In a UDRP decision certain to drive brand owners crazy, IM Brands, Inc. which represents designer Isaac Mizrah lost a UDRP on domain name isaacmizrahilive.com
Its so interesting that some UDRP panels use all sort of convoluted logic to give generic domains to trademark holders,2 this panel didn’t seem to question why the domain owner would own this domain without the trademark holder in mind.
Here the domain holder did not respond to the UDRP, offered to sell the domain and the record is silent as to how the domain holder used the domain.
However if you look at the domain name, isaacmizrahilive.com, you will see a page full of pictures and products of the designer as well as adsense ads.
Here are the short list of facts and findings by the one member panel
Complainant owns the ISAACMIZRAHILIVE mark for apparel, bed linens, jewelry, watches, and accessories.
The earliest of these marks to be applied for is number 3,948,520 (ISAAC MIZRAHI LIVE words and design), applied for on July 21, 2009, under filing basis 1B (intent to use); published for opposition on November 3, 2009; and issued on April 19, 2011.
Each of the other marks was applied for in December 2009 or later.
Complainant contends that bad faith may be inferred from the facts that that the domain name is identical to a widely known trademark; that Respondent refused to transfer the domain name upon request, instead demanding payment in excess of its reasonable costs; and that it is difficult or impossible to conceive of a legitimate active use of the domain name by Respondent.
Complainant provides a copy of an email message from Respondent dated May 22, 2013, responding to an inquiry from Complainant, and stating in relevant part:
“I’ve owned the name for over 3 years now, It was not recently registered. It operates as a fansite and has attracted very loyal and active users. That being said, if you wish for me to transfer the domain, we can get it done quick and easy through escrow.com for a sum of $2,000 to cover our website expenses over the past years.”
Respondent registered the domain name on July 27, 2009. Complainant began using the corresponding mark six months later, in January 2010. The only event relating to the mark that predates the domain name is Complainant’s first trademark application, which was filed on July 21, 2009, but not published until November 3, 2009.
The Panel is tempted to speculate that the disputed domain name may well be confusingly similar to other marks owned by Complainant, including marks that predate the domain name; and that Respondent’s registration of the disputed domain name may have occurred following some sort of a public announcement of Complainant’s intent to adopt the ISAAC MIZRAHI LIVE mark in the future (as occurred in Disney Enterprises, Inc. v. Josh Agho, FA 1373551 (Nat. Arb. Forum Mar. 22, 2011) (finding bad faith based upon registration of <disneydigitalbook.com> domain name on the same day that Disney announced the launching of a website at <disneydigitalbooks.com>).
Such speculation is inappropriate here, however, as it would be based upon information not before the Panel.
Based upon the present record, the Panel concludes that Complainant has failed to prove that the disputed domain name was registered in bad faith.
Brad Mugford says
“Its so interesting that some UDRP panels use all sort of convoluted logic to give generic domains to trademark holders,2 this panel didn’t seem to question why the domain owner would own this domain without the trademark holder in mind.”
UDRP “logic” makes no sense. When a domain like IsaacMizrahiLive.com is denied, but a domain like Vanity.com is awarded there is an issue with the process obviously.
It always amazes me that people can come up with a concept and tell the whole world about it before securing the domain name. Its laughable! Here is the article in the Wall Street Journal about the show and its name
as you can see the article is dated July 24, 2009 and the name was registered by the Respondent on July 27, 2009 but the trademark was filed on July 21, 2009. Should the complainant have been awarded the domain? Absolutely. Should the complainant have just spent the 2 grand and bought the name when it was offered to them? Absolutely.
Moral of the story is register the dot com of your concept before you run your mouth to the world and at least register it the day you apply for your trademark. Duh!
NaturallyBorn.com was offered to the complainant for $2000, they instead paid a lot more money to file a UDRP – and lost.
IsaacMizrahiLive.com was offered to the complainant for $2000, they instead paid a lot more money to file a UDRP – and lost.
Are these guys so angry they are blind to costs?
Michael Berkens says
There are all types of responses to a a C & D.
Some companies do go ahead and buy domains instead of going through the fees and risk of losing a UDRP but some trademark holders feel if they pay off domainer then that will only cause those or others to register more cybersquatting type of domains