Razorbacks.com: Legitimate Use of a Trademark Term
I pay very close attention to UDRP filings on generic domain names. I receive a daily email with UDRP decisions and frequently visit the NAF and WIPO websites to see what UDRPs have been filed. Oftentimes, the complainant feels the domain owner is infringing upon its trademark rights by displaying advertising of related products or services, as was the case with Dolphins.com.
However, there are plenty of UDRP filings that are overreaching, and I am happy to see the panelist(s) deny the complainants attempts. Today, I received the WIPO UDRP decision for Razorbacks.com, filed by Board of Trustees of the University of Arkansas of Little Rock, Arkansas, whose sports teams are known as the Razorbacks.
The owner of the domain name first registered the name in 1995, and the University contacted him about it several years later, in 2003. In the response, the University claims it sent the owner a cease and desist letter and also claimed that the domain owner owns the .com domain names of several college sports team brands, including Aggies.com (Texas A&M), Badgers.com (University of Wisconsin), Wolverines.com (University of Michigan), and Terrapins.com (University of Maryland).The domain names are and were used for vanity email addresses.
The three member panel found that the domain name was identical or confusingly similar to the complainant’s trademark, which is pretty clear. When the panel looked at the issue of Rights or Legitimate Interests in the domain name, they referred to other UDRP cases where vanity email addresses were considered a legitimate offering of goods/services. In addition, the panel cited the “multiple alternative uses of the term “razorbacks,” and they concluded that the could not side with the complainant on this matter. As a result, the complaint was denied.
Owners of similar generic domain names should note that the panelists did not say that the use of vanity email addresses on a domain name is reason enough to deny a complaint. In addition, the panelists made it clear that this could be a case for a court to ultimately decide, stating “Whether Complainant would have more success in a court of law, where evidence may be fully developed and examined through the use of discovery, interrogatories and other forensic processes and where standards other than those of the Policy may be applied, is not for this Panel to say.”
Whether University of Arkansas decides to pursue this through the court system is something we may learn about in the future, but for now, it’s good to see a panel deciding a case on its merits and not making assumptions about a domain owner’s intent.
(Razorbacks image courtesy of Wikipedia)
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