The UDRP Blog™

In SecretLab SG Pte Ltd v. Jason Bright, Secret Lab LLC , WIPO Case No. D2018-2807 (Clive L. Elliott, February 7, 2019), the Panel refused to transfer the disputed domains secretlab.com and thesecretlab.com to the owner of several registrations for the mark SECRETLAB. It is not often that a UDRP Complainant has its complaint denied, but the facts in this case did not favor a transfer and Respondent lawyered-up to mount a vigorous defense against Complainant's claims. Looking at the three elements of a UDRP claim, the Panel first examined whether the disputed domains were identical or confusingly similar to a mark owned by Complainant. As Complainant owned several registrations consisting of the term SECRETLAB, the Panel found the requisite similarity between the disputed domains and Complainant's registered trademark. Things started to go south for Complainant, however, once the Panel turned its attention to the second element of a UDRP claim, namely, whether Respondent h...

In Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico , WIPO Case No. D2018-2882 (James Bridgeman, January 27, 2019), the Panel transferred calivnklein.com to the owner of the famous CALVIN KLEIN trademark. If you just read the previous sentence and thought this was a straight up cybersquatter case, where the infringer registers a domain name corresponding with the exact trademark of a brand owner, look at the disputed domain again closely-- it is actually a classic example of typosquatting, whereby infringers capture domain traffic where an Internet user is seeking a particular brand owner but mistakenly mistypes the web address of such brand owner. This case is also a perfect example of how quickly an infringing domain can be recovered via a UDRP action filed with WIPO. In this instance, the infringer registered the disputed domain on December 10, 2018, Complainant filed its com...

In a classic typosquatting case involving inversion of letters, the Panel in Costco Wholesale Membership Inc., Costco Wholesale Corp. v. Domain Administrator, See PrivacyGuardian.org / Markus Tamn , WIPO Case No. D2018-2523 (Pablo A. Palazzi, December 20, 2018), transferred the domain costoc.com to the well-known warehousing giant Costco. The entire process from filing the Complaint to the date of decision was 45 days, or roughly the equivalent of hours I spend per year standing in line at Costco. The Panel first confirmed that the disputed domain was confusingly similar to a trademark owned by Complainant, noting that "[t]he inversion of the letters 'c' and 'o' in the Disputed Domain Name represents a misspelling that does not provide sufficient distinction from the Complainant's trademark." Next examining whether Respondent held any rights or legitimate interests in the disputed domain, the Panel found no such rights or interests. More specifica...