There were a number of UDRP cases filed with the National Arbitration Forum last week that will be interesting to follow in the next few weeks to see how they are decided and the issues that are raised by the Respondent if it chooses to answer. Below is a quick summary of a few of the cases.
- www.yahoooooooooo.com – so this domain appears on its face to be a take-off on the famous YAHOO trademark with the addition of eight (8) extra o’s at the end – I am guessing to create an even greater feeling of emphasis than just 6 or 7 o’s? The site links to a website for a podcast called the “Ceiling Fan” which appears to be a legitimate podcast/site that is a satirical take on a radio drama called “Adventures in Odyssey.” The real challenge with this domain is getting there – inserting the exact number of o’s in the browser took me a few times. This required precision begs the question – why did the registrant even bother registering the domain? Why 8 extra o’s, why not 9 or 10? If the respondent fights the case, it will be interesting to see what arguments it makes to distinguish the domain from the YAHOO mark. For instance, do the extra o’s create a new/different mark, and if so, how many o’s can do you need (8 or more?) and if you use more than 6 o’s does that eliminate bad faith? Is there any connection to the domain with the associated podcast or radio drama?
- www.tech-licious.com – you have to love any site that ends in “licious.” The registrant has done some real work here and has actually put up a website that appears legitimate in that it is not a pure pay-per-click or dummy site. However, the registrant is using the mark TECHLICIOUS for its online activities in spite of the fact that the mark was already registered with the USPTO and lists the owner as Ms. Suzanne Kantra of New York. Ms. Kantra uses the TECHLICIOUS mark for her website at www.techlicious.com and has rights going back to 2009. It is well established that the use of minor punctuation and/or dashes in a domain name will not suffice to distinguish it from a registered trademark, particularly one that is relatively strong/distinctive – though in this case the mark is not a ubiquitous or common mark that is easily recognized. The registrant, a Pakistan based entity, will have to explain its use of the mark and could argue that there was no “bad faith” in choosing the name if it was not actually aware of the TECHLICIOUS mark, though it is hard to imagine that it did not see the techlicious.com site before registering an almost identical variation of the domain.
- www.glassgoogle.com, www.googleglass.com – Google is apparently getting serious about making sure it owns properties that could be frequented by users looking for information about its “Google Glass” virtual glasses product, which was voted one of the best inventions of 2012 by Time magazine. Although glassgoogle.com resolves to a an English language website for a China based glass manufacturer, the googleglass.com site is a simple parking site that Google should not have much trouble retrieving. Google applied to register GOOGLE GLASS with the USPTO in September 2012.