Dyson sells bladeless fans, but doesn’t own the term
Monday, July 16th, 2012
UDRP is was not creative for taking down site selling knock-offs.
You may be familiar with Dyson, the company that makes mundane things (like vacuum cleaners) cool.
One of its latest creations it the bladeless fan, which cools you off without the need for a spinning blade (and for about 10x the cost of an equivalent traditional fan).
Enter bladelessfanonline.com, a site that Dyson claims is selling knock-off Dyson fans. The company filed a UDRP against it.
It may well be right. The site even has a blurb about Dyson.
But is the UDRP the right venue to take down a site selling knock-offs? Only if the domain name at issue includes your trademark.
Dyson tried to argue that the term “bladeless fan” is synonymous with its product. Yet the panelist was troubled to come to this conclusion. He asked Dyson for some sort of proof of trademark rights or secondary meaning to the term. In the end he wasn’t persuaded.
Panelist Staniforth Ricketson really wanted to find in favor of Dyson, but he smartly considered what UDRP is there for. It’s not for taking down sites selling knock-offs if there’s no cybersquatting. Here’s how he concluded his case:
For the foregoing reasons, the Complaint is denied. The Panel reaches this conclusion with considerable regret, as there appears to be cogent evidence in the Complaint with respect to paragraphs 4(a)(ii) and (iii) that indicates that the Respondent is engaging in a course of conduct that may well be confusing and an infringement of copyright to boot. Such matters may give rise to other rights of action against the Respondent, but cease to be relevant to the present proceeding once the Complainant has failed to show that it has rights in a trade mark that has been incorporated in that name.
Dyson also has a pending case against bladelessfansmall.com.