Sunday, April 9, 2017

It's never too late to go after a misapproriated domain name

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 against Respondent (or its predecessor) until 2013, when it sent a cease and desist letter to Respondent. Complainant appeared to take no further action until 2016, when it sent another cease and desist letter. Let's just say that, at best, such lack of enforcement is not very aggressive policing of a famous trademark. At worst, it is latches and acquiescence. In a UDRP forum, with no response filed by Respondent, the best possible interpretation for a complainant seems to control, and that was the case here.

Putting aside the delays in enforcement, examining the three factors to justify a transfer proved easy for the Panel. First, citing several cases, it was easy for the Panel to conclude that the disputed domain, which contained the entirety of Complainant's mark with the mere addition of the gTLD .com, is confusingly similar to Complainant's mark.

As to the second factor, the Panel found that Respondent did not have legitimate rights or interests in the domain. Dispositive here was the fact that Respondent used the domain as a link farm to various websites selling authentic MEMBERS ONLY branded products. The Panel concluded such use of the domain was for commercial gain and not legitimate.

As to the final factor, bad faith registration and use of the domain, the Panel basically repeated its reasoning as to the second factor, concluding that linking to websites, for commercial gain, that sell Complainant's goods, amounts to bad faith.

This is a case where, had Respondent filed a response, the outcome may have been different. Similarly, one could imagine several ways to use the domain membersonly.com that do not infringe upon Complainant's trademark. But the targeting of Complainant by linking to stores selling its merchandise, as is often the case in UDRP proceedings, proved to be the determining factor, while Complainant's failure to file the dispute for nearly 20 years proved inconsequential.

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