Sunday, March 26, 2017

The early bird gets the worm

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:
  1. The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  2. The respondent has no rights or legitimate interests in respect of the domain name; and
  3. 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 the fact that Complainant’s mark was a telescoped or conjoined mark that combined those terms into one unique term. It further found that the trademark and domain share a similar “general impression, look, sound, and meaning.” Thus, the first element was satisfied.

As to the second factor, the Panel found that, because (1) the Respondent made no use of the domain beyond using it as a landing page with links to advertisements, (2) the Respondent is not known by the name Green Envelope, and (3) the domain has not been used for any fair use or noncommercial purposes, coupled with Respondent’s failure to submit a response to the Complaint, the second element was satisfied.

But where the case fell apart for Complainant was the third factor, bad faith use and registration. Dispositive here was the fact that Respondent registered its domain in 2006, whereas Complainant commenced use of its GREENVELOPE trademark in 2009 and didn’t register such mark until 2012. In finding no bad faith registration under these circumstances, the Panel quoted the WIPO Overview 2.0, paragraph 3.1, which provides:

[W]hen a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.
That’s a fairly straightforward and understandable rule of which Complainant likely was aware of when filing its Complaint. So why did Complainant pursue a transfer of the domain? Complainant was hoping that misinformation provided by Respondent in its Whois registration information, such as its phone number and address, would demonstrate bad faith. The Panel found that, while these failures by Respondent are relevant to bad faith, without a specific “targeting of a complainant’s trademark” at the time of registration, bad faith registration cannot be found. Accordingly, the Complaint was dismissed.

Saturday, March 25, 2017

The UDRP Blog is back!

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 for you. I recently joined the law firm Alprin Law Offices, P.C., where I have the opportunity to do all the things I couldn't do as in-house counsel, including maintaining this blog! I am also fortunate to serve as General Counsel to Felt, LLC, an Internet start up success story that was featured on the show Shark Tank.

I am so excited to get back at it with this blog, which I hope will be of interest and practical use to those who have been the victims of cybersquatting and typosquatting, those who have been unjustly attacked for registering domain names they are entitled to, and legal practitioners.

I hope you enjoy version 2.0 of this blog, and I look forward to reading your comments and otherwise hearing from you. I can always be reached at wmorris@alprinlaw.com. First "real" blog post coming very soon!

Best Regards,
William