Who's Your Daddy?

[dtobias]

In an interesting UDRP case, GoDaddy won over the registrant of several domains using variants on "UpDaddy". An interesting aspect is that the registrar for those domains was GoDaddy itself. This point was raised by the respondent, who claimed that the UDRP lacked jurisdiction because the registrar/registrant agreement said that it was to be used for disputes with "any party other than us (the registrar)", and this dispute was actually with the registrar, so the policy didn't apply. The panel ruled that, since the dispute was regarding GoDaddy's trademarks rather than their role as a registrar, the policy did apply.

Another interesting point is whether GoDaddy really has trademark rights over other names with the generic word "daddy" in them. In this case, the domains in question were being used to offer domain registration services (in fact, those of GoDaddy itself, sold through an affiliate reseller program), so the ruling was based on "Daddy" being specifically associated with GoDaddy in the domain business.

It's also interesting that GoDaddy went the UDRP route, since their registration agreement actually gives them broad power to cancel offending registrations on their own initiative (a matter often raised as a concern by potential registrants). The complaint in fact notes that they first notified the registrants that they would cancel the registration under GoDaddy policy, but apparently they decided afterward to go through more formal channels and file a UDRP; maybe they were concerned that their unilaterally cancelling registrations without an outside arbitrator reviewing it might not hold up in court.

 

[Dave Zan]

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.
Respondent has not attempted to rebut this presumption.

I didn't even know this was necessary for such a circumstance. Apparently
it does matter in this case.

A new thing learned.

Another new thing I also learned in this case is that it "set a limit" on the use
of disclaimers and/or disclosures to make itself distinct from the Complainant
in this case.

I wonder if the tide could've turned if the following occurred:

1. If the Respondent had trademarks with the words "up daddy" or even
just "up dad".

2. If the Respondent asked for 2 more panelists to "join in".

Unfortunately we'll never know.

maybe they were concerned that their unilaterally cancelling registrations without an outside arbitrator reviewing it might not hold up in court.

To broadcast their message that they intend to uphold their trademarks,
perhaps?

 

[Kevin]

I have been following the UpDaddy.com situation for several months, and when I first saw the domain I wondered why he chose a name that was unquestionably confusingly similar to GoDaddy.com.

The error in naming the business was bad enough, but then the owner of UpDaddy.com commenced on a very expensive Google AdWords campaign. UpDaddy.com was often at the top of various search terms that included the word “domains.” The cost-per-click rate must have been prohibitive; but clearly he was willing to put out a large investment for customer acquisition, hoping that it would pay off in the long run.

I had several conversations with some contacts at Wild West Domains about UpDaddy.com, and they confirmed that there was a serious problem. And although they could not tell me much about what was transpiring because of the trademark issue, it was confirmed that the amount of money spent by UpDaddy.com on advertising via AdWords was “unbelievably high.”

The ironic aspect of the UDRP case is that UpDaddy.com is a Wild West Domains (GoDaddy) reseller.

This case demonstrates quite clearly the importance of clearing trademark issues before commencing with business operations.

And that starts with this: COMMON SENSE

He did not need an attorney to tell him that UpDaddy.com is confusingly similar to GoDaddy.com – particularly when they are both in the same business: registering domains and selling related services.

 

[Dave Zan]

And that starts with this: COMMON SENSE

Agreed. But even that isn't so common. :dead:

 

[Theo]

So now we know the real reason why Puff Daddy changed his name to P. Diddy. :-D

 

[Dave Zan]

So now we know the real reason why Puff Daddy changed his name to P. Diddy. :-D

But Sean Combs could've used his millions (?) to defend it...if he'll bother to. :-D

 

[ForumDomains]

But Sean Combs could've used his millions (?) to defend it...if he'll bother to. :-D

The same situation is about to unfold with Wild Best Domains which is currently owned by VoxDomains.com Registrar. They are Wild West Domains resellers too. I have tried to purchase that name from them just for the sport but they are too expensive at moment.

 

[GeorgeK]

It makes sense that GoDaddy would want to go after confusingly similar names, in advance of the Superbowl ad.

 

[Steen]

Uh oh, now I am afraid for a Server _ _ _ _ _ domain I own :\

 

[mkx]

Interesting case