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 FastTrak v. Tech Admin, Virtual Point , WIPO Case No. D2017-0652 (Evan D. Brown, May 16, 2017), the Panel denied a Complaint seeking the transfer of fasttrak.com. This was a particularly interesting case that involved a simultaneous federal court proceeding and a request for suspension of the UDRP proceeding that was denied. In the UDRP case, Complainant owned a federal trademark registration for FASTTRAK (plus design), which it had used since 2011. The disputed domain was alleged by Complainant to be registered by Respondent in 2015. Sounds good for the Complainant, but then entered Respondent. Rather the file a formal response, Respondent simply submitted to the Panel a copy of the Reverse Domain Name Hijacking complaint it had filed against Complainant in federal court, and requested suspension of the UDRP proceeding. The Panel first determined not to suspend the UDRP case before it. According to WIPO's rules governing UDRP disputes, "in the event of any legal pro...

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 ...

Here look-- we have a trademark! Please believe us! In one of those cases where the Complainant could have but failed to prevail, the Panel in Gookinaid ERG, Inc. v. Valda Krievane , WIPO Case No. D2008-0487 (Alan L. Limbury, May 28, 2008) refused to transfer gookinaid.com and gookinaid.biz to a Complainant that claimed to own unregistered trademark rights in the designation GOOKINAID and GOOKINAID ERG. The Panel first set out the test for demonstrating unregistered trademark rights under the UDRP: "To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized b...

What everyone secretly wants for Christmas, a Marvel vertical band saw. In Marvel Manufacturing Company Inc. v. Koba Internet Sales, LP , WIPO Case No. D2008-0265 (Peter L. Michaelson, May 5, 2008), the Panel refused to transfer marvelsawparts.com to the Complainant owner of the MARVEL trademark for sawing machines and blades. The Respondent was an unauthorized seller of aftermarket Marvel brand saw replacement parts. The Panel first concluded that marvelsawparts.com was confusingly similar to the Complainant's MARVEL mark. In so doing, the Panel rejected the Respondent's argument that the existence of other MARVEL trademarks owned by third-parties diluted the Complainant's mark such that confusing similarity should not be found. According to the Panel: "Under UDRP precedent, a very simple test is used to assess whether a domain name is confusingly similar to a mark: compare the domain with the mark to assess differences there between and then determine whether those ...

In Family Watchdog LLC v. Lester Schweiss , WIPO Case No. D2008-0183 (William R. Towns, April 23, 2008), the Panel refused to transfer familywatchdog .com, familywatchdog .net, and familywatchdog .org to the owner of a U.S. Trademark Registration for the mark FAMILY WATCHDOG. In so doing, the Panel made clear the limitations of seeking redress under the UDRP . The Panel spent considerable effort recounting the facts and allegations between the parties, which involved multiple cease-and-desist letters, offers to sell the disputed domains, filing of trademark infringement complaints with the concerned registrars, and a pending petition before the TTAB to cancel the Complainant's federal trademark registration. Faced with conflicting factual claims and an assortment of legal claims, the Panel took the high road: "On the basis of the statements and documents submitted by the Parties, the Panel has concluded that this case involves disputes regarding trademark rights and usage, t...