The UDRP Blog™

In LEGO Juris A/S v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico , WIPO Case No. D2019-0248 (Shwetasree Majumder, April 16, 2019), LEGO, one of the most active complainants in UDRP cases filed at WIPO, sought to recover the domain wwwthelegostore.com from a purported typosquatter. A domain leading with "www" is designed to capture the attention of Internet users who are trying to seek a particular website, but mistakenly omit the period after the "www" portion of the web address. Such domain registrations constitute "typosquatting," a form of domain infringement designed to capture "typing" mistakes by Internet users. In this case, Respondent failed to enter an appearance to defend itself from the claims of typosquatting, but under WIPO's guidelines, judgment by default is not simply entered in favor of a complainant. Rather, "Complainant must still establish each of the three el...

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...

In Steven Madden, Ltd. v. Domain Admin, Whois Privacy Corp. , WIPO Case No. D2018-2474 (Jane Seager, December 24, 2018), the Panel transferred the domain stevenmadden.com to the famous footwear, apparel, and accessories brand known as Steve Madden. Respondent, a Chinese individual, did not respond to the Complaint. Turning to the first of the three elements of a UDRP claim, the Panel found that the disputed domain was confusingly similar to trademarks owned by the Complainant. Interestingly, despite its corporate name Steven Madden, Ltd., Complainant apparently does not own any STEVEN MADDEN trademarks, but does own several registration for STEVE MADDEN and also a registration for STEVEN BY STEVE MADDEN. The Panel found that the disputed domain was confusingly similar to both of these marks, emphasizing that “'Steven' is an obvious variation on the spelling of the name 'Steve', which forms part of the Complainant’s [STEVE MADDEN] trademark." Continuing, the Pa...

  In Brother Records, Inc. v. David J. Roberts, Good Vibrations , WIPO Case No. D2017-2287 (John Swinson, January 10, 2018), the Panel transferred the domain beachboys.org to the recording company that owns the intellectual property rights relating to the famous band "The Beach Boys." Respondent is a tribute band that performs songs by "The Beach Boys."  Despite the fact that it registered the disputed domain name way back in 2002 and included a disclaimer on its website negating affiliation with The Beach Boys, there was no "Fun Fun Fun" for Respondent in this "Wipe Out" against Respondent. As with all UDRP cases, the Panel examined the three factors necessary for a UDRP complainant to prevail. First, as to whether the disputed domain is identical or confusingly similar to a mark in which Complainant owns trademark rights, the Panel readily found similarity, noting that the absence of "The" in the disputed domain name does not diff...

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???" ...

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 o...

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...

A fancy room at the Sofitel Berlin Schweizerhof Ever try to book a hotel for an INTA annual meeting in the last weeks leading up to the meeting? Yeah, you feel me, right? No way you are scoring a room at a fancy hotel, and if you do find such a room, you are paying the equivalent of several Thomson search reports to get it. Thus, in the spirit of the upcoming INTA annual meeting, I couldn't resist the following case. In ACCOR v. Vista Holdings, Inc. , WIPO Case No. D2008-0291 (Dietrich Beier, April 21, 2008), the Panel required the transfer of accorhoteels.com to the hotel chain owner of the ACCOR mark. The Panel swiftly concluded that accorhoteels.com was confusingly similar to the Complainant's ACCOR mark, that the failed-to-Respond(ent) had no rights or legitimate interests in the domain, and that the disputed domain was registered and used in bad faith. This case was one of those complete knock-outs that you just love to read as a trademark attorney. While the facts, reaso...

In Forever 21 v. Matthias Moench , WIPO Case No. D2008-0258 (J. Nelson Landry, April 16, 2008), the Panel required the transfer of foever.com. The Complainant owned the registered mark FOREVER 21, and the Panel was readily satisfied that the omission of the first "r" in FOREVER within the disputed domain evidenced actionable typosquatting. This conclusion was bolstered by the fact that the Respondent used the disputed domain in connection with a website containing a link farm, and had been on the losing end of four prior UDRP decisions. In reaching its decision, the Panel addressed two "potential" defenses. I say "potential" because these defenses would have had a better chance of success if the Respondent filed an argumentative response. As in the majority of UDRP cases, however, the Respondent defaulted and suffered the consequences of such default. The first potential defense related to the scope of the Complainant's trademark rights and the Respond...