Cadillac? A Car? Really?
The World Intellectual Property Organization, also known as “WIPO,” has an incredibly effective arbitration process for dealing with cybersquatters, called the Uniform Domain Name Dispute Resolution Policy, also known as the UDRP. A trademark holder who sees someone using its trademark in a domain name (i.e. “cybersquatting”) can institute an arbitration proceeding to force the cybersquatter to turn over the name. Anyone who registers their domain name through the Internet Corporation for Assigned Names and Numbers (“ICANN” – I am shooting for the world record for most acronyms in one blog post), and that is pretty much everyone, automatically agrees to the process. The whole process takes place online. The complaining party fills out a complaint, the alleged cybersquatter fills out a response and an arbitrator makes a decision based solely on the submitted information. No one gets a trip to the WIPO headquarters in Geneva. The whole thing takes a few months, which in legal circles is the functional equivalent of a nanosecond. And in most cases, the trademark holder wins. But not always. And that’s where Cadillac comes into play. General Motors (“GM” — the acronym record is in site) filed a WIPO action recently to recover the domain name “mycadillac.com” from Chad Clegg, of Mesa Arizona. Clegg claimed he registered the pay per click Web site by that name to promote a variety of goods and services, some having to do with the state of Michigan. And of course, Clegg’s site, according to Clegg had NOTHING to do with the car. It was a reference to the city of Cadillac Michigan. Indeed, Clegg seemed shocked, shocked, that anyone would associate the car with his site. That of course, did not stop him from offering to transfer the site and clearing up the little misunderstanding if GM would pay him $56,000. In order to prevail on its claim, GM was required to show that the domain name was confusingly similar to its mark and that the name was registered in bad faith. The confusingly similar part was easy, since it was, you know, identical. But GM couldn’t convince the arbitrator that Clegg acted in bad faith. While the arbitrator was clearly suspicious, he simply felt that GM didn’t present evidence to rebut Clegg’s shaky story. One interesting note is that the arbitrator suggested that the abbreviated nature of the WIPO proceeding may have worked against GM. The arbitrator noted “[i]t may be that Complainant could develop evidence of bad faith and lack of legitimate interest in a legal proceeding that would allow more evidentiary development.” So the lesson may simply be this. Don’t assume that just because someone is using your mark in a domain name that you can win a WIPO action. And if you need to develop evidence of bad faith, you may want to consider an action under the federal Anti-Cybersquatting Consumer Protection Act. But that’s a whole other acronym (“ACPA”)!