terms does not change the overall impress

In Audi AG v. DNS Administrator, Cykon Technology Limited , WIPO Case No. D2017-1012 (William R. Towns, July 14, 2017), the Panel ordered the transfer of xaudi.com to the owner and maker of AUDI branded vehicles. The case involved a domain that Respondent owned since 2008, and despite Respondent's defense, the Panel nevertheless ordered the transfer in what turned out to be a pretty clear cut case. In making its determination, the Panel considered the three factors necessary for a complainant to prevail in a UDRP claim. First, the Panel determined that xaudi.com is confusingly similar to the AUDI mark owned by Complainant, noting that the "inclusion of the preceding letter 'x' does not serve to dispel the confusing similarity of the disputed domain name to the distinctive and well-known AUDI mark." Turning to the second factor, whether Respondent has rights or legitimate interests in the disputed domain, the Panel emphasized that Respondent "has us

In Philip Morris USA Inc. v. Computer Services, Inc. , WIPO Case No. D2017-0847 (Peter L. Michaelson, June 15, 2017), the Panel required the transfer of marlborosucks.com to Complainant owner of the MARLBORO trademark for cigarettes. Philip Morris is one of the, if not the, most active complainants in UDRP matters handled by WIPO, and it secures the transfer of challenged domains nearly every time. In this instance, given that the domain name used the term "sucks," Respondent registered and owned the disputed domain for nearly 18 years (!!!), and Respondent filed a Response to the Complaint, at first glance I thought Respondent had a fighting chance here. Needless to say, its defenses blew up in smoke. In examining whether the disputed domain is identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted the well-recognized rule that adding the term "sucks" to another's trademark, with the mere addition of a gTLD like &quo

In FastTrak v. Tech Admin, Virtual Point , WIPO Case No. D2017-0652 (Evan D. Brown, May 16, 2017), the Panel denied a Complaint seeking the transfer of fasttrak.com. This was a particularly interesting case that involved a simultaneous federal court proceeding and a request for suspension of the UDRP proceeding that was denied. In the UDRP case, Complainant owned a federal trademark registration for FASTTRAK (plus design), which it had used since 2011. The disputed domain was alleged by Complainant to be registered by Respondent in 2015. Sounds good for the Complainant, but then entered Respondent. Rather the file a formal response, Respondent simply submitted to the Panel a copy of the Reverse Domain Name Hijacking complaint it had filed against Complainant in federal court, and requested suspension of the UDRP proceeding. The Panel first determined not to suspend the UDRP case before it. According to WIPO's rules governing UDRP disputes, "in the event of any legal pro

In Bartram Academy, Inc. v. Al Perkins , WIPO Case No. D2017-0584 (Benoit Van Asbroeck, May 18, 2017), the Panel transferred the domain bartramacademy.com to Complainant. This is a rare case of old-fashioned cybersquatting, where a respondent registers a domain name that exactly matches a complainant's trademark. Most of those domains are now in the hands of their rightful owners, and indeed such was the case here. In that sense, the case also serves as a reminder of the importance of renewing domain name registrations, as it was the failure to renew such registration that resulted in the domain being snatched up by a cybersquatter. In this UDRP case, Complainant owns and operates a preschool and child care facility in Florida, and has done so since 2012. It obtained a Florida state trademark registration for BARTRAM ACADEMY in January 2017. In March 2017, however, it allowed its domain registration for bartramacademy.com to lapse. Enter Respondent, who scooped up the domain up

In Tractor Supply Company v. WhoisGuard Protected, WhoisGuard, Inc. / Party Brands LLC , WIPO Case No. D2017-0325 (Jeffrey M. Samuels, April 18, 2017), the Panel ordered the transfer of tractorsupply.store to the owner of the TSC TRACTOR SUPPLY CO. mark. Honestly, this was a pretty straightforward and simple case, but it gives me an excuse to talk about my beautiful wife, so I couldn't resist blogging about it. True story-- Met my wife just over ten years ago as a result of an introduction made by my very first client, the amazing band sirsy . We went to two sirsy concerts together on back-to-back nights, and this blog post contains way more words than my future-to-be wife said about herself over those two nights. On the second night, desperate for information, and exasperated after several attempts to get her to reveal something about herself, I finally just laid it on the line and bluntly asked: "So, what is it that you want out of life???" Her response:   "

In “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc. , WIPO Case No. D2017-0246 (David Taylor, April 10, 2017), the Panel ordered the transfer of docmartens.xyz to the owner of the famous DOC MARTENS trademark. This case was interesting for two reasons. First, while the Respondent appears to be the registrar GoDaddy,Inc., it is not (more on that later), and second, I find it fascinating that in the balance of cost/benefit ratio, an entity would pursue any domain ending with the .xyz extension, especially where such domain is not being actively used, as was the case here. Have you ever sought out a .xyz domain name? I didn't think so, which begs the question of what harm Complainant was suffering to justify the effort and expense to pursue this infringement. Sales of footwear must be good, or its lawyers must be bored, for Complainant to prioritize going after this domain. Turning to the merits and the three elements to prove in order

