| Online start-ups are faced with the daunting task of | | | | common law marks, LITTLE DEALER LITTLE PRICES |
| selecting a domain name that will withstand legal | | | | RV and LITTLE DEALER. |
| challenges. | | | | The respondent argued that it should prevail because |
| There's a general belief among online start-ups that a | | | | its registration of its domain name occurred prior to the |
| trademark owner will always trump a domain name | | | | complainant's registration of its trademark. |
| registrant with the same or confusingly similar domain | | | | The respondent won. The UDRP panelist noted that a |
| name. That's not always the result... as two recent | | | | complainant has to show that the respondent's domain |
| 2010 UDRP decisions point out. | | | | name is identical or confusingly similar to complainant's |
| The UDRP | | | | mark. "This provision necessarily implies that |
| What is the UDRP, and why is it important? | | | | Complainant's rights must predate the registration of |
| The UDRP acronym stands for the Uniform Domain | | | | Registrant's domain name", the panelist concluded. |
| Name Dispute Resolution Policy. The UDRP is a set of | | | | The take-away - the respondent won because it |
| procedures and rules that are supposed to help | | | | registered its domain name before the complainant |
| determine who should prevail in a dispute over domain | | | | registered its trademark. |
| name ownership. | | | | The University of Texas Case |
| The UDRP is important because it provides a faster | | | | The University of Texas at Austin (UT) case involved |
| and cheaper way to resolve a domain name dispute | | | | requirement no. 3 above. |
| than a full-blown lawsuit in a court of law. Instead of | | | | UT showed that it owned the domain name, as well as |
| litigation, it's an administrative proceeding where the | | | | the following registered trademarks: TEXAS, |
| contestants present written arguments to a | | | | UNIVERSITY OF TEXAS, TEXAS LONGHORNS, |
| panelist-arbitrator who issues a binding decision. | | | | and LONGHORNS. UT also showed that its TEXAS |
| In-person hearings (including hearings by | | | | mark is registered for "Entertainment services, namely, |
| teleconference, videoconference, and web | | | | providing college athletic and sporting events." |
| conference) are permitted only in exceptional cases, | | | | UT argued among other things that the use of |
| and are therefore rare. | | | | respondent's texassports.org domain was in bad faith |
| The UDRP has not been without its critics. Most of the | | | | because it was used as a "parking" website for |
| criticism centers on the fact that the UDRP was | | | | information related to University of Texas sports and |
| established to benefit trademark owners in taking | | | | sporting events. |
| non-trademark owners to task in domain name | | | | The respondent won. The panel found that UT did not |
| disputes. And UDRP critics often point out the fact the | | | | prove "bad faith". The panel reasoned that because |
| UDRP decisions seem to come out overwhelmingly in | | | | the term "Texas Sports" is geographically descriptive, |
| favor of trademark owners. | | | | the respondent was free to register its domain name |
| There are three requirements for a trademark | | | | using the term on a "first-come, first-served basis". |
| owner-complainant to prevail over a domain | | | | The panel also found that UT did not have a |
| name-respondent in a UDRP proceeding: | | | | registration for the term "Texas Sports", and therefore |
| 1 - the domain name registered by the respondent is | | | | there was no likelihood of consumer confusion. |
| identical or confusingly similar to a trademark or | | | | Conclusion |
| service mark in which the complainant has rights; | | | | Selecting a domain name that will withstand legal |
| 2 - the respondent has no rights or legitimate interests | | | | challenges is a strategic undertaking for any online |
| in respect of the domain name; and | | | | start-up. |
| 3 - the domain name has been registered and is being | | | | The important lesson is that although the UDRP may |
| used in bad faith by the respondent. | | | | help in deciding in favor of a respondent in a domain |
| The Arizona State Trailer Sales Case | | | | name dispute with a trademark owner, the |
| This case involved requirement no. 1 above. | | | | recommended approach is to avoid the dispute |
| The complainant, Arizona State Trailer Sales, argued | | | | altogether by undertaking a thorough search of |
| that the respondent's domain name was confusingly | | | | pre-existing trademarks before selecting a domain |
| similar to the complainant's registered mark, LITTLE | | | | name. |
| DEALER LITTLE PRICES and the complainant's | | | | |