Written by Jamison Arterton and Geri Haight
UDRP proceedings are often touted as a quick and inexpensive way to resolve domain name disputes. Several recent UDRP decisions denying relief to trademark owners, however, demonstrate that in some instances the UDRP may not be the appropriate tool.
A few recent UDRP decisions have denied relief to trademark owners who were seeking to reclaim trademark-based domain names that were being used (essentially) as fan sites. For example, in October 2011, a panel denied a UDRP complaint filed by LEGO seeking the transfer of the domain name <legoworkshop.com>. On the issue of legitimate use, the respondent claimed, and the panelist accepted, that he registered the domain name in order to show some of his son’s LEGO creations and to provide videos demonstrating building techniques. Although LEGO provided evidence showing that the website located at the domain name had, at one point, displayed sponsored links for “Lego toys,” “Lego guns” and “Star Wars Legos,” the panelist determined that there was insufficient evidence of commercial gain to the respondent since it was unclear where the links went or with whom they were associated. Thus, the panelist denied LEGO’s complaint (This loss is particularly notable as, according to an article in Domain Name Wire, LEGO has filed nearly 300 UDRP complaints and this decision is its first loss). Similarly, in September 2011, Stefani Germanotta (a.k.a. Lady Gaga) filed an unsuccessful UDRP complaint against the registrant of an unofficial fan website located at the domain name <ladygaga.org>. Again, the panel examined whether the respondent was profiting from use of the domain name. Finding that the website located at <ladygaga.org> lacked commercial content, the panel denied the complaint.