In LEGO Juris A/S v. Whoisguard Protected, Whoisguard, Inc. / Giovanni Bonny , WIPO Case No. D2017-0143 (Peter Wild, March 15, 2017), the Panel ordered the transfer of chineselego.com to the owner of the famous LEGO trademark. This was a case I could not resist blogging about, as my life just changed for the better this past week when my son wandered into a LEGO store at a local mall. He thought he was forcing me to buy LEGO bricks, but I may have been more excited about his "discovery" than he was. And I am glad to see that my money-for-bricks is being used to quash counterfeit enterprises. Well done LEGO! Reading this decision was almost as enjoyable as building my son's first LEGO kit. There is some great language in the decision for brand owners. To start, the Panel noted the significance of the fact that Complainant not only owns the LEGO mark and corresponding lego.com domain, but also owns "a large number of similar domain names." It is always wise to

In Hershey Chocolate & Confectionery Corporation v. L. Roman T. Sorrells, PARI’ZA Studios , WIPO Case No. D2017-0128 (John C. McElwaine, March 31, 2017), the Panel ordered the transfer of hersheykyss.com to Complainant owner of the famous chocolate brand KISSES. This was actually a case I worked on when I had the privilege of serving as President and Counsel to Hershey Chocolate & Confectionery Corporation. I learned of this infringing domain name through a domain watch I had ordered to monitor domain names that potentially infringe on the HERSHEY'S and KISSES trademarks. We offer this type of domain watching service at my new firm, Alprin Law Offices , and I highly recommend it for anyone concerned about cybersquatting and/or typosquatting. A domain watch is an inexpensive way to monitor and protect one's valuable intellectual property from being infringed, which in the case of hersheykyss.com involved the association of famous trademarks to unsavory sexual content

In JR Apparel World LLC v. Perfect Privacy, LLC / West Village LLC, WIPO Case No. D2017-0055 (Richard W. Page, February 22, 2017), the Panel transferred the domain membersonly.com to the owner of the federally registered trademark MEMBERS ONLY, despite the fact that the disputed domain was registered way back in 1997. In 1997, the Internet was just starting to gain popularity. The registration is thus very, very old, and made at a time when the Internet was somewhat of the wild west. But matter that did not, and the case serves as a reminder that it is never too late to go after a misappropriated domain. The concepts of latches and acquiescence have little place in uncontested UDRP proceedings. Complainant is owner of the mark MEMBERS ONLY, which the panel found to be famous, and which Complainant had used (through itself and its predecessor in interest) in connection with apparel products since 1975. But neither Complainant nor its predecessor seemed to have taken any action agains

  In Jazz Basketball Investors, Inc. v. WhoisguardProtected,Whoisguard, Inc. / Big Shen, Joan Bristol , WIPO Case No. D2017-0031 (Desmond J. Ryan, March 8, 2017), the Panel ordered the transfer of jazzbasketballteamshop.com to Complainant, the owner of the Utah Jazz professional basketball team. It was a fairly straightforward case where Respondent had about as much chance of retaining the domain name as the Washington Generals had of beating the Harlem Globetrotters through history (random basketball history fact: the Generals only won once against the Globetrotters, due to an accidental time clock error, after losing 2,495 straight games). For this reason, Respondent didn’t even show up for the game (it defaulted). Complainant swooshed a three pointer in this one, satisfying all three factors necessary to prevail in a UDRP complaint. First, it easily demonstrated that the disputed domain name was confusingly similar to a trademark in which Complainant had rights. C

In Greenvelope, LLC v. Virtual Services Corp. , Wipo Case No. D2017-0006 (Christopher Gibson, February 25, 2017), the Panel denied Greenvelope’s Complaint requesting transfer of greenenvelope.com, despite Greenvelope’s ownership of the federally registered trademark GREENVELOPE and the fact that the Respondent entered no response to the Complaint. As a reminder, to prevail in a UDRP dispute, a complainant must demonstrate three elements: The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; The respondent has no rights or legitimate interests in respect of the domain name; and The respondent has registered and is using the domain name in bad faith. Examining each of these factors in turn, the Panel first concluded that Complainant’s trademark, GREENVELOPE is confusingly similar to the domain greenenvelope.com, as Complainant’s mark “evokes the terms ‘green’ and ‘envelope,’” despite

Well hello there! Let's see, it looks like it has been nearly nine years since my last blog post on one of my favorite topics, Internet domain disputes! Over that time I did not update this page with good reason-- after spending the first eight years of my legal career in private practice, I transitioned to two roles as in-house counsel for prominent multi-billion dollar global corporations. First, I spent over five years as Trademark Counsel at Under Armour, Inc. , and then spent nearly three years as President and Counsel at Hershey Chocolate & Confectionery Corporation . While those positions were fulfilling, greatly expanded my legal knowledge, and provided invaluable experience, neither company was too excited about me maintaining a blog on issues not pertaining to them. Fair enough. But the exciting news is that this year I made the decision to return to private practice, where I now have the opportunity to represent multiple clients and do what I love most-- advocating