Use a Lawyer with Domain Name Expertise

There are many great Intellectual Property lawyers who are familiar with domain names and laws regarding domain names. I think there are few attorneys who I believe have domain name expertise. These domain name lawyers know the ins and outs of the law as it specifically pertains to domain names. They can be particularly helpful to domain name investors who might face legal challenges.

This morning, Nat Cohen posted a series of tweets about how attorneys with domain name expertise have helped his business over the years:

International Olympic Committee Gets IOC.com After UDRP

1

I have been following the UDRP that was filed against the valuable IOC.com domain name at the World Intellectual Property Organization (WIPO). The complainant in the UDRP is listed as the Canadian Olympic Committee (COC) and The International Olympic Committee.

IOC.com doesn’t get its value because it is the acronym for the International Olympic Committee. It has considerable value because it is a 3 letter .com domain name that can be used by any entity or person with IOC as its initials. According to an update on the WIPO UDRP case website, the UDRP was terminated:

Clorox Goes After 375 New gTLD Domain Names in UDRP

3

The Clorox Company filed a massive UDRP at the World Intellectual Property Organization involving hundreds of new gTLD domain names. The case filing is WIPO Case D2021-0781. The 375 domain names involved in the UDRP all have .XYZ, .Shop, and .Club extensions. (Update: There are 4 .com domain names in the list, too) They all appear to incorporate the Clorox branding in the domain names.

The domain names involved in the UDRP are listed below, but keywords include terms like cmcloroxa, ascloroxa, and other variations which incorporate Clorox or typos of the brand name. I would imagine this should be a fairly easy win for Clorox given the amount of domain names that appear to be targeting the brand.

Hallmark.TV UDRP Decision is Upsetting

13

It’s not surprising that Hallmark Licensing, LLC, the company behind the iconic Hallmark brand, would want to have the Hallmark.TV domain name. In addition to owning various Hallmark-related entities, Hallmark Licensing operates the Hallmark Channel, and it uses the brand match HallmarkChannel.com domain name for this line of business. It may not need Hallmark.TV, but I am sure the company  would want to own the domain name.

Hallmark Licensing, LLC opted to file a UDRP complaint to take possession of Hallmark.TV. The decision was published today, and while Hallmark Licensing prevailed, the rationale for why the company prevailed is upsetting to me.

XTM.com UDRP: Complainant Loses

0

A UDRP was filed against XTM.com at the National Arbitration Forum (NAF) by a company called XTM International Inc. The domain registrant did not file a response to the UDRP, but the panelist still found in favor of the registrant. The panelist in the case was Terry F. Peppard.

From what I can tell, this valuable 3 letter .com domain name does not infringe on the complainant’s trademarks with its current usage. When I visited the domain name, I could see a pretty simple landing page indicating the domain name is for sale: “[xtm.com] is for sale:

It’s Not ClownPenis.Fart, but This UDRP Domain Name is Amusing

6

Many years ago, there was a skit on Saturday Night Live about a fictitious investment firm called Dillon-Edwards Investments. The investment firm had to use ClownPenis.Fart for its website because it was the only domain name left when it launched its website. Have a look at the skit and continue reading below: