Surprising Result with UDRP

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 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:

The UDRP failed in the Rights and Legitimate Interests section of the UDRP. It appears the panelist was surprised at the length of time it took for the UDRP complaint to be filed. The panelist also did not seem to think the complainant made a case that the respondent doesn’t have a legitimate interest in owning the domain name. Here’s an excerpt with the heart of the discussion:

“Here, the domain name was created in 2008 and there is no explanation as to why it has taken Complainant 14 years to bring these proceedings or how the domain name has been used over that time. At present, a simple website resolves from the domain name which does not trade on Complainant’s reputation in study guides and does not use Complainant’s trademark. If historical use of the domain name may have thrown a shadow over Respondent’s bona fides, we may never know since the Complaint has been so slow coming.

The Panel is left to pause and wonder why the name “Cliff” was chosen by Respondent, especially since the named website contact is a “Lynette Hoy” and, as stated, the domain name holder is “Kathy Rees”. However, the Panel is at the same time mindful that both the trademark and the domain name are composed of a commonplace name plus descriptive nouns and so the chance that the domain name was coined in good faith is not unreasonable.

As the evidence has been presented, the Panel finds that Complainant has failed to make a prima facie case that Respondent lacks a right or interest in the domain name. Put another way, the Panel finds that Complainant has not made a prima facie case that Respondent’s conduct does not fall under either of paragraphs 4(c)(i) or (iii) of the Policy.

Accordingly, the second limb of the Policy has not been established and the Complaint fails.”

Course Hero acquired the CliffsNotes brand less than a year ago, according to a press release. That would explain why the current owner of the trademark just filed the UDRP.

Most perplexing to me is regarding the usage of the domain name. Here’s what the panelist wrote:

“Nor, in the Panel’s assessment, is the website content similar to that of “study guides”. The first entry on the landing page under “Best Sellers” is a thumbnail overview dated June 23, 2020 of an autobiography by Edward Snowden. Other popular books are summarised.”

To me, CliffsNotes are summaries of books that a reader can use in lieu of reading the entire book. Based on what the panelist wrote, it seems pretty clear that the domain name was being used in a manner that took advantage of the my interpretation of the CliffNotes brand.

When I disagree with a UDRP complaint, it is typically when a panelist rules against a domain registrant who owns an investment grade generic domain name. In this case, I disagree with a UDRP that was denied.

Elliot Silver
Elliot Silver
About The Author: Elliot Silver is an Internet entrepreneur and publisher of Elliot is also the founder and President of Top Notch Domains, LLC, a company that has closed eight figures in deals. Please read the Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest. Reach out to Elliot: Twitter | Facebook | LinkedIn

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