By Steve Levy
Let’s face it. Not all brands are created equal. Some are famous, some are super famous, and some have a very limited reputation, perhaps from being used by so many companies. Consider the APPLE brand which is known worldwide but only for a particular segment of business – technology products. If, say, someone was to sell baby clothing under the brand “Apple of My Eye” the typical customer might not think it came from the maker of laptops and smartphones. However, the mark COCA-COLA is so overwhelmingly super famous that people would think of the brand even if it were used to sell spark plugs, camping tents, or anything else having no connection with soft drinks.
It’s against this background that I’d like to discuss two recent UDRP decisions. One granting a transfer of the domain name alamo.ir and another denying a claim against sonata.ai. In the first case, brought by the owner of the globally famous ALAMO brand for car rentals, the respondent claimed to be providing computer and scientific services to customers in Iran. Its website appears entirely in the Persian language except for the word “Alamo” which is in plain, Latin text at the top. The site’s content promotes software and makes no mention of cars or car rental. In explaining its choice of the term “alamo”, Respondent claims that he created the word from a combination of a personal name and certain words in Persian. He also submitted evidence of three other Iranian trademark registrations that incorporate the word and which are owned by other companies. In its decision, the panel acknowledged that “the software product that it promotes is unrelated to the Complainant’s car rental services” but it dismissed the third party marks as largely irrelevant, it noted that the Respondent provided no independent evidence of its software business (such as a license), and it found that the explanation of how the domain was conceived to be “contrived”. Surprisingly, the panel pointed to the fame of the Complainant’s brand and said that “The Panel is not aware of any other meaning of the disputed domain name besides a reference to the Complainant and its services.” Perhaps the panel, based in Australia, does not “Remember The Alamo” in the way that many others do. In the end, he concluded that “it appears more likely that the Respondent’s website was set up to provide a pretext for claiming rights or legitimate interests in respect of the disputed domain name in this proceeding.” Perhaps the Respondent here did itself no favors with its origin story and should have, instead, noted the geographically descriptive nature of the word or found more businesses, worldwide, that use the word as a brand for things unrelated to rental cars. In any event, the fame of the Complainant’s brand seems to have clouded the issue.
Contrast the above with the second case in which the word SONATA is used as a trademark by the Complainant, an IT services provider based in India. The Respondent, a domain name investor, registered sonata.ai and resolved it to a “for sale” page. The Complainant pointed out that the Respondent has been the subject of three prior UDRP cases and, in one, it was found to have acted in bad faith. The Complainant also claims that its mark is well-known and that the Respondent had an obligation to do a trademark screening search before registering new domain names. For its part, the Respondent pointed out that the word “sonata” has a generic meaning as a musical term and that it only first heard of the Complainant upon receipt of the Complaint. The panel accepted these defenses and noted that the Complainant’s evidence was not sufficient to show that the mark is well-known outside of India, and in particular, not in the United States where the Respondent is based. It denied the claim finding no evidence that the domain name targeted the Complainant’s trademark.
Perhaps in this latter case the Respondent had better counsel and submitted evidence to highlight the other uses of the word “sonata” apart from referring to the Complainant’s brand which had a more geographically limited reputation than the ALAMO car rental brand. In any event, these cases highlight how the fame of a brand can influence the outcome of a case. They also show the importance of presenting strong arguments and the right evidence in UDRP cases for both complainants and respondents. Something best done by counsel experienced in the many nuances of the Policy.