Barcelona Blues

Barcelona – synonymous with the work of Antoni Gaudi, tapas, football (or soccer as we Americans call it), and the occasional UDRP case, such as the recent complaint filed by Spanish company Social Point, S.L. with the World Intellectual Property Organization (WIPO) against “3745854 Domain Manager / Moniker Online Services, LLC” over the domain name (you guessed it) socialpoint.com.

This case caught my eye because the failure to recover the domain name must surely have been a blow to the Complainant, a developer of social games that can be played via Facebook or downloaded as iOS and Android apps. While the domain, an exact match to the Complainant’s trademark registration for SOCIAL POINT, should have been a slam dunk, the UDRP panel in this case found that the Complainant was only able to prove one of the three UDRP requirements.

The Panel agreed that the domain name was confusingly similar to the Complainant’s trademark, but did not agree that the Respondent had no rights or legitimate interests in the domain name. The panelist cited three previous cases to remind the Complainant that the generic quality of a domain name and the reselling of domain names or using them for paid links can be legitimate in certain cases.

• Mobile Communication Service, Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (Dictionary term used in its generic sense)
• Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (Reselling generic domains is legit where no trademark or competing business is referenced)
• Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master, WIPO Case No. D2009-1276 (Where there’s no indication of the trademark or it products/services, using dictionary terms for advertising is permitted)

In addition, the Panel says the Complainant conceded that the Respondent did not register the disputed domain name in bad faith in 2001, several years before the Complainant company was established. Luckily for complainant’s counsel this did not lead the Panel to find the Complainant guilty of reverse domain name hijacking.

While it may be tempting to use the UDRP to obtain ownership of a domain name that could be valuable to your company, it’s important to remember the rules of the UDRP and the precedents established in previous cases, as well as the rights given to domain name registrants who may not always be guilty of cybersquatting. Complainants may not be so lucky and could find the tables flipped and themselves in the role of villain, not victim.