Domain Name Shame

“Squeaky-Free” Domain Name Transfer

The Complainant, WD-40 Company, owns valid US trademarks in WD-40 and seeks immediate transfer from the Respondent, Texas International Property Associates, of the disputed domain name www.wd-40company.com.  The Complainant contends that its mark is famous and internationally recognized and that consumers are likely to be confused in assuming that there is a relationship between Complainant and Respondent’s website.  Complainant attempted to settle this dispute with Respondent informally, but Respondent failed to respond to numerous cease and desist letters.  In turn, the Complainant seeks the Panel’s intervention in effectuating a transfer of the disputed domain name.  Interestingly, in response to the Complaint, the Respondent requested an immediate transfer of rights in the disputed domain name, without admitting the three element required under the Policy for transfer (i.e., identical or confusing similarity of the domain name with a trademark in which Complainant has rights; a lack of rights or legitimate interest in the domain; and registration and use in bad faith).

The Panel therefore determined that Respondent had consented to transfer in the disputed domain name to the Complainant and found no evidence to suggest that the consent was not genuine.  Consequently, the Panel directed an immediate transfer of the disputed domain name to the Complainant, following past UDRP precedent that "… under such circumstances, where Respondent has agreed to comply with the Complainant's request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names."    As the saying goes, looks like this squeaky wheel got the grease.... WD-40 Company v. Texas International Property Associates, Case No. D2008-0876

Domain Name Dilemma

The Complainant owns registered trademarks for the name "Blackberry", dating between 2000 and 2006.  The disputed domain name, "theblackberrycoach.com", was first created on October 10, 2007.

The disputed domain name consists of the Complainant's trademark in its entirety, inserted between the definite article and the generic word "coach", which normally would have no impact on whether the domain name was confusingly similar to the trademark concerned.  In the Panel's view, however, the problem here was that the Complainant's mark is a generic word in common use for a fruit.  However, with the additional words of "the" and "coach", the Panel recognized it as an expression or term commonly used in the world of computers to provide assistance, notably in relation to "help" buttons, and the Complainant's mark relates to a form of computer technology.  For these reasons, the Panel concluded on balance that the domain name is confusingly similar to the mark in which Complainant has rights.

At the time of the proceeding's commencement, the disputed domain name contained no content.  Annexed to the Complaint was an image of a website to which it used to resolve, containing references podcasts and other items that appeared to relate to versions of computer software.  There was no reference to the alternative meaning of "blackberry" as a fruit.  The Panel opined that from this, one can deduce that the Respondent had in mind the information technology aspect of the name "blackberry" when registering and in using the website to which the domain resolved, suggesting that Respondent knew of Complainant's rights in connection with its trademark.  Although failing to respond to the Complaint, the Respondent indicated to the Center that he no longer held the disputed domain name when, in fact, the Respondent did indeed still hold the registration.  The Panel determined that this supported the conclusion that the Respondent was not acting in good faith and ordered transfer of the domain.  Research in Motion Limited v. Louis Espinoza, WIPO Case No. D2008-0759