UDRP complaint failed under second element where there was no evidence Respondent intended to profit from and exploit Complainant’s trademark

In the case of Mark Overbye v. Maurice Blank, Gekko.com B.V., a WIPO Panel denied the Complainant’s efforts to have the domain name <gekko.com> transferred because the Complainant failed to sustain its burden of establishing that the Respondent had no rights or legitimate interests in the disputed domain name.

The Complainant was in the business of manufacturing boats used for water sports such as waterskiing, wake boarding and wake surfing. It owned the registered U.S. trademark (issued in 1996) for an image of a type of lizard and the word “gekko”. The Respondent registered the disputed domain name in 2001, and at some point in the past used the disputed domain name to establish a site about European travel. The Complainant alleged that the Respondent was not using the disputed domain name for a valid ongoing business, but was “sitting on the [disputed domain name] since 2001 without any connection to any business or product”.

The Panel found that the Complainant failed on the second UDRP element — no rights or legitimate interests — because there was no evidence of circumstances indicating that the Respondent’s aim in registering the disputed domain name was to profit from and exploit the Complainant’s trademark. The Panel observed that the word element of the Complainant’s mark had a broader meaning than the use the Complainant was making of it, as it referred to a type of reptile. The Panel considered that normally a respondent has a right to register and use a domain name to attract internet traffic based on the appeal of commonly used descriptive or dictionary terms, unless there is some aim to wrongfully target the complainant’s mark. In this case, the Complainant did not provide any proof indicating that Respondent’s aim in registering the disputed domain name was to profit from and exploit Complainant’s trademark.

Mark Overbye v. Maurice Blank, Gekko.com B.V., WIPO Case No. D2016-0362 (April 15, 2016).


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.