In this case study video, I discuss what happens when a dispute under the Uniform Domain Name Dispute Resolution Policy (UDRP) includes trademarks owned by two different companies.
The case I discuss was filed by Snap, Inc., and included six domain names:
<facebooksnapchat.com>
<snapchatfacebook.com>
<instagramsnapchat.com>
<snapchatinstagram.com>
<tiktoksnapchat.com>
<snapchattiktok.com>
As is obvious, each of the domain names contains the SNAPCHAT trademark (owned by Snap) plus another trademark (not owned by Snap).
In the video, I explain that the UDRP panel cited the WIPO Overview, which says: “Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks… is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element.”
As a result, and because the panel easily found that Snap was able to prove the second and third elements of the UDRP as well — that the registrant of the domain names had no rights or legitimate interests in them and that they were registered and being used in bad faith — the panel quickly reached a conclusion that all six domain names should be transferred to Snap.
But, that wasn’t the end of the decision, because the panel recognized the potential complications that could arise from awarding one trademark owner, Snap, domain names that contain trademarks owned by others, namely, Facebook, Instagram and TikTok.
Ultimately, the panel wrote that its decision was “without prejudice to the rights of the third-party owners of the INSTAGRAM, FACEBOOK and TIKTOK trademarks.”
In similar cases, I’ve gotten another trademark owner to join my client in filing a UDRP complaint, so the transfer of the domain names can actually be made to multiple parties jointly, and in other cases I’ve obtained the other trademark owner’s consent before filing the complaint in the first place, which usually includes an agreement that one of the parties will maintain but not use the disputed domain name.
