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 Audi AG v. DNS Administrator, Cykon Technology Limited , WIPO Case No. D2017-1012 (William R. Towns, July 14, 2017), the Panel ordered the transfer of xaudi.com to the owner and maker of AUDI branded vehicles. The case involved a domain that Respondent owned since 2008, and despite Respondent's defense, the Panel nevertheless ordered the transfer in what turned out to be a pretty clear cut case. In making its determination, the Panel considered the three factors necessary for a complainant to prevail in a UDRP claim. First, the Panel determined that xaudi.com is confusingly similar to the AUDI mark owned by Complainant, noting that the "inclusion of the preceding letter 'x' does not serve to dispel the confusing similarity of the disputed domain name to the distinctive and well-known AUDI mark." Turning to the second factor, whether Respondent has rights or legitimate interests in the disputed domain, the Panel emphasized that Respondent "has us...

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 acti...

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: The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; The respondent has no rights or legitimate interests in respect of the domain name; and 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 late Theodore Presser would be proud to know that his lawyers got it right A couple of days ago, here , I reviewed Gookinaid ERG, Inc. v. Valda Krievane , WIPO Case No. D2008-0487 (Alan L. Limbury, May 28, 2008), a case in which the Complainant failed to demonstrate its common law trademark rights, despite the fact that it appeared as though the Complainant had such rights. In other words, the case turned on a failure of proof. That case raised for me a simple question: What level of proof is sufficient to demonstrate common law trademark rights? I found the answer this morning in the newly published decision Theodore Presser Company v. John Smith/Whois Protection , WIPO Case No. D2008-0549 (Christopher J. Pibus, May 29, 2008). In that case, the Panel required the transfer of theodorepresser.com to the owner of the common law trademarks THEODORE PRESSER and THEODORE PRESSER COMPANY. Despite claiming use of the THEODORE PRESSER and THEODORE PRESSER COMPANY marks since 1883, the Comp...

One of a number of Golden Door Spa locations In a throwback to the early days of UDRP decisions, the Panel in Golden Door Licensor , L.L.C. v. Protected, WhoisGuard /Chen Bao Shui , WIPO Case No. D2008-0352 (Arne Ringnes , May 13, 2008) required the transfer of goldendoorspa .com to the owner of the GOLDEN DOOR SPA trademark. In most ways, the case was typical-- the domain name was being used in connection with sponsored links to the Complainant's competitors, the Respondent was a serial cybersquatter that had lost a number of UDRP decisions before WIPO , and the Respondent entered no appearance to defend himself. The decision to transfer was about as easy as they come. But what was not so typical, at least anymore, was the fact that the domain name at issue was identical (except for ".com") to the Complainant's well-known trademark. In the early years of the UDRP , say around 2001-2002, most WIPO decisions involved what I call "traditional" cybersqua...

There seems to be no stopping Big Brown. The horse dominated the Kentucky Derby, is the hands-down favorite to win the Preakness, and has its eye on the prized Triple Crown. But Big Brown's namesake, United Parcel Service of America, Inc. ("UPS"), is focused on a different "triple," namely, the "www" contained in the domain name wwwups.org. And just like Big Brown, UPS's complaint to secure wwwups.org was a runaway winner. In United Parcel Service of America, Inc. v. Michael Robert , WIPO Case No. D2008-0339 (John R. Keys, Jr., April 29, 2008), the Panel required the transfer of wwwups.org to UPS. The Panel, consistent with several prior Panel decisions, found that the addition of "www" to UPS's trademark did not obviate a finding of confusing similarity: "In this case, the use of the letters 'www', generally signifying and used to obtain access to the Worldwide Web, is a generic code used by virtually all Internet users ...

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...

In Georgia Power Company, the Southern Company v. Wang Congming , WIPO Case No. D2008-0234 (David Taylor, April 16, 2008), the Panel required the transfer of gerogiapower.com to the Complainant. Aside from the addition of the top level domain (.com) and the inversion of the "o" and "r" in "Georgia," the domain name was identical to the Complainant's registered GEORGIA POWER trademark. The case is a classic example of typosquatting, where domain profiteers seek to capture on typing mistakes made by Internet surfers seeking a particular website. In this case, the Panel found that "[t]he misspelling of the GEORGIA POWER mark in the domain name is with intent to intercept and siphon off traffic from its intended destination and direct them to the Respondent’s website." This conclusion was easy for the Panel, as "[t]he website under the disputed domain name contains links to 'Georgia Power', 'Georgia Power New Service', 'O...