UDRP

The City of Parramatta Council NSW (“Parramatta Council”), recently launched an unsuccessful UDRP case against the Registrant of domain name parramatta.com, initially registered in 2004 and last acquired in 2012. (WIPO, D2021-0773, City of Parramatta Council v. Hayden Quarman, May 12, 2021).

Parramatta Council submitted several marks incorporating the name “Parramatta,” including one from 1983.  However, the certificate itself bore the inscription:

“Registration of this trade mark shall give no right to the exclusive use of the geographical name PARRAMATTA NSW”

The panelist also noted that Parramatta Council had not demonstrated that its trademark “Parramatta” had acquired a secondary meaning. As a result, the request was rejected.

The success of a UDRP case depends on the complainant’s ability to demonstrate

i) that he is the owner of a trademark,

ii) that the disputed domain name is identical or similar to this trademark,

iii) that the defendant has no right or legitimate interest in the said domain name,

iv) that they registered the domain name in bad faith and

v) that they also uses it in bad faith.

Given the weakness of the Trademark submitted, the panelist didn’t consider the other elements.

A lesson for parties using weak trademarks to make claims of legitimate interest in domain names and the perils of UDRP against geography-based domain names.

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bandsec is a corporate domain name management and brand protection company that looks after many of Australia, New Zealand and Asia’s top publicly listed brands. We provide monitoring and enforcement services, DNS, SSL Management, domain name brokerage and dispute management and brand security consultation services.

 

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2021-11-01T22:17:28+00:00

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