What’s Theirs Is Mine?

Steve Levy ⬥ September 3

This week’s chosen UDRP decision drives home the point that you can only file a UDRP to enforce your own registered trademarks – it’s not a tool to enforce pending trademarks and certainly not one to grab domain names from a competitor.

The Complainant, Swift Unlocks, Inc., filed a UDRP complaint against Respondent Swift Cellular King.com. Inc. d/b/a Instantunlock.com over the domain names unlockfusion.com and swiftunlock.com

The Complainant argued that they had a right to the disputed domain names because of 1) pending trademark applications and 2) the fact that the Complainant has used the domain name swiftunlocks.com (similar to the disputed domain root “swiftunlock”, with an added “s”) since 2008; it also used the domain name unlockfusion.net (similar to the disputed domain name unlockfusion.com, but with the “.net” extension) since 2011. The Respondent defended by asserting that the Complainant cannot have rights to the phrase UNLOCK FUSION mark, as this simply refers to a third parties’ trademarked product – the “fusion” cell phone – and “unlocking” services that several companies provide. In the complaint, the Respondent made the analogy that they “could not claim trademarks if he unlocked cars in a mark called ‘UNLOCK FORD.’”

The panel’s findings were short and to the point: the Complainant “does not have registered trademark rights in the disputed domain names … Complainant has failed to demonstrate valid common law rights that predate the registration of the disputed domain names.”

The fact of the matter is, if you own domains that include the brand of a third-party company (here the SWIFT and FUSION marks) you can’t stop others from using domains with that same brand unless you have express, written authority from the brand owner – which the Complainant did not.

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