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The Policy Offers Relief for Abusive Registration of a Domain Name Not Infringement of Trademark

We have to remember that the UDRP is a proceeding of limited scope. The respondent has agreed to submit to arbitration only the issue of abusive registration. The Panel is not empowered to rule on trademark infringement, although infringement of the right secured by trademark is certainly the basis for a ruling in favor of the complainant. “Infringement” refers to the complainant’s right to exclude others from using the trademark in a domain name to gain an advantage at the complainant’s expense. The word “infringe” appears twice in the Policy at paragraph 2 and multiple times in the WIPO Final Report.

Paragraph 2 of the Policy is a representation by the respondent that “b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;” the concluding sentence of the paragraph reads that it is the registrant’s “responsibility to determine whether [its] domain name registration infringes or violates someone else’s rights.” However, the WIPO Final Report states that this “is not an unqualified representation that a domain name registration does not infringe the intellectual property rights of others. It is a representation that the registration does not, to the best of the applicant’s knowledge and belief, infringe the intellectual property rights of others.” The requirement is due diligence at a reduced level of investigation.

Keeping these thoughts in mind, a trademark is one thing and not another; it is only what the holder claims on its registration or the symbol by which it is recognized. It is not a truncated (reduced to initials) or design version of the trademark, unless they too are found to be unregistered trademarks in their own right. The initials “LV” could stand for Louis Vuitton, as the Complainant alleges in Louis Vuitton Malletier S.A. v. Demand Domains, Inc., FA1003001310816 (Nat. Arb. Forum April 14, 2010), but to the Respondent it could be the ISO country code for Latvia; or, as it was found in an earlier case by the same Complainant it could be Las Vegas, Louis Vuitton Malletier S.A. v. Manifest Information Services c/o Manifest Hostmaster, FA0609000796276 (Nat. Arb. Forum November 7, 2006) (<lv.com>). There are multiple registrations for LV on the Principal Register. The Complainant’s registrations (of which there are many in different classes) consist of a design of the letters with the “L” sitting atop the “V”. The Complainant does not as such have a trademark for the two letters side by side as do a number of other registrants.

The incorporation of “lv” to form the domain name <lvmobile.com> may in fact be a trademark infringement, but not an abusive registration because “the combination [lv and mobile] does not clearly and obviously associate to the Complainant.” Whatever the truth may be “an Internet user seeing the domain name <lvmobile.com> is more likely to expect to find information on Latvian mobile phones on the connecting site, than the fashion goods / luxury accessories of the Complainant.” While

adding generic terms associated with a certain trademark will add to the risk of confusion … [a]dding a generic term that associate[s] with specific goods or services completely non-related to the trademark, and specially when such trademark is not unique but having different generic meanings apart from being someone’s registered mark, may on the other hand reduce the risk of confusion.

It is not that the Complainant’s iterated “lv”design on its fashion products is not instantly recognizable to the public, the problem is that it has no plain LV registered in the Class that includes mobile phones. This does not foreclose an action for trademark infringement, however.

Gerald M. Levine <udrpcommentaries.com>

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