Enforcement

That’s My Name, Says UDRP Complainant

UDRP complaints involving personal names are tricky, especially if the complainant or respondent holds a trademark for the name in question. A German lawyer learned this firsthand when he filed aUDRP complaint against a respondent called Eighty Business Names with the World Intellectual Property Organization (WIPO) over the domain name Lambsdorff.com.

Konstantin Graf Lambsdorff, a Berlin-based attorney who has practiced law for 20 years, owns a German trademark for the word LAMBSDORFF, registered in September 2012. He states that this mark entitles him to the domain name which, at the time of filing, redirected to a third-party website selling various goods and services apparently unrelated to the Respondent. The Cayman Islands-based Respondent did not reply to the Complainant’s contentions.

Without a response from Eighty Business Names, the UDRP categorized the case as a default. In such cases, the Panelist must draw conclusions from the information at hand, and a victory for the Complainant is not assured. In this case, the Panelist found that the disputed domain name was identical or confusingly similar to the Complainant’s established mark, but he could not prove that the Respondent registered the domain name in bad faith.

The domain name was registered in 2004, a full eight years before the Complainant obtained his trademark. The Panelist found no evidence that the Respondent knew of the Complainant at the time of registration, and although the redirects showed “some evidence of bad faith use,” he found “no evidence of bad faith registration” and ultimately decided that Lambsdorff.com would remain with the Respondent.

UDRP disputes involving personal names are always difficult, especially because it is difficult for the Complainant in this case, not an internationally recognized celebrity, to prove common law rights to a certain name. The trademark filing helped in one part of the case, but it ultimately couldn’t completely satisfy the Panelist. Any individual looking to establish a presence on the Internet should register relevant domain names proactively to avoid having to file a UDRP complaint.

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