The UDRP Blog™

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 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...

One of two Wagamama® noodle house locations in Boston. Bet my friends in the UK love this place too. In Wagamama Limited v. Park Hae Dong, Hae Dong Limited , WIPO Case No. D2008-0301 (Ross Wilson, May 6, 2008), the Panel required the transfer of wgamama.com to the Complainant owner the WAGAMAMA trademark. The Panel first reaffirmed several other decisions in holding that a domain name that omits a letter of another's trademark is confusingly similar for purposes of the UDRP: "The Respondent’s disputed domain name differs from the Complainant’s mark by simply one letter. In the disputed domain name the first 'a' is omitted. The Panel finds that the Respondent is obviously engaging in deliberately misspelling a known trademark - a practice commonly known as 'typosquatting'. The practice has been condemned by many panels and found to be confusingly similar to the marks which they mimic." Because the Respondent used the domain in connection with a website of...