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A Complainant’s Right to Maintain a UDRP Proceeding Not Defeated Because Its Trademark is From a Different Jurisdiction Than Respondent’s Domicile

A complainant has standing to prosecute a UDRP dispute regardless of the jurisdiction in which it acquired its trademark or of the parties’ residencies in different countries. That a trademark is registered or acquired in a different jurisdiction than the respondent’s domicile does not defeat the right to maintain a UDRP proceeding, although it may be a factor in determining bad faith. The term “rights” means a ripened trademark in any jurisdiction in the world. It is immaterial the relative locations of the parties. The Policy does not require the complainant’s trademark to have been obtained in a country in which the respondent resides or operates, only that the complainant can establish rights in some jurisdiction. Koninklijke KPN N.V. v. Telepathy, Inc., D2001-0217 (WIPO May 7, 2001), but the Complainant failed to establish bad faith for the combination “money” and “planet” in <>. The Panel in Renaissance Hotel Holdings, Inc. v. Renaissance Cochi, FA 932344 (Nat. Arb. Forum April 23, 2007) held that the Complainant need only show that it has established a trademark in “some jurisdiction.” In Luby’s Fuddruckers Restaurants, LLC v. David Black, FA1104001382232 (Nat. Arb. Forum May 10, 2011) the Complainant is a U.S. business and the Respondent is domiciled in the Phillippines. The only question in these cases is whether the remoteness of the parties undercuts bad faith or supports a defense of good faith.

Even if a trademark has been abandoned and cancelled in one jurisdiction it is not a basis for denying UDRP standing. In Asia Pacific Breweries Limited v. Chris Kwan, D2003-0920 (WIPO January 20, 2004), for example, the Respondent contended that the Complainant had lost or abandoned trademark rights in the United States or Canada. But, proof of trademark rights registered or unregistered “in any country is sufficient for the purposes of paragraph 4(a)(i) of the Policy, and the fact that the Complainant may have elected to submit to the jurisdiction of the Courts of Canada, the local jurisdiction of the Registrar, for the purpose of resolving any challenge to this decision, is irrelevant,” Borsig Process Heat Exchanger GmbH f/k/a Borsig GmbH v. David Webb, FA0608000766319 (Nat. Arb. Forum September 19, 2006).

The domain name in Luby’s Fuddruckers differed from the Complainant’s trademark in two ways: it deleted an apostrophe and removed the spaces between the words of the mark, otherwise <> is identical to the Complainant’s WORLD’S GREATEST HAMBURGERS. The “use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark,” Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000); neither does “eliminating the space between terms of a mark,” George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007).

It has been pointed out by Panels from the earliest cases that geographic remoteness can defeat a complainant’s claim when there is no evidence that the respondent could have known about the complainant’s trademark. KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO April 20, 2001); Jet Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006) (<>). That is more likely where the trademark is composed of common elements, or in the case of KCTS Television a string of letters argued to be an acronym rather than identical to the Complainant’s television call sign. A more recent example is Retail Royalty Company, and AEO Management Co. v. Modern Empire Internet Ltd., FA1103001378458 (Nat. Arb. Forum April 21, 2011) (77 and <>). However, to prevail on a good faith defense a respondent has to offer an explanation which is more persuasive if the domain name is active since use is compelling evidence of intention.

In Luby’s Fuddruckers, the Respondent appeared by counsel but offered no plausible explanation for having acquired a domain name identical to a registered trademark. And, even though the lexical string WORLD’S GREATEST HAMBURGERS is a common hyperbole of restauranteurs and could plausibly be used by another business offering the same cuisine, in Luby’s Fuddruckers the Respondent was holding the domain name inactive. Inactivity of domain names formed with uncommon strings has long been held to support bad faith registration, but inferences of bad faith can also be drawn from common lexical strings when the domain name is identical to the trademark.

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