Thursday , June 1 2023

A warning to companies that license their trademarks

UDRP is not the place to settle disputes with former trademark licensees and domains.

The word Trademarks on a dark blue green background with a stylized R symbol

Here’s a case I often see: a company licenses a trademark to another company. Perhaps it’s a distributor or regional manufacturing and sales company. The licensee registers a domain name related to the brand. The relationship ends but the licensee still is listed as the registrant of a domain name related to the mark.

The most recent case involves Stall & Dean Manufacturing Co., Inc., an old-school brand for team sports apparel. It licensed its trademark to a company called EFF, but that relationship has apparently ended.

Stall & Dean filed a UDRP to try to get the domain, which is registered by the former licensee.

The panel denied the claim because it determined that the domain was originally registered in good faith as part of the licensing agreement. So even if EFF is now using the domain in bad faith (something the panel didn’t decide), it wasn’t registered in bad faith. In order to win a UDRP, a Complainant must show the domain was both registered and used in bad faith.

I see this type of UDRP more often than you’d think. I suspect, or at least hope, that licensing agreements address domain name registrations. If the agreement addresses domain names and the licensee continues to use the domain upon termination, it’s a matter that needs to be taken up in the courts rather than UDRP.

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About Andrew Allemann

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