24

Feb '24

Trader Joe's loses cybersquatting complaint against "Trader Joe" – Domain Name Wire

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Domain Name Industry News
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Company waited 25 years to file cybersquatting allegations.
Trader Joe's logo written in red font
Grocery store chain Trader Joe’s has lost a cybersquatting claim it filed against the domain name TraderJoe.com. The business uses the domain name TraderJoes.com.
Trader Joe’s filed the dispute under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the World Intellectual Property Organization (WIPO).
The domain name owner said he registered the domain as a site about financial trading for the “average Joe.” He put some content related to financial trading on the domain.
While you might question that justification, a critical factor in the dispute is that the domain registrant registered the domain way back in 1998. It took Trader Joe’s 25 years to make a cybersquatting claim.
Although the concept of laches does not strictly apply to UDRP, it certainly gives pause when a company waits that long to file a dispute against a domain name so closely related to its own.
WIPO panelist Robert A. Badgley said it’s reasonable to question the domain owner’s motives in registering the domain name, but UDRP is designed to handle clear-cut cases of cybersquatting, and this case was not so clear-cut.
A big factor was the 25-year delay. Badgley wrote (pdf):
Sixth, and above all, Complainant initiated this proceeding 25 years after Respondent registered the Domain Name. Given the similarity of the Domain Name and Complainant’s trademark, and the fact that the Domain Name has a gTLD “.com” – the most coveted of gTLDs – Complainant’s inaction vis-à-vis this Domain Name for 25 years raises questions. Complainant does not state when it first became aware of the Domain Name, and does not explain why it did not send a cease-and-desist letter to Respondent after learning that the Domain Name had been registered and was being used for 25 years. Although the doctrine of laches is generally not accepted as a viable defense under the UDRP, an extraordinary lapse of time (here, 25 years) may reflect the merits of a Complainant’s case.
Badgley determined that Trader Joe’s failed to show that the domain was registered and used in bad faith.
The domain owner asked Badgley to find Trader Joe’s guilty of reverse domain name hijacking. One of the reasons is that Trader Joe’s put into evidence a 1997 screenshot of the website referring to the grocery chain, which would have been created by a prior owner of the domain because the current owner registered the domain in 1998. Badgley declined, noting that Trader Joe’s didn’t say that the current owner was responsible for the earlier site and might have been trying to show that its brand was famous at the time.
O’Melveny & Myers, LLP represented Trader Joe’s, and the domain registrant was not represented by counsel.
Categories: Policy & Law
Andrew Allemann has been registering domains for over 25 years and publishing Domain Name Wire since 2005. He has been quoted about his expertise in domain names by The Wall Street Journal, New York Times, and NPR. Connect with Andrew: LinkedInTwitter/XFacebook
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Steve says

Bravo for the domain owner. However, expect a lawsuit to get TraderJoe in 3 . . . 2 . . .
Domain Name Wire is a trade publication for the domain name industry covering topics relevant to domain investors, brand owners, policy makers, domain registrars and registries, and more. Founded in 2005, Domain Name Wire has been cited by Wall Street Journal, New York Times, NPR, and Washington PostRead More About DNW
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Joker
Joker

Joker has been buying and selling domains since the late 90's. He has worked with many portfolios and investors over the past decade as well.

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