Complaint Still Gets Its Funk On After 15 Years

This week we take a look at a complaint over a domain name that the complainant didn’t pursue for 15 years. The surprise? The complaint resulted in a transfer of the domain!

The Domain Name Dispute Facts

The complainant, a corporate entity holding the rights to the music and performances of the Grand Funk Railroad Band as well as trademarks for the band’s name, filed a complaint over the domain name grandfunk.com. The domain resolved to a pay-per-click site with many music-related links (including a few relating to the band) and was also listed for sale on the Network Solutions website for $50,000. The respondent hid behind a privacy service.

The Results

Since the respondent stayed hidden behind the privacy service and did not submit any response, there is no evidence that its true name is in any way related to the words “Grand” or “Funk” and so it has no legitimate interest in the domain.

On the question of laches (delay), the panelist cited the WIPO Overview 2.0 (a summary of established precedent in UDRP cases) and stated that “Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay … in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.”

In applying this principle, the panelist held that “[Grand Funk] is an unusual name and, in the Panel’s view, not one likely to have been selected at random. In other words, the Panel is satisfied that the Respondent had the Complainant’s trade mark in mind when registering the Domain Name.”

My Own Take on the UDRP Decision?

This holding should not give brand owners cause to be more relaxed about domain enforcement.  The facts of this case are very specific and may not apply in other situations where a brand owner knew or should have known about a domain that so obviously copies its trademark for such a long period of time.  Of course, all infringing domains must be assessed on how much harm they’re causing to a brand owner, but for those that are clear infringements, action should never be delayed without good cause.  Were this respondent to have filed a reply and put up a well-reasoned defense, this case could very easily have gone the other way.