By Steve Levy
In a January 4th entry, we mentioned a UDRP claim against the domain name mar-a-lago.com that was denied based on a law firm’s failure to submit critical evidence of prior trademark rights. There’s now been a second decision denying transfer of the domain name maralago.com and the same law firm represented the complainant, DTTM Operations LLC, which operates the well-known resort owned by former President Donald Trump. Interestingly, this complaint was filed about one week before that of the mar-a-lago.com case but the decision issued a full two months after that in the later-filed case – likely because it involves a 3-member panel and the accompanying time it took to select panelists.
In any event, this second decision also denied a transfer of the domain name. The panel here didn’t take issue with the law firm’s evidence of trademark rights but it did discuss other flaws in the case. Of most relevance is the meaning of the phrase used in the domain name: “The wording ‘maralago ’is descriptive, being comprised of dictionary terms that translate into ‘sea to lake’ in several languages. The Complainant’s property earned its name because it is located between the Atlantic Ocean and Lake Worth” which is in the US state of Florida. The Respondent also mentioned that it is a domain name investor who registers and develops inherently valuable domain names which, in the absence of bad faith, has been found to be a legitimate business pursuit in prior UDRP cases. Finally, the Respondent noted that the maralago.com domain name was registered 26 years ago and has never been used to refer to or otherwise target the brand value of the famous Florida resort.
In denying the complaint, the three-member panel found that “the Complainant was unable to provide persuasive specific evidence to overcome the Respondent’s arguments.” It went on to point out that the UDRP is not designed to adjudicate all types of disputes that relate in any way to domain names since, unlike courtroom judges, UDRP panels don’t have the benefit of cross-examination of witnesses, disclosure of documents held by the parties. It added that “many of the Complainant’s assertions, through no fault of the Complainant, are conclusory” and are addressed to the third element of the UDRP (bad faith registration and use) rather than the second element (whether Respondent has rights or legitimate interests in the domain name). No mention was made of the effect Complainant’s delay of 26 years in bringing the case had on the issues.
The bottom line is that, despite having a famous trademark, if it also has a descriptive or generic meaning and is used in a way that doesn’t refer to the mark (imagine if applesales.com was used to sell fruit) there may not be grounds for a claim under the UDRP. In such a case, either negotiating a purchase of the desired domain name or simply choosing another domain for your business may be the only avenues open to you. Having this sort of expert and frank analysis before filing a complaint that is destined for denial can save brand owners the cost of the futile exercise in both money and reputation.