Decision explains that domain registrant must have targeted the Complainant to win a case.
A three-person World Intellectual Property Organization panel has found against blackberry producer Berry Fresh, LLC, in a cybersquatting dispute it filed against BerrySweet.com. The panel wrote a detailed decision showing that, just because you have a trademark for a term, it doesn’t mean a domain registrant bought the domain to target your mark.
Berry Fresh has a Canadian trademark for Berry Fresh and a U.S. registration on the Supplemental Register. Even putting aside the fact that the U.S. registration is on the Supplemental Register, it’s noteworthy that the trademarks are for blackberries. Just blackberries.
If you Google the term Berry Fresh, you’ll get results for Pokemon, stationary, Ben & Jerry’s ice cream, and other things that use “berry sweet” as a play on “very sweet.”
In this case, Berry Fresh couldn’t show that the registrant of the domain name was targeting it with the registration. He wasn’t using the domain.
Was he targeting the berry producer? Or did he just register the domain because it’s a fun play on “very sweet”? It’s very likely the latter.
Berry Fresh has a trademark for berries. Not the many other uses of this term.
It’s also worth pointing out that Berry Fresh was the prior registrant of this domain. It let the domain expire by accident last year. Still, the current registrant didn’t do anything to show that it targeted the produce company with the domain registration. He didn’t offer to sell it to Berry Fresh until Berry Fresh contacted him. He didn’t put up ads related to berries.
This case should serve as a reminder to all Complainants that just showing they have a trademark isn’t enough to win a UDRP. They need to show that the domain registrant targeted them with the registration.