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Recent Case Notes & Commentary

Tiger Woods Wins One -Loses One - but Both Raise Significant Questions

Consent to Transfer and Unregistered Trademarks

Case One [1]

Tiger Woods’ daughter Sam Alexis Woods was born on June 18, 2007 and on the same day the Respondent registered the domain name <>.The Respondent agreed in writing that the domain name should be transferred to the Complainant.

Accordingly, the Panel did this, in the interest of ‘judicial economy’, without entering into any debate on the merits of any of the issues in the case or whether the Complainant had proved the three elements in the Policy. In doing so, the Panel relied on Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., (NAF case no. FA 133625), Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., (NAF case no. FA 212653), Disney Enters., Inc. v. Morales, (NAF case no. FA 475191) and Citigroup Inc. v. Tex. Int’l Prop. Assoc. – NA NA, (NAF case noFA1210904). There are now several cases to the same effect.

It is noted that the Respondent did not enter into debate on the issues. If a Respondent does so, the parties may find that the Panel is not prepared to make the order for transfer simpliciter, but will continue on with the case and adjudicate on the issues for, if the issues have been raised, they should be resolved. On this issue, see the case note on this site on a decision of mine, Montes de Piedad y Caja de Ahorros de Ronda, Cádiz, Almería, Málaga y Antequera v. Rare Names, Web Reg, (WIPO case no. D2009-0292).

Case Two [2]

Tiger Woods’ son Charlie Axel Woods was born on February8, 2009.On the following day the Respondent registered the domain name <> and a few days later placed it for sale on eBay. Woods and his management company ETW Corp brought a claim to retrieve the name and relied on a registered US trademark for TIGER WOODS in the name of the company. The company said that it brought the claim on its own behalf and on behalf of Tiger and Charlie.

The case was defended and resolved solely on the basis of whether the domain name was identical or confusingly similar to any and if so what trademark. It was decided that the domain name was not identical or confusingly similar to any such trademark.

The first candidate as trademark was the registered trademark TIGER WOODS owned by the management company. The domain name was not confusingly similar to that trademark and the panelist so held.

The second trademark was a common law trademark in TIGER WOODS owned by Tiger Woods himself. But the domain name could not be said to be confusingly similar to that trademark.

Those two decisions must be correct, because clearly the ‘Woods’ of the domain name does not necessarily invoke the ‘Woods’ of the trademarks.

The last candidate for a possible trademark is CHARLIE AXEL WOODS. If there were such a trademark, the domain name would be identical to the trademark. But was it a trademark?

The Panel discussed, as many other cases have discussed, the issue of whether personal names are protected for the purposes of the UDRP and the now generally accepted rule that they are protected, but only if there is evidence of the name having been “…used in connection with the commercial offering of goods or services or that the personal name in question has acquired secondary meaning as the source of such goods or services.”

In the present case, there was only a bald assertion that either of those tests had been met, but no evidence of that fact. Indeed, the young age of the child would have made it impossible to establish it.

The case therefore faltered at the first hurdle, as it could not be shown that the domain name was identical or confusingly similar to any trademark that either of the Complainants could prove.

There is an understandable tone of lament in the decision about the result, but the Policy itself was undoubtedly upheld. The result shows yet again that it is not sufficient for complainants to make assertions about common law trademarks and that evidence must be adduced.

[1] ETW Corp. and Eldrick ‘Tiger’ Woods, for itself, Tiger Woods and his minor child, Miss Sam Alexis Woods v. Leonard Meng Lee, NAF Case, Claim Number: FA0904001256681 May 29, 2009.

[2] 1ETW Corp. and Eldrick ‘Tiger’ Woods, for itself, Tiger Woods and his minor child, Charlie Axel Woods v. Josh Whitford Claim Number: FA0905001263352 ,NAF Case, June 24, 2009


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