Attorney John Berryhill represented a complainant in a UDRP decision that I think could be of importance for people who are in the NFT investment space. An open source software company called ODK filed a UDRP against the ODKCentral.com domain name. The complainant in the UDRP won and will take possession of the domain name. The decision was published this morning.
The issue is related to the usage of the ODK branding in the domain name. Despite the fact that the software is open source, there are no rights granted for others to use the ODK branding in domain names. Notable, from the decision:
“Secondly, it should be noted that the fact that the Complainant makes available open-source software does not provide the Respondent with rights or legitimate interests or exclude the Complainant’s right to bring a Complaint under the Policy.”
I have seen a lot of domain names registered to people who seem to trade on well-known NFT brand names. There are quite a few Bored Ape domain names that were registered by third parties, and other NFT projects have had associated domain names registered by third parties. This may not be okay without the permission of the company that produced the NFT, even if they own an NFT and have license to use the artwork from the NFT.
There are lots of Ape-related domain names that would be okay because they are generic in nature. However, there may be a gray area that isn’t okay, and there are domain names that fully utilize trademarks that aren’t legitimate.
Notably, the complainant in the ODK UDRP does not own a registered trademark for the ODK term. However, the complainant was able to prove that it is an unregistered trademark in its field due to its extensive usage:
“Accordingly, the Panel finds that the Complainant has proven for the purposes of the Policy ownership of ODK and at least arguably ODK Central as an unregistered trademark for its software application.”
The owner of a NFT may be licensed to use artwork from the NFT commercially, but there may be issues using the NFT brand name without permission of the company that created and operates that NFT series.