Legal News

I was browsing through some recently filed UDRP cases, when a domain name popped out at me. A UDRP was filed against AmericansJourney.com by Chewy at the World Intellectual Property Organization. It is WIPO case #D2022-3876.

On its own and without initially doing any background searching, the AmericansJourney.com domain name sounds somewhat defensibly generic. I could see it being a blog about an American’s journey though the world or something like that. Compared to a more clearly infringing domain name like ChewyPetSupplies.com, AmericansJourney.com does not seem super-infringing on a well-known brand name. There’s often more to the story, and this case is no different.

This morning while reading some UDRP decisions from the National Arbitration Forum, I came across a UDRP decision that had something I have never seen before. The decision listed the complainant as “Redacted” and the domain name as <[redacted].com>. The complainant won the UDRP and requested anonymity due to how the domain name had been used. The panelist, Alan L. Limbury, granted this request.

In the decision, Mr. Limbury discussed this unusual request and shared his rational for determining that this qualified as an “exceptional case,” which allowed him to honor the complainant’s request:

A company called Kosmos Global Holding, S.L. from Spain filed and lost a UDRP against the Kosmos.com domain name. A three member WIPO panel also found that this was a case of Reverse Domain Name Hijacking. Attorney John Berryhill successfully defended the domain name. This is the second time John defended Kosmos.com, as another company lost its 2015 UDRP filing.

In reading through the UDRP decision that was published today on the WIPO website, it is very clear why the panel found in favor of the registrant and ruled it was RDNH. For one thing, the domain registrant owned the domain name prior to the existence of the complainant. Without the benefit of a time machine, the registrant could not have acquired the domain name in bad faith. Here’s what the panel wrote:

The viral “Girl Explaining” meme has been making the rounds, and it was a matter of time before someone made a domain name-related version of it. Cristin Brouillard, Assistant to attorney John Berryhill, posted her version of the girl explaining meme.

In this version, the girl is explaining what happens when a company files a bullshit UDRP against a rightfully owned domain name:

pic.twitter.com/Di7az0WMiR

— Cristin Donahue (@CristinPhilly) August 25, 2022

According to NameBio, the Calpers.com domain name was sold for $1,718 in December of 2021 at NameJet. The California Public Employees’ Retirement System, commonly known as “CALPERS,” filed a UDRP against the domain name at the National Arbitration Forum and won the decision. The domain registrant did not submit a response.

In looking through the UDRP decision, this seems to have been a pretty easy case for the panelist to decide. Apparently, the “resolving website displays click-through advertising links to products and services, some of which compete with those of Complainant.” A domain name that matches a complainant’s trademark combined with infringing PPC links is a recipe for disaster for a domain registrant.

I think CliffsNotes is a fairly well-known trademark. In fact, several people have mentioned “Cliff’s Notes” or “Cliff Notes” in various comments on this blog over the years to ask for a summary of something. My CliffsNotes version of the brand is that CliffsNotes is a brand of study guides that gives a synopsis of a book. If I wanted to get the scope and general idea of a book without reading it, I might read the CliffsNotes version. That’s the brand the company has built.

A UDRP was filed by Course Hero, the company that owns the CliffsNotes brand against the cliffnotebooks.com domain name and the decision was published earlier today. Surprisingly, the sole panelist (Debrett G. Lyons) ruled against the complainant. The domain registrant did not even reply to the UDRP to defend the domain name. Nat Cohen also expressed his surprise at this decision:

There are plenty of baffling #UDRP transfer decisions. This is a rare instance of a baffling #UDRP denial.

— Nat Cohen (@domainarts) July 12, 2022