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  • Insurance.pro decision acknowledges limits on UDRP and trademarks

    1. BY - Feb 18, 2014
    2. Policy & Law
    3. 8 Comments

    Facing legitimate questions over a trademark’s legitimacy, UDRP panel determines case is outside the scope of the policy.

    A couple weeks ago a National Arbitration Forum panel handed down a decision in a complaint brought over the domain name insurance.pro.

    On the surface it appeared to just be a case about a seemingly generic domain name. But there are a couple interesting things about this case, and it could end up being an interesting reference case for UDRPs in the future.

    First, the respondent in the case (represented by John Berryhill) argued that the complainant was essentially front-running. The respondent said that the complainant got a trademark on insurance.pro ahead of the .pro launch in an effort to secure what could have been a valuable domain name. Although I haven’t seen a lot of similar trademark front-running filings for new TLDs (in the U.S. anyway), this could come up again as new TLDs roll out.

    Second, the complainant’s case was rejected because the respondent effectively argued that the trademark may be invalid. Yes, the complainant has a federally registered mark. But the respondent argued it was invalid, and a UDRP panel isn’t necessarily qualified to to make a determination on this and potentially expand trademark rights. So the panel instead determined that this case was outside the scope of UDRP.

    It will be interesting to see if this case is referenced in future arguments and decisions.

8 Comments
  • It will be referenced if the trademark scam gets out of hand.
    Fake trademarks for .build, .cloud, .health and many many others can’t be tolerated in New gTLD sunrise or UDRPs.

  • This is not unlike a recent UDRP involving REMY MARTIN as complainant. They do have a trade mark that includes “Louis XIII” but that has always been for Cognac/Brandy. In or around January 2013 it was publicised that a Macau company was going to start a Casino and/or Hotel using the name “Louis XIII” and that company was going to change its name also to Louis XIII . Within 1 month of that press release going out Remy Martin applied for a trade mark for Louis XIII for, would you believe, hotels and casino’s. Now one would be forgiven for thinking that this trade mark application had been made in Bad Faith, as I believe it has been ,and of course is now being used ,it appears, to interfere with the Macau company’s CTM application. Of course this is only my opinion based on what I know of the facts. Seemingly of course the UDRP panelist ignored all that and the case is I believe now headed for Court in Germany. Will be interesting to see what comes of it.

  • What they mean by “invalid trademark”? If it’s legal status in USPTO database says “registered”, then it was not invalidated and is valid. If someone believe some (R) is invalid, they should file such request with USPTO. Until any action against are complete, trademark is valid. Period. I don’t get this. I am happy that the case was denied, I hate UDRP, but I would like to see logic in this argument…

    • A lot of times you first become aware of a trademark when someone files a UDRP against you. You can’t file a request with the USPTO in time while responding to the UDRP.

      • But because you become aware of the trademark late, it does not make such trademark registration invalid. Point is how you can claim something invalid if there is no such legal ruling. Same like presumption of innocence in democratic systems. Got it?

        • @Mike

          I had similar thoughts … the article almost makes it seem as if all one has to do if they have a UDRP filed against them is to claim “invalid trademark” and the case will be dismissed.

          But, if you read the UDRP case (it’s very short; follow the link in the post) it is clear there were substantive reasons to question the validity of the trademark.

          So, if you are a respondent in a UDRP and you want to use “invalid trademark” as a defense; just make sure you have some/enough evidence to convince the panel; …because it’s not a magical ‘get-out-of-jail-free’ card!

  • And I should add that not one bit of news appears in the press about Remy Martin planning to get in to the Casino or Hotel business, “strange” therefore that suddenly out of the blue and with no planning (or any that is public) they decide to get into those businesses and apply for a trademark. OR could it be that they saw the press release and decided …….? Time will tell.

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