Decisions: The Wonderful World of UDRP

Disney filed a UDRP complaint with the National Arbitration Forum (NAF) against Greg Beinstock over 13 domain names related to a number of its titles, including Mickey Mouse, Tangled, and Aladdin. The proceedings were mostly standard for a complaint against an alleged squatter using marks for PPC sites, save for a notable exception.

It turns out that, while Disney owns the key marks for the primary terms in the majority of the disputed domain names, the most basic Aladdin mark it owns is for ALADDIN’S MAGIC CARPET RIDE and a French trademark for ALADDIN. The disputed Aladdin domain names featured no mention of the ride but rather referenced an Aladdin musical. In January, Disney announced plans to bring Aladdin to Broadway, but it clearly has not yet obtained any trademarks related to the show.

The Respondent, probably sensing that the other domain names were surefire transfers to the Complainant, singled out the Aladdin domain names in his filing, stating that they are not identical or confusingly similar to Disney’s mark and pointing out the 219 U.S. trademark applications containing the word Aladdin. He also states that he had been trying to create a stage version of Aladdin prior to Disney’s announcement, although he provides no facts to back this claim up. In his decision, the Panelist explains that while all of the other domain names are sufficiently similar to the Complainant’s marks, the Aladdin ones are not, and he orders them to remain with the Respondent.

Panelists are required to examine each domain in a complaint individually and some are not willing to transfer certain domains even if others at issue are clearly cybersquatted.  As such, this case should be a lesson to all brand owners that, regardless of your company’s size or influence, pre-existing trademark rights are essential in UDRP proceedings.  Proof of rights to important marks must be fully prepared before considering a UDRP complaint.

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