The global drug company Novartis AG just lost a UDRP on the domain name QuickDailies.com based off a trademark for the term “Dailies”.
Apparently the company beliefs its own any domain name that has the word “dailies” in it and as silly as it sounds several UDRP panels have transferred domains names to Novartis AG based on the same claim and the same trademark.
Since 2012, the company has won 5 UDRP’s on domain names including the term Dailies:
instantdailies.com
However this panelist, Douglas M. Isenberg didn’t even recoginze that Novartis AG had trademark rights to the term “Dailies”
“””In support of its claim that it “has rights” (as required by paragraph 4(a)(i) of the Policy) in the DAILIES trademark, Complainant cites only U.S. Reg. No. 2,167,845, for which it has provided a copy of the certificate of registration as an annex to the Complaint. ”
“However, the certificate identifies the owner of the registration as “CIBA-GEIGY CORPORATION” – not Complainant. ”
“Further, the Panel has independently reviewed the online records of the U.S. Patent and Trademark Office,[1] which appear to indicate that the registration has been assigned to NOVARTIS CORPORATION – yet another entity that (despite the obvious similarity in name) is not Complainant”.
“Accordingly, while Complainant may have rights in the DAILIES trademark (perhaps as the result of other assignments; the relationship among the variously identified entities; the existence of other registrations; or activities giving rise to common law rights), there is nothing in the record to support this, and the Panel is not inclined to go to extraordinary lengths to ascertain a basic factual matter that should have been made clear in the Complaint”.”””
That quite interesting since as we said two other panelists ordered domains to be transferred to the same complainant based off the same trademark.
Here is what another panel said about the trademark of Novartis in thedailies.com UDRP decision:
“”Complainant owns a trademark registration for its DAILIES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,167,845 registered June 23, 1998). Complainant first used its trademark in commerce on February 2, 1998.””
That UDRP decision was handed down by panelist Paul M. DeCicco.
So this is a good example of the difference between panelists and why I have started to use the term a “lazy panelist” to describe those who simply take the complainant’s word as gospel without considering whether the allegations of the complainant are accurate.
another good decision from a one member panel