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Recent Case Notes & Commentary

The UDRP Policy is Restricted to Trademark Infringement Within the Domain Name

Jeffrey Wilens v. Domain Admin / Whois Privacy Corp. aka MICHAEL WEBER / ANNONYMOUSSPEECH

Claim Number: FA16505001676502

Disputed Domain Names: <> & <>

It is important to remember the UDRP Policy is not an all-purpose vehicle for trademark infringement claims. Rather, the Policy was implemented to allow trademark owners a means to prevent others from registering domain names in bad faith, and thereby ‘cashing-in’ on their marks.

In this case, despite successfully bringing an action against the Respondent for cybersquatting and defamation in court, the Complainant was unable to prove its registered mark was identical and/or confusingly similar to the disputed domain name.

This case provides a good example how the Policy was not intended as a silver bullet for all alleged infringements, but is restricted to instances of misappropriation of a trademark owner’s solely within a domain name.

The Prior Court Case

A licensed attorney practicing in California, the Complainant has registered trademark rights in JEFFREY WILENS and LAKESHORE LAW CENTER in connection with his business.

In 2013 the Complainant brought a successful claim against the Respondent for cybersquatting and defamation. Obviously holding a vendetta against the Complainant, the Respondent created a number of damaging websites about the Complainant, such as <>, <attorney>, <> and <>.

In total, the Federal Court ordered the transfer or cancellation of 12 websites.

The Disputed Domain Names

Complainant submitted the following domain names, which were registered in August 2015, infringed on his registered trademarks, JEFFREY WILENS and LAKESHORE LAW CENTRE;

  1. <>

  2. <>

  3. <

  4. <>

  5. <’t-get-involved-with-any-of-jeffrey-wilens-class-action-lawsuits>

The Complainant submitted the disparaging content found on the above websites was lifted word for word from the previously transferred or cancelled websites. 

The Complainant also contended the following critical websites, registered in February 2016, were done so by the Respondent;

  1. <>

  2. <>

In a brief decision, the Panel only discussed whether the above disputed domain names were Identical and/or Confusingly similar to the Complainant’s trademark.

Paragraph 4(a)(i) - Identical and/or Confusingly Similar

Determining the first element of the Policy involves the Panel deciding two questions; whether the Complainant has trademark on which it can rely, and whether the disputed domain name is identical or confusingly similar to the Complainant’s mark.

The Complainant submitted evidence proving it had registered trademark rights in both JEFFREY WILEN and LAKESHORE LAW CENTRE. Accordingly, he was successful in overcoming this initial step. It was the next hurdle upon which they Complainant failed.

Importantly, the Complainant’s trademarks were used in the post-domain path (after the backslash). However, the limitations of the Policy meant the post-domain path could not be taken into account. A Panel is limited to analysing only marks used in the domain name (before the backslash).

In light of this, the Panel concluded the Complainant did not possess trademark rights in the second-level domain name, classactionscams and cheaterscams.

Because the Complainant was unable to show the disputed domain names were identical and/or confusingly similar to their JEFFREY WILEN or LAKESHORE LAW CENTRE marks, the claim was therefore dismissed.

The Difference A Backslash Can Make

Critical to this case was the Respondent’s use of the Complainant’s trademarks in the post-domain name path, as opposed used in the domain name itself. For the non-internet savvy out there, this simply means the mark was used after the slash in the internet address.  Whether the Respondent intended this, or serendipitously came across this limitation in the Policy, was not clear.

Even if the Complainant had managed to overcome the first hurdle, it is possible the Respondent would have been successful in arguing the disputed domain names were used for ‘gripe sites’ (while an interesting topic, discussion of ‘gripe sites’ falls outside the scope of this article). 

While this ruling would be difficult for the Complainant, the limited scope within which the Panelists are confined meant no other decision could have been reached.

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