Mass media giant The Walt Disney Company has failed to transfer three domains incorporating the word ‘aladdin’ in a cybersquatting dispute.
Subsidiaries Disney and Marvel Characters filed a joint Uniform Domain Name Dispute Resolution (UDRP) complaint over 13 domains. The addresses used the terms ‘disney’, ‘aladdin’, ‘mickeymouse’, ‘spider-man’ and ‘tangled’, which Disney said infringed its US trademarks.
A National Arbitration Forum (NAF) panellist transferred the 10 domains containing the non-‘aladdin’ terms but said the remaining addresses – aladdinonbroadway.com, aladdinthemusical.com and aladdinmusical.com – did not infringe Disney’s US mark for ‘Aladdin’s Magic Carpet Ride’.
In 1992 Disney released Aladdin, a film about a boy of the same name. In this UDRP case, published on Saturday, the company relied on its common law US mark for the name. It filed additional evidence to show that it has a French design mark for ‘Aladdin’, dated 1993.
The respondent in the case, who said he has been active in the entertainment business for many years, pointed out that there are 219 US trademark registrations containing the word ‘Aladdin’.
After rejecting the French mark, Sir Ian Barker QC said ‘Aladdin’ is a generic term that refers to a story about a Middle-eastern boy, and that the complainant’s evidence for a common law mark came “nowhere near the standard required for proof of a common-law trademark”.
Barker ruled that the remaining 10 domains were clearly confusingly similar to registered marks, that the respondent had no legitimate rights in them and that they were registered and used in bad faith, particularly as many of the sites generate click-through revenue by linking to other sites.
David Miranda, partner at Heslin Rothenberg Farley & Mesiti PC in New York said the decision was very thorough.
“Trademarks are not a ‘one size fits all’ [form of protection] and it’s complicated when dealing with a dozen or so [domains incorporating disputed marks]. The decision was efficient, considering the number of issues that needed resolving.”
He said complainants typically present a stronger case when relying on a registered mark – as there is a clear presumption of ownership – but common law marks can lead to successful domain proceedings.
Complainants need to be more thorough when relying on common law marks, he added.
Two of the domains that the respondent has kept resolve to blank pages, while the other points to a site that provides links to other sites.
The NAF is the second leading UDRP provider and was recently picked as the first arbitrator to manage the Uniform Rapid Suspension System, a rights-protection mechanism under the new generic top-level domain programme.
This article was first published on 25 February 2013 in World IP Review
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