The UDRP Blog™

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 Jazz Basketball Investors, Inc. v. WhoisguardProtected,Whoisguard, Inc. / Big Shen, Joan Bristol , WIPO Case No. D2017-0031 (Desmond J. Ryan, March 8, 2017), the Panel ordered the transfer of jazzbasketballteamshop.com to Complainant, the owner of the Utah Jazz professional basketball team. It was a fairly straightforward case where Respondent had about as much chance of retaining the domain name as the Washington Generals had of beating the Harlem Globetrotters through history (random basketball history fact: the Generals only won once against the Globetrotters, due to an accidental time clock error, after losing 2,495 straight games). For this reason, Respondent didn’t even show up for the game (it defaulted). Complainant swooshed a three pointer in this one, satisfying all three factors necessary to prevail in a UDRP complaint. First, it easily demonstrated that the disputed domain name was confusingly similar to a trademark in which Complainant had ...

A map of Middle Earth from the famed The Lord of the Rings series In The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company” , WIPO Case No. D2008-0156 (James A. Barker, May 20, 2008), the Panel required the transfer of middleearthonline.com to the Complainant owner of several registrations for the mark MIDDLE EARTH. Unlike J.R.R. Tolkein's epic The Lord of the Rings series, with which the MIDDLE EARTH mark is associated, the Panel's opinion here was thankfully short and to the point. First, in concluding that the disputed domain was confusingly similar to the Complainant's trademark, the Panel highlighted the fact that the addition of "online" to another's trademark does not obviate confusing similarity: "The disputed domain name is not identical to [the MIDDLE EARTH] mark. But it is clearly confusingly similar. The only difference between them is the addition of the generic term ‘online’. It is well-established that...

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