A recent UDRP case came to my attention over the domain name 14oz.com. The complaint, which was denied, was filed by BREAD & Butter GmbH & Co. (complainant) against Paul E. Grindle (respondent) via the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center.

The complainant in this case is an established German business operating under the brand “14oz” with a focus on the design, production, and retail of high quality apparel. Formerly known as Fourteen Ounce GmbH, the complainant changed its name in 2007, yet continued to operate a website at www.14oz.net and still owns the 14oz registered mark.

The respondent failed to file a formal reply to the complaint, which is not unusual in UDRP practice. What really caught my eye, though, were the reasons behind the Panel’s decision to deny the complaint.

The complainant probably thought that it had a good chance of recovering the domain name. Unfortunately, as stated in the “Discussion and Findings” section of the opinion, there were a number of reasons that the Panel found no bad faith, including the fact that 1) the domain name refers to a generic term relating to measurement; 2) the complainant’s brand was only well-known in Berlin, Germany while the respondent is based in the US (this is less of a problem with world-famous brands); and 3) the website content at the domain name showed nothing that was related to the complainant’s line of business.

In addition, the Panel also brought up the issue of laches, a topic that I am very familiar with and on which I have written before here and here. The problem, as the Panel points out, is that the domain name in question was registered 13 years before the complainant got around to filing a complaint with no explanation from the complainant for the delay.

What it all comes down to is that the complainant was simply unable to show that the respondent had registered the domain name in a bad faith attempt to infringe on the 14oz trademark. It should also serve as a gentle reminder to brand and trademark owners to stay on top of their domain name strategy so that time will be on their side.

Steve Levy

Steve Levy

Senior Advisor at FairWinds Partners
It can be difficult tackling domain name and social media infringement without the right expertise. Steve covers UDRP cases, URS cases, and all other acronyms and topics related to cybersquatting and usersquatting.
Steve Levy
The (Bread and) Butter Battle Book

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