UDRP: Indian company loses TripMaker.com

Ceres

New Member
I came across an interesting UDRP case that involves the domain TripMaker.com, which was registered by an India-based company in 2008.

On 20 February 2009, the Indian company received a cease and desist letter from the well-known company Rand McNally, which owns a US trademark for TRIPMAKER (priority date 20 October 1995). BTW, I can't see that Rand McNally own 'TripMaker' in any cctld, do you? It seems to use the domain randmcnally.com.

The trademark owner was unable to settle the dispute, and therefore commenced a UDRP case a few weeks later.

The respondent argued that it owned a legitimate business called "Trip Maker Tours & Travel." However, most of the respondent's supporting documents were either undated or showed dates that were after April 1, 2009 (ie after date of cease and desist letter). The panel stated that the one piece of evidence that did have a 2007 date:

does not reflect any trading with third parties as implied in "a bona fide offering of goods or services" under the Policy.
Therefore, the panel was of the view that the respondent had no legitimate interests in the domain name.

The respondent argued that it started a live website during the first week of March 2009. However, the panel pointed out that this was after the respondent had received the cease and desist letter dated 20 February 2009. Prior to that date, TripMaker.com was a parked domain.

The respondent was ordered to transfer the domain to the trademark owner.

The fact that the respondent changed tactics as soon as it received the cease and desist letter likely did not help its case?

I confess I hadn't heard of TripMaker before. However, when I checked "tripmaker" and related keywords on the Google Keyword Tool, it indicates that most people are looking for the Rand McNally and its TripMaker software.
 

msdomains

New Member
Ceres,

As always thanks for bringing this news to our attention.

I am interested to find out:
1. How can the "US trademark for TRIPMAKER" affect somebody outside US using that domain?

2. Are domains like TRIP-MAKER.com? or TRIPMAKER.IN also violation of the trademark?

3. How is a domainer to know all the businesses and trademarks before regging a domain? Example: Microsoft.com is obviously pretty established so if I were to reg microsoft.in, it probably very easy to determine that it is a violation. However what if an IT company in South Africa has a trademark in South Africa about for an software called "TRIPMAKER"? Should I not reg that?

Cheers.
 

Ceres

New Member
1. How can the "US trademark for TRIPMAKER" affect somebody outside US using that domain?

If the trademark is only used and marketed within the US, then there should be no problem your using the same term in another country. For example, a trademark for TRIPMAKER can be registered by different owners in various countries worldwide.

However (and it's a very important however!), if the US trademark for TRIPMAKER is used or has a presence in another country - let's say India - then the US trademark owner can acquire certain common law trademarks rights in India (even if they don't have an official trademark registered at the Indian Trademarks Office). This thread on infringment issues might be of interest.

2. Are domains like TRIP-MAKER.com? or TRIPMAKER.IN also violation of the trademark?

One of the tests is whether the domain is identical or confusingly similar to the trademark. It is well-established that the addition of a suffix such as ".in" or ".com" is not relevant when comparing the domain to the mark. In other words, TripMaker.in will be viewed as TripMaker, and TripMaker.com will be viewed as TripMaker.

I'm not sure about hyphens. However, I doubt that a hyphen will have much bearing on the meaning of a domain name. Therefore, the hyphen will likely be irrelevant when comparing Trip-Maker with the trademark TripMaker.

3. How is a domainer to know all the businesses and trademarks before regging a domain? Example: Microsoft.com is obviously pretty established so if I were to reg microsoft.in, it probably very easy to determine that it is a violation. However what if an IT company in South Africa has a trademark in South Africa about for an software called "TRIPMAKER"? Should I not reg that?

See answer to (1) above. Also, before registering a domain, domainers should routinely check the relevant trademark registry, local search engines, local yellow pages, local business listings etc.

The above is just my own opinion (I'm not a lawyer). Someone please correct me if I'm wrong.
 
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