Tetris blocks vanity email site

International

The Tetris Company, holder of the TETRIS trademark, has won its Uniform Domain Name Dispute Resolution Policy (UDRP) action against the registrant of 'tetris.net'. The National Arbitration Forum's unanimous decision is the most recent to clearly hold that offering a vanity email service does not establish a legitimate interest in or use of a domain name.

Tetris is an extremely popular computer puzzle game in which the player attempts to arrange falling blocks into lines, which disappear when formed. As more lines are created, the blocks fall faster. Though the concept seems simple, the game is known for its addictiveness and its wide fan base.

The registrant of 'tetris.net' contended that it had a legitimate interest in the domain name because the domain was offered as a vanity email address for fans of the computer game, citing the decision of International Raelian Religion v Mailbank.com Inc. The panel rejected this argument, stating that unlike earlier cases, the word 'tetris' is not commonly used in a non-trademark sense, and the registrant was using the word to attract players to the site.

The panel also held that the registrant had (i) engaged in a pattern of conduct of registering trademarks, such as PENTIUM, as domain names, and (ii) deliberately tried to attract fans to the email service for commercial gain, and users were likely to believe that the site was sponsored or affiliated with the official game. Thus, The Tetris Company established that the registrant registered and used the name in bad faith, so the name was transferred.

Updated versions of Tetris have been released for the Playstation 2 and XBOX platforms, so it is no surprise that The Tetris Company is making valiant efforts to protect its mark.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC and Mary Rhodes, Georgetown University Law Centre, Washington DC

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