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ADORAIntellectual Property

Domain disputes

UDRP decisions

Every UDRP argument rests on published decisions. These are the ones we cite most, summarised, with a link to each full text at WIPO.

  • World Wrestling Federation Entertainment, Inc. v. Michael Bosman
    Case
    WIPO D1999-0001, 1999
    Domain
    worldwrestlingfederation.com
    Outcome
    Transferred

    The first decision ever issued under the UDRP. Offering to sell a domain to the trademark owner for more than the registrant's documented costs is itself bad faith use under policy paragraph 4(b)(i).

  • Telstra Corporation Limited v. Nuclear Marshmallows
    Case
    WIPO D2000-0003, 2000
    Domain
    telstra.org
    Outcome
    Transferred

    A domain name that hosts nothing at all can still be used in bad faith, where the mark is well known, the registrant concealed their identity and no good faith use is plausible. This is the origin of the passive holding doctrine.

  • Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc.
    Case
    WIPO D2000-0505, 2000
    Domain
    barcelona.com
    Outcome
    Transferred

    The panel ordered transfer of a geographic name to the city authority.

    The transfer was later reversed by the United States Court of Appeals for the Fourth Circuit. A useful reminder that a UDRP decision is not final and can be displaced by a court.

  • Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale
    Case
    WIPO D2000-0662, 2000
    Domain
    wal-martsucks.com
    Outcome
    Transferred

    A domain combining a trademark with 'sucks' is still confusingly similar under the policy, because the test asks whether the domain includes the mark, not whether it would confuse anyone. The panel ordered transfer based on the registrant's bad faith attempt to sell the domain, not on any real risk of confusion.

  • Chanel, Inc. v. Estco Technology Group
    Case
    WIPO D2000-0413, 2000
    Domain
    chanelstore.com, chanelfashion.com
    Outcome
    Transferred

    Adding generic words like 'store' or 'fashion' to a famous mark does not remove the confusing similarity. The panel distinguished between writing about a brand and using its name as the domain itself.

  • Lockheed Martin Corporation v. Dan Parisi
    Case
    WIPO D2000-1015, 2000
    Domain
    lockheedsucks.com, lockheedmartinsucks.com
    Outcome
    Complaint denied

    A majority of the panel held that adding 'sucks' to a mark can remove confusing similarity entirely, once the added word signals the site is not affiliated with the owner, and denied the complaint. One panelist dissented. Frequently cited against Wal-Mart Stores v. MacLeod, D2000-0662, on the same question with the opposite result.

  • Nokia Corporation v. Nokiagirls.com a.k.a IBCC
    Case
    WIPO D2000-0102, 2000
    Domain
    nokiagirls.com
    Outcome
    Cancelled

    Adding a generic word to a globally famous mark does not remove the likelihood of confusion. The respondent used the site to sell advertising space, which the panel treated as free riding on Nokia's goodwill.

  • Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic
    Case
    WIPO D2000-1698, 2000
    Domain
    guiness.com
    Outcome
    Transferred

    A domain one letter short of the mark is confusingly similar, and a disclaimer does not cure the bad faith, because a visitor has already been diverted by the time they read it.

  • Julia Fiona Roberts v. Russell Boyd
    Case
    WIPO D2000-0210, 2000
    Domain
    juliaroberts.com
    Outcome
    Transferred

    The UDRP does not require a registered trademark. Someone with enough public recognition can hold common law rights in their own name, sufficient to bring a complaint over a domain using it.

  • Gordon Sumner, p/k/a Sting v. Michael Urvan
    Case
    WIPO D2000-0596, 2000
    Domain
    sting.com
    Outcome
    Complaint denied

    STING was too common an English word to give the complainant exclusive rights against a respondent who had used it as an online handle. The panel also found the alleged $25,000 sale demand unproven, calling the evidence merely consistent with bad faith rather than proof of it.

  • Smart Design LLC v. Carolyn Hughes
    Case
    WIPO D2000-0993, 2000
    Domain
    smartdesign.com
    Outcome
    Complaint denied

    The panel dismissed the complaint and found reverse domain name hijacking, calling it 'a clear abuse of the Policy designed to deprive the Respondent of her domain name.' The respondent had used the domain for a consulting business before the complaint was filed.

  • Bridgestone Firestone, Inc. v. Jack Myers
    Case
    WIPO D2000-0190, 2000
    Domain
    bridgestone-firestone.net
    Outcome
    Complaint denied

    A critic does not have to add a word like 'sucks' to a domain to signal a criticism site. Disclaimers and the choice of a different extension from the trademark owner's were enough to establish a legitimate interest.

  • Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com"
    Case
    WIPO D2000-0847, 2000
    Domain
    madonna.com
    Outcome
    Transferred

    A disclaimer does not fix a domain registered in bad faith. The panel found no plausible reason for choosing the name Madonna other than to trade on the performer's fame.

  • Encyclopaedia Britannica, Inc. v. John Zuccarini, The Cupcake Patrol
    Case
    WIPO D2000-0330, 2000
    Domain
    encyclopediabrittanica.com, brtannica.com, bitannica.com, britannca.com
    Outcome
    Transferred

    A documented history of registering misspellings of well known marks, plus a prior injunction for the same conduct, is treated as clear evidence of bad faith rather than coincidence.

  • Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico
    Case
    WIPO D2000-0477, 2000
    Domain
    walmartcanadasucks.com, wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com, walmartpuertoricosucks.com
    Outcome
    Transferred

    The respondent registered five domains within days of losing an earlier Wal-Mart dispute, then demanded payment for 'domain name consultant' services. The panel called it a blatant abuse of the registration process.

  • Do The Hustle, LLC v. Tropic Web
    Case
    WIPO D2000-0624, 2000
    Domain
    pollyester.com, pollyesters.com
    Outcome
    Complaint denied

    The panel found the domains confusingly similar but denied the complaint anyway, because the complainant could not prove bad faith. Dictionary-adjacent misspellings without any offer to sell were not enough.

  • Oki Data Americas, Inc. v. ASD, Inc.
    Case
    WIPO D2001-0903, 2001
    Domain
    okidataparts.com
    Outcome
    Complaint denied

    Sets the conditions under which a reseller has a legitimate interest in a domain containing the manufacturer's mark: it actually sells the goods, the site sells only those goods, it accurately discloses the relationship, and it does not corner the domain market. The complaint was denied.

  • Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club
    Case
    WIPO D2000-1532, 2001
    Domain
    brucespringsteen.com
    Outcome
    Complaint denied

    The domain was identical to the complainant's unregistered mark, but the registrant showed some rights or legitimate interests and bad faith registration and use was not made out. The complaint failed on the second and third elements.

  • Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc.
    Case
    WIPO D2002-0774, 2002
    Domain
    milwaukeetool.com
    Outcome
    Complaint denied

    An authorized distributor who registers the manufacturer's mark in a domain, in good faith and before being told to stop, has a legitimate interest in it. The respondent sold Milwaukee's tools alongside other brands, matching Milwaukee's usual distribution model.

  • Croatia Airlines d.d. v. Modern Empire Internet Ltd.
    Case
    WIPO D2003-0455, 2003
    Domain
    croatiaairlines.com
    Outcome
    Transferred

    Frequently cited on how a complainant makes out a prima facie case under the second element, after which the burden shifts to the registrant.

Summaries are ours. The decisions themselves are the authority, and each page links to the full text published by the WIPO Arbitration and Mediation Center.

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