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 “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 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...

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...