Conduct of trademark owner results in failed UDRP complaint

In Educational Directories Unlimited v Reflex Publishing Inc, a National Arbitration Forum (NAF) panel has allowed the respondent to retain ownership of 'gradschool.com'. The complainant, owner of the nearly identical domain name 'gradschools.com' and the trademark GRADSCHOOLS.COM, lost its challenge because of acquiescence and delay in objecting to the registration. The panel found that as a result of this conduct, the respondent had established legitimate interests in the disputed domain name.

Pennsylvania's Educational Directories Unlimited (EDU) filed with NAF a Uniform Domain Name Dispute Resolution Policy complaint against Reflex Publishing, alleging that the Florida-based company:

  • had engaged in a pattern of registering domain names that infringe upon other entities' marks;

  • had never been commonly known by the disputed domain name; and

  • had made no legitimate non-commercial or fair use of the domain name.

In its opposition to the complaint, Reflex conceded that 'gradschool.com' is confusingly similar to EDU's trademark, but argued that EDU is entitled to no protection under the Lanham Act because its mark is generic. Reflex also claimed that it had registered its domain name before EDU applied to register the mark GRADSCHOOLS.COM and, therefore, it had not acted in bad faith.

The panel refused to order the transfer of the disputed domain name because it found that Reflex has legitimate interests in it, owing to (i) a letter from EDU acknowledging without protest Reflex's registration of the domain name, and (ii) EDU's desire to exploit Reflex's domain name by allowing Reflex to direct traffic to EDU's website.

Because the panel found that Reflex has legitimate interests in 'gradschool.com', it declined to decide whether the company had acted in bad faith or whether EDU's mark is generic. It also declined to find reverse domain name hijacking on the part of EDU.

Michael A Grow, Arent Fox Kintner Plotkin & Kahn PLLC, Washington DC

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