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ManhattanCenter.com UDRP Decision and it’s good news for Domainers.
Does owning a trademark for a phrase, regardless of its specificity, entitle the trademark holder to that domain name?
This is the questions being asked currently on Business2Community.com in regards to the domain name UDRP Case for ManhattanCenter.com
The domain name ManhattanCenter.com was registered back in 2004 by its current owner James Lawson who currently owns 1200+ domain names, ManhattanCenter.net is owned by Domain Investment Company and reseller HugeDomains.com who owns over 300,000+ Domain names and picked the domain name up in April 2012 – The domain ManhattanCenter.org is owned by New York Center for Child Development and doesn’t appear to resolve at present.
What are your thoughts?
It is good news for the domain industry as the domain owner has won the UDRP and kept the domain – This was the correct decision in my opinion.
The full story is below.
Does owning a trademark for a phrase, regardless of its specificity, entitle the trademark holder to that domain name? That is, essentially, the question that Manhattan Center Studios posed when it filed a UDRP complaint against James Lawson with the National Arbitration Forum (NAF) over the domain name ManhattanCenter.com.
The Complainant is a well-known New York City performance venue called the Manhattan Center, a building that houses the famed Hammerstein Ballroom. The Complainant owns a registered trademark for MANHATTAN CENTER HAMMERSTEIN BALLROOM THE GRAND BALLROOM as well as common law marks for THE MANHATTAN CENTER and MANHATTAN CENTER. In its filing, the Complainant alleges that the Respondent’s mark is identical to the common law mark and makes up a dominant portion of the official mark.
The Respondent registered the disputed domain name in 2004 after seeing it on a drop-list of soon-to-expire domains. He explains that he purchased it because he saw value in a name that referenced the geographic center of Manhattan, not because he knew about the Complainant’s facility. He also argues that the term MANHATTAN CENTER is geographically generic and cannot be claimed by the Complainant, saying that if the Complainant could have obtained an official trademark for the term, it would have.
Ultimately, the Panelist ruled in favor of the Respondent and allowed him to keep the domain name. He determined that the Respondent had not registered the domain name in bad faith, as the Complainant’s trademark application was merely pending at the time of registration, and the Respondent was not using it to promote goods or services that were detrimental to the Complainant’s business.
This decision should be a lesson to all brand owners looking to file a UDRP complaint on a domain name made up of a generic term or phrase. If the Respondent is abusing the domain name, selling goods or services that explicitly reference a Complainant’s business, there might be a case, but in a situation like this one, where the only evidence is the name, it is harder to prove. It is best to consult with experienced UDRP lawyers before any filing, but it is especially crucial in cases including generic terms.