What happens when two trademarks are at issue in a UDRP?
National Arbitration Forum panelist Sandra J. Franklin has declined to transfer the domain name NikeGoogle.com to sporting goods company Nike in an interesting UDRP.
I’ve often wondered what ends up happening when a company wins a UDRP for a domain that includes their brand and that of another. It happens from time to time, and it seems a bit odd. Isn’t the winning company kind of cybersquatting on the other brand at that point?
In the UDRP for NikeGoogle.com, panelist Franklin took exception to a request by Google for Nike to transfer the domain to it after completing the UDRP:
The Panel notes that there are two trademarks at issue in the instant case: NIKE and GOOGLE. However, Google, Inc. has not been joined as a party, and thus has not provided any information asserting rights in the GOOGLE mark in this proceeding. In it’s (sic) Complaint, Complainant alleges “NIKE files this UDRP complaint with the knowledge and consent of Google, Inc. Further, Google, Inc. consents to the relief requested in the Complaint (i.e., the transfer of the subject domain name to NIKE).” However, an email attached to the Complaint as an exhibit indicates that Google requested that Respondent transfer the
to Google in return for up to $100 in reimbursement for out-of-pocket registration fees.
The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Google, Inc. has not been joined as a Complainant in this matter and there is no nexus available through which Complainant can claim to have rights to the transfer of the nikegoogle.com domain name. Thus, the Panel dismisses the Complaint because Complainant has failed to establish rights in or to the GOOGLE mark…