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 TPS Parking Management, LLC v. Liujunyao , WIPO Case No. D2018-2252 (Douglas Clark, December 11, 2018), the Panel ordered the transfer of theparkingspotcoupon.com to TPS Parking Management, LLC, owner of the THEPARKINGSPOT and SPOT trademarks. The individual Respondent did not submit a response. As always, Complainant was tasked with satisfying the three elements of a UDRP claim, namely: 1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; 2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and 3. The disputed domain name has been registered and used in bad faith. These elements are discussed in turn below. Regarding the first element, the Panel readily determined that the disputed domain was confusingly similar to Complainant's trademark, as the disputed domain includes the entirety of the THEPARKINGSPOT trademark, with the mere addition of the d...

In a straightforward, old-fashioned typosquatting dispute, Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Vladimir Snezko , WIPO Case No. D2017-2405 (Andrea Jaeger-Lenz, February 2, 2018), the Panel ordered transfer of the domain costoco.com to the wholesale company Costco. Respondent, which had held the disputed domain since 2000, did not respond to the UDRP complaint. Starting with the first of the three factors necessary for a complainant to prevail in a UDRP dispute, namely, whether the disputed domain is identical or confusingly similar to the complainant's trademark, the Panel noted that "[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark." The Panel found that that minor differences between the disputed domain and Complainant's COSTCO trademark did not obviate the visual and phonetic similarities between them, and thus fo...

  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 LegalZoom.com, Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes , WIPO Case No. D2017-1894 (Alfred Meijboom, November 14, 2017), the Panel transferred the domain name zoomlegal.com to LegalZoom, the online provider of legal services, including trademark related services. LegalZoom, which boasts on its trademark services page of how it "knows the ropes," and tells its potential customers "[l]et's join forces in protecting your brand," chose itself to join forces with an outside law firm to protect its own brand. That fact, in and of itself, is the story here. More on that later. As for the merits of the case, this was about as routine as it gets in a UDRP dispute. The Respondent defaulted. LegalZoom demonstrated trademark rights in the mark LEGALZOOM and LEGALZOOM.COM. The disputed domain merely reverses the order of the words in the LEGALZOOM mark. According to the Panel, "[t]his reversal of two terms does not change the overall impress...

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 Philip Morris USA Inc. v. Computer Services, Inc. , WIPO Case No. D2017-0847 (Peter L. Michaelson, June 15, 2017), the Panel required the transfer of marlborosucks.com to Complainant owner of the MARLBORO trademark for cigarettes. Philip Morris is one of the, if not the, most active complainants in UDRP matters handled by WIPO, and it secures the transfer of challenged domains nearly every time. In this instance, given that the domain name used the term "sucks," Respondent registered and owned the disputed domain for nearly 18 years (!!!), and Respondent filed a Response to the Complaint, at first glance I thought Respondent had a fighting chance here. Needless to say, its defenses blew up in smoke. In examining whether the disputed domain is identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted the well-recognized rule that adding the term "sucks" to another's trademark, with the mere addition...