UDRP : Don’t mess with trademarks and gTLDs

TM dilution is not the business of a UDRP

Trademarks are not to mess with.

Riding on famous trademarks by registering alternate domains, is a bad choice regardless of TLD.

Especially marks that form brands that stand out internationally, and offering these domains for sale to the trademark holder.

That’s the epitome of cybersquatting.

In a UDRP case involving the domain, the Complainant was Citigroup Inc., holders of the CITI mark.

The Respondent offered the domain for sale on two venues:

  • Afternic for $3,960
  • In private, for $625.

Look at that last number for a second: $625 dollars, or less than 1/2 of the cost to file a UDRP.

And that’s the beauty of having in-house lawyers, the filing cost is never a real issue.

The sole panelist was quite clear about the Respondent’s knowledge of the CITI mark:

“Finally, because of the global fame of Complainant’s mark, it is clear that Respondent registered the domain with actual knowledge of the CITI mark. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). As such, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.”

In cases such as this, there has to be an option to mark the Respondent as a cybersquatter, in the same manner that Respondents seek to stigmatize an aggressor Complainant as a Reverse Domain Name Hijacking enabler.

In this case, was ordered to be transferred to the Complainant. For the full text of this UDRP decision click here.

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