UDRP inconsistency alert: Oakley wins one “fake” case, loses the other
Sunday, September 9th, 2012
Win won, lose another: the inconsistency of UDRP.
A couple weeks ago I wrote about how Oakley lost a UDRP case over the domain name MyFakeOakleySunglasses.com. The panelist in that case, Houston Putnam Lowry, ruled that the domain name was not confusingly similar to Oakley’s mark because it contained the word “fake”.
Everybody knows what the work “fake” means. The word “fake” appears before the trademark in the domain name. The web site makes it pretty clear these are counterfeit goods. People are going to this web site because they know it isn’t affiliated with Complainant. People are buying these good because the purchasers want to pretend they are Complainant’s goods. While it would seem obvious there is trademark infringement, that is not the test under the UDRP.
Oakley actually filed two cases against the same guy at National Arbitration Forum. The other case was for a very similar domain, myfakeoakleys.com.
The decision for MyFakeOakleys.com was just handed down. Of course that means Oakley lost again, right?
Panelist Tyrus R. Atkinson ruled that MyFakeOakleys.com is confusingly similar to Oakley’s marks.
So MyFakeOakleySunglasses.com isn’t confusingly similar but MyFakeOakleys.com is?
Atkinson didn’t even consider the “fake” issue, and how it would be obvious to any visitor that the site wasn’t affiliated with Oakley.
If you wonder why companies sometimes file what seem to be longshot cases, this is why: a lack of consistency.