John Berryhill is known as one of the most successful domain attorneys, and in a UDRP decision that was released today, he successfully defended Reflex Publishing’s ownership of Lampoon.com. As I reported back in May, the Harvard Lampoon filed a UDRP for Lampoon.com, a seemingly generic domain name.
One interesting facet of this case that Berryhill brought up was that one of the panelists has Harvard connections. According to the response, “We note that the present Proceeding involves claims and evidence relating to Harvard University, as the Complainant has made various allegations relating to ‘alumni’, and that the presiding panelist is identified as a ‘Harvard trained mediator.” Despite this fact, the panel “deemed Respondent’s note as not raising any “material issue of actual conflict.”
From my perspective, the panel got this one right, and for the right reasons. According to the decision,
“Complainant has failed to meet its burden of demonstrating that Respondent has no right or legitimate interest in the Domain Name. In the present case, the fact is that Respondent registered a domain name using an ordinary dictionary word (“lampoon”) in the absence of circumstances indicating that Respondent’s aim in registering the Domain Name using “lampoon” was to profit from Complainant’s LAMPOON Mark. Indeed, Respondent established legitimate rights to the Domain Name before Complainant was able to demonstrate to the USPTO its rights to register the LAMPOON Mark (i.e., Respondent registered the Domain Name in 1998 before the USPTO issued Complainant trademark registrations under Section 2(F) of the Lanham Act for the LAMPOON Mark). And, as discussed below, there is no evidence of Complainant’s “many years of using the LAMPOON Mark” from which the Panel might possibly infer that Respondent knew of Complainant’s rights in the LAMPOON Mark and intended to exploit it. Furthermore, Respondent is using the Domain Name on a website having sponsored links to a wide variety of subject matter none of which Complainant has shown, or the Panel deems, to compete with Complainant’s parodical magazines and books.”
The panel also noted that the domain owner had not registered the name in bad faith. It seems rather obvious, but sometimes you just never know how these UDRP cases will turn out, as there isn’t always consistency between panelists and cases.
According to the decision,
“One fact bears noting as an initial matter – Respondent registered the Domain Name in 1998, some thirteen years ago. “The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration. “AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011. The only evidence of record showing that Complainant took any action against this Respondent to enforce its rights was a letter proffered by Respondent in this case dated September 24, 2001, aimed at persuading Respondent to transfer the Domain Name. Complainant sent that letter three years after Respondent registered the Domain Name and then waited another ten years to assert its rights to the Domain Name by commencing this proceeding. There was no explanation for Complainant’s delay in complaining about Respondent’s domain name. Although the Panel’s decision in this case that Complainant has failed to establish bad faith registration does not rest simply on the passage of time between registration of the Domain Name and Complainant’s assertion of its rights, it is a fact that the Panel cannot ignore.
After carefully considering the totality of the circumstances in the record, the Panel does not find any evidence demonstrating that Respondent registered the Domain Name with the aim of profiting from and exploiting Complainant’s rights in the LAMPOON Mark. While Complainant has established registration rights in the LAMPOON Mark sufficient to satisfy paragraph 4(a)(i) of the Policy, the LAMPOON Mark nonetheless comprises the common dictionary word “lampoon,” which the record and the Panel’s own searching indicates is subject to significant and widespread third-party use in its ordinary or descriptive sense (inter alia, in articles discussing satirical commentary, in the name of business establishments, as a font name, in event names, book titles and name of hanging lamp).“
It’s refreshing to see a case like this go in favor a a domain registrant. Congrats to Mr. Berryhill on this win.