screen-shot-2013-05-22-at-11.56.00-am-150x136I was tickled to see my fondness for television pay off yesterday when I saw that a UDRP was filed with the National Arbitration Forum  over the domain  The Registrant is a Mr. Jonathan Bird of Great Britain.  Mr. Bird’s email address (in the WHOIS information) references the dating site, so I am going to assume that he has some relationship with that site.

The domain does not presently resolve to a website, but a few weeks ago it did. Specifically, in April 2013 the site used the tag line “How I Met Your Mother Dating” (as shown in the image above) for a dating site. There were a bunch of individual pictures of people who, I guess, are clients of the service. The NAF website does not list the Complainant but it seems safe to assume that Twentieth Century Fox, the owners fo the trademark HOW I MET YOUR MOTHER for television/entertainment services brought the action.  The fact that the site no longer resolves to a dating site may also indicate that Mr. Bird has decided to stop using the site and cooperate with Twentieth Century Fox.

But it would be interesting to see how a defense of this action might play out. Specifically, the website that was up in April 2013 did not reference the television show “How I Met Your Mother” – there are no images, links, banners, etc… that associate the website with the show. Thus, it might be difficult for Complainant to prove that the Registrant was trying to take advantage of the mark, unless there is other evidence of such conduct.

Further, one could argue that the phrase “How I Met Your Mother” can be legitimately used in association with its plain meaning – particularly if the website is actually a service for dating moms, or people who want to date moms. There could also be a fair use context for the phrase – its fairly typical for adolescent males (and adult ones) to joke around about going out with someone’s mom. Thus, there could be an argument that the registrant is using the phrase “How I Met Your Mother Dating” as a joke.

In order to win a UDRP case a complainant must prove that the domain is i.) confusingly similar to the complainant’s mark; ii.) that respondent does not have legitimate rights in the mark; and iii.) that the respondent has acted in bad faith. Although this case is not likely to proceed very far, it would be interesting to see how Twentieth Century Fox argues the second and third elements, and if the Registrant references the hypothetical defenses noted above.