PepperMoney.com : Complainant’s salty UDRP was denied

A registered trademark does not give automatic rights to a domain.

A registered trademark does not give automatic rights to a domain.

An Australian company, claiming rights to the PEPPER mark, attempted to get the domain PepperMoney.com via the UDRP process.

Pepper Group Limited of North Sydney, New South Wales, Australia, holds a trademark for PEPPER. They applied for a trademark for PEPPER MONEY in 2015.

The owners of the domain PepperMoney.com have an interesting story to tell, as their asset was acquired at some point from eBay:

“The Respondent is 1075 First Global Associates, d/b/a Pepperjam, a holding company that owns the affiliate marketing entity eBay Enterprise Marketing Solutions Affiliate Network (“eBay Affiliate Network”), which has recently rebranded and resurrected the “Pepperjam” name. eBay Affiliate Network began its life in 1999 as “Pepperjam”, and in 2008 launched its proprietary affiliate network branded Pepperjam Network. In 2010, Pepperjam Network was acquired by GSI Commerce, and retained the “Pepperjam” name. In 2012, GSI Commerce was acquired by eBay, Inc. (“eBay”), and Pepperjam was rebranded as “eBay Affiliate Network”. In 2015, eBay sold eBay Affiliate Network to two private equity companies, which transferred all of eBay Affiliate Network’s assets to the Respondent.”

The Respondent strongly challenged the Complainant’s rights to expand its PEPPER trademark onto a domain that contains the “money” modifier, and thus stated that PepperMoney.com is not confusingly similar to the brand:

“Because the Complainant has no rights in PEPPER MONEY, the Complainant’s only hope of avoiding dismissal is to rely on its trade mark right in PEPPER. The trade mark PEPPER, however, is simply not confusingly similar to “Pepper Money”. The word “money” is a modifier that erases any meaningful likelihood of confusion with the Complainant’s PEPPER mark. The Complainant argues that any mark incorporating the word “pepper” belongs to the Complainant alone. That position, however, would likely offend the sensibilities of many established brands that have rights in long-registered marks that include the word “pepper”. The Respondent disputes that argument, and queries whether the Complainant would file a UDRP complaint if, upon unsolicited request, the 130 year-old soft drink brand “Dr. Pepper” refused to sell the Complainant its <drpepper.com> domain name.”

A three member panel at the WIPO sided with the Respondent, and ordered the domain to remain in their possession.

For the full text of the UDRP for the domain PepperMoney.com, click here.

Copyright © 2024 DomainGang.com · All Rights Reserved.