In this episode of my exploration of important and interesting decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP), I discuss a case involving a common generic word, <stars.com>, Al-Dabbagh Group Holding Company v. Leo Radvinsky / Cybertania Inc.
As I explain in the video, the registrant of the domain name successfully defended himself against a UDRP complaint, allowing him to keep it. The case contains some interesting and slightly unusual facts, but the reason I’m talking about it here is because it holds some important lessons for trademark owners considering whether to file a UDRP complaint involving a short, one-word domain name.
The most important lesson from the <stars.com> case is that trademark owners should think twice before filing a UDRP complaint against a generic name, because trademark owners often lose these cases.
The UDRP panel in this case wrote:
the holding and sale of generic domain names is considered a legitimate activity under [the UDRP]…. In light of Respondent’s convincing assertion that prior to the commencement of this case he had no knowledge of Complainant or its rights in the STARS FOUNDATION mark, and in light of the generic nature of the Domain Name itself, it is clear that his acquisition of the Domain Name was not intended to target Complainant in any way.
As a result, the UDRP panel concluded that the domain name registrant had rights or legitimate interests in <stars.com>. And, because he prevailed on that part of the UDRP’s three-part test, the panel didn’t even address the third part of the test, on bad faith, because a trademark owner’s failure on any one part of the test means that the trademark owner loses the case.
Watch the video below (6 minutes, 47 seconds) or on the GigaLaw YouTube channel.
