Actor Leonardo DiCaprio failed to renew his domain name <leonardodicaprio.org>, but he was able to recover it by filing a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP). In a new video, I discuss what happened in the case and what lessons other trademark owners can learn from DiCaprio's mistake.
According to the UDRP decision, DiCaprio had registered the domain name in 1998 and used it in connection with his website for the Leonardo DiCaprio Foundation. But he inadvertently let it lapse in 2022, which allowed a cybersquatter to start using it in connection with a varierty of different websites, including a gambling site.
Fortunately for DiCaprio, the UDRP panel ruled in his favor and ordered the domain name transferred back to him.
But the reason I find the case interesting — and the reason other trademark owners should be interested in, too — is because of what the decision says about failing to renew a domain name. Here’s what the UDRP panelist wrote when discussing the impact of the actor’s failure to renew <leonardodicaprio.org> on the third element of the UDRP, which requires a complainant like DiCaprio to prove that a domain name was registered and is being used in bad faith:
[A] complainant’s prior ownership of a disputed domain name can indicate an act of opportunistic bad faith where it is shown that the respondent knew of the asserted mark…. Here, Complainant provides evidence of its longstanding previous ownership of the disputed domain name which is based on its famous mark and mentions that it “inadvertently expired”, though it does not provide further details on how this happened. Viewed against all of the other circumstances of this case, the Panel here finds further support for its conclusion that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
So, although the panel in this case found that DiCaprio’s previous registration of the domain name was relevant to a finding of bad faith, it was not sufficient by itself to find bad faith. And that’s important for every domain name registrant to remember, because it means that recovering an expired domain name under the UDRP is not guaranteed.
In my video, I also discuss other cases in which well-known trademark owners — including Microsoft, Regions Bank, and the Dallas Cowboys football team — failed to renew their domain names. I also mention a UDRP case for one of my clients, a singer who failed to renew her domain name and discovered it being used in connection with a pornographic website. (Fortunately, I was able to recover the domain name for her through the UDRP process.)
