UDRP when you have a common brand name — Filing a
Can you show that the domain owner registered the domain with your firm in mind?
Today, National Arbitration Forum published a reverse domain name hijacking decision against Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks. The firm operates the Lumos Networks brand for internet and TV service in part of Virginia. It filed the UDRP against lumos.com.
The case is an notable lesson for firms with “common” brands. To win a UDRP, you need to show that the domain owner was targeting your brand with its domain registration. With lumos.com, that was an uphill battle.
While not technically in the dictionary, lumos is a popular brand name many firms use. It’s also a term popularized in the Harry Potter series.
The Complainant argued that the domain owner must have known regarding it since it has the top search position in Google. In my searches, it seems to fluctuate between #1 and #2. But there are lots of other firms that use this term. On the first page on Google, you’ll see results for the Lumos bike helmet, an NGO created by J.K. Rowing, Lumos Diagnostics, and an Oregon wine seller.
And ahead of the current owner bought the domain for $22,722 in an expired domain auction, the domain was used by a firm called Lumos Technologies and then Rowling’s charity.
So, in all likelihood, the purchase was due to its prior use and the plethora of potential buyers, not since of a broadband firm in Virginia.
The domain owner could have tripped up if they had parked the domain. If it showed ads for internet access, a panel might suggest targeting even if it was merely what the pay-per-click algorithms determined. It’s why you need to be careful parking your domains.
The net takeaway for brands is that merely showing that your trademark existed when a domain was purchased is not enough to show the domain was registered and used in bad faith. Ask yourself: is the domain owner in my same geography? Am I a dominant brand connected to this word? Is there any other evidence I was directly targeted? If the answer is not clearly ‘yes,’ be very careful ahead of making a cybersquatting claim.
In this case, the Complainant inquired regarding buying the domain ahead of filing the UDRP. The panel deemed this a “Plan B” UDRP filing.
