'greglloydsmith.com' transferred at the second time of asking
In Greg Lloyd Smith v None, Harry Carr, World Intellectual Property Organization (WIPO) panellist Henry Olsson has ordered the transfer of the domain names 'greglloydsmith.com', 'gregglloydsmith.com' and 'greglloyd-smith.com' to an individual named Greg Lloyd Smith. Seven months earlier, a panellist at the CPR Institute for Dispute Resolution (CPR) had refused to transfer the first domain name to the complainant.
Smith initially filed a complaint with the CPR Institute for Dispute Resolution. He argued that the registrant of the domain name 'greglloydsmith.com' had infringed his rights in his personal name. The panellist dismissed the complaint because Smith had not demonstrated that the disputed domain name was identical or confusingly similar to a trademark or service mark in which he had rights. He had, therefore, failed to meet the first requirement in Article 4(a) of the Uniform Domain Name Dispute Resolution Policy (UDRP).
After receiving this unfavourable decision, Smith registered the trademark GREG LLOYD SMITH in the United Kingdom and applied for registration of the mark in the United States. In the meantime, 'greglloydsmith.com' was transferred to an alleged new owner - Harry Carr - who also registered 'gregglloydsmith.com' and 'greglloyd-smith.com'. Smith filed a WIPO trademark infringement proceeding against Carr, based on the UK registration of his trademark and the US application.
Olsson held that Smith had established trademark rights in the mark GREG LLOYD SMITH and that the disputed domain names were confusingly similar to the registered mark. Olsson also concluded that Carr had no legitimate interest in the domain name and had registered it in bad faith. Thus, Olsson ordered the transfer of the three domain names, finding that Smith had established all the UDRP's requirements for transfer.
An interesting aspect of this case is that Olsson did not mention the prior CPR decision. Under the UDRP, a complainant is required to state whether or not the parties have been involved in any prior disputes. As the registered owner of 'gregglloydsmith.com' had changed, Smith was under no obligation to advise WIPO that there had been a prior UDRP proceeding involving the domain name.
Leigh Ann Lindquist, Sughrue Mion PLLC, Washington
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