When a Disputed Domain Name Contains Multiple Trademarks

A domain name that includes more than one trademark raises some interesting issues in proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP). Among them: If the trademarks are owned by different entities, can a UDRP panel order the domain name transferred to one entity without consent of the other?

As one panel that addressed the issue observed, the question "does not arise frequently." The panel spent nearly half of its discussion addressing this issue, in Kabbage, Inc. v. Oneandone Private Registration et al., WIPO Case No. D2015-1507. (Disclosure: I represented the complainant.)

In that case, the panel ordered all six disputed domain names containing the KABBAGE trademark transferred to the complainant -- but only after issuing a procedural order to the parties on the multiple-trademark issue and providing a history of similar cases. The issue arose because two of the disputed domain names, <kabbage4amazon.com> and <kabbage4etsy.com>, contained not only the complainant's KABBAGE trademark but also trademarks owned by third parties (that is, AMAZON and ETSY).


Transfer Without Consent

Among the cases cited by the panel as part of the current "trend" on how to handle UDRP proceedings that involve multiple trademarks:

  • Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603: The panel ordered the transfer of numerous domain names to Gucci, including two that contained the trademark IPAD (owned by Apple), noting that "the fact that the third party trademark 'IPAD' is included in the disputed domain names <gucciipadcase.net> and <gucciipadcases.com> does not eliminate the similarity between the Complainant’s trademark and such domain names." The panel didn't discuss Apple's lack of participation in the proceeding other than to note that its decision to transfer the domain names was "without prejudice to any rights that might be asserted by Apple Inc."
  • Decathlon SAS v. Nadia Michalski, WIPO Case No. D2014-1996: In ordering transfer of the domain name <decathlon-nike.com> to the owner of the DECATHLON trademark -- where the owner of the NIKE trademark apparently had not consented -- the panel said that "[i]t is the consensus view among UDRP panelists that neither the Policy nor the Rules expressly require the consent of a third party and previous panels have accepted complaints request that a domain name may be transferred to the complainant."
  • F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751: Similarly here, the panel ordered transfer of the domain name <viagra-xenical-pharmacy.com> to the complainant, which owned the XENICAL (but not the VIAGRA) trademark, saying that "while in good practice neither the Policy nor the Rules expressly require... consent" of a trademark owner that is not a party to the UDRP proceeding.

After citing these decisions, the panel in the Kabbage case concluded:

This Panel recognizes that to the extent practicable, the Policy should be interpreted in a consistent manner. The Panel also believes that the remedy of cancellation, for sound reasons, is disfavored by UDRP panels and should be avoided when possible. Particularly where Complainant has fulfilled all the elements of Policy paragraph 4(a), expressed a strong preference for transfer over cancellation, and demonstrated to the satisfaction of the Panel that it is cognizant of its obligations to respect the rights of third-party trademark holders, the Panel is willing to reach a result different from that embraced in the Panel's decision three years ago in Incase Designs Corp. v. Rogenie LLC, Rogenie Cordero [in which the panel ordered a domain name cancelled instead of transferred]....


On balance, the Panel rules, therefore, that it is appropriate and consistent with the summary nature of the UDRP to grant transfer of all the disputed domain names in the instant case.

Aside from the decisions cited by the panel in Kabbage, other decisions under the UDRP have reached the same conclusion under similar circumstances, including Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 (transfer of <chevron-texaco.com>); MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325 (transfer of <chasemastercard.com>); and MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2008-1999 (transfer of, among other domain names, <amazonmastercard.com>).

Update (December 11, 2015): A Forum panel cited the Kabbage decision favorably, in awarding transfer of eight domain names containing the complainant's TARGET trademark plus the third-party CVS trademark: "The disputed domain names all contain both Complainant's trademark and the trademark of a company that is not a party to this proceeding. While it may be preferable for a complainant to obtain the consent of a third-party rights holder before seeking transfer of a domain name, such consent is not necessary, and the alternative remedy of cancellation is properly viewed with disfavor."


Transfer With Consent

As many of the above decisions have observed, while obtaining consent from the third-party trademark owner is not necessary, it certainly could be helpful. Indeed, this has occurred in previous cases, such as:

  • Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited et al., WIPO Case No. D2008-1675 (Disclosure: I represented the complainant): The panel ordered transfer of the domain name <westernunionmastercards.com>to the owner of the WESTERN UNION trademark where, according to the decision, the complainant contended as follows: "Complainant has obtained from MasterCard a license to the domain name <westernunionmastercards.com> providing Complainant with the right to pursue the [domain name] <westernunionmastercards.com> in this proceeding and to maintain the registration of it thereafter. (A copy of this confidential license agreement is available to the Panel upon request.)” While the panel said that it "would have much preferred (and other panels may require) more fulsome evidence of the other mark's owners consent, a statement contained in a complaint can in appropriate circumstances be treated as evidence for the purposes of these proceedings."
  • Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (Disclosure: I represented the complainant): The panel ordered the transfer of eight domain names that contained the complainant's CROWNE PLAZA and HOLIDAY INN trademarks, including one that contained the RAMADA trademark owned by another hotel company. In that case, as the decision makes clear, the complainant included with its complaint written consent from the owner of the RAMADA trademark.


Rights After Transfer

Fortunately, the Kabbage case and other recent UDRP decisions make clear that a panel may order a domain name transferred to a complainant even if the domain name contains a third party's trademark. This is both efficient and appropriate -- where the complainant has otherwise satisfied the UDRP's three-part test that applies to all proceedings.

Of course, all trademark owners must be aware of the complexities that can arise from controlling a domain name that contains someone else's trademark, especially if the other trademark owner has not consented: Every trademark owner that wins the transfer of a domain name in a UDRP case must agree with the representations set forth in paragraph 2 of the UDRP, including that the complainant’s “registration of the domain name will not infringe upon or otherwise violate the rights of any third party.”

In other words, a UDRP transfer does not give the winning complainant any rights to the third party's trademark other than the right to become the registrant of a particular domain name.