Comments

• smlevy42 08:59 am 19-Sep-2014 In denying this claim the Panel notes that the question of fair use creates a legitimate legal dispute which should be decided by the courts as it is outside the scope of the UDRP. What I find odd about this decision is that it fails to even mention the well-established line of UDRP cases that deal with a very similar area of fair use and which could have been considered here. The seminal case is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in which the panel formulated a 4-part test for determining whether a domain owner is making a bona fide offering of goods and services though fair use of a complainant’s trademark. I suspect this test could have been adapted to the AREDS2 case as follows: 1) Is the Respondent actually posting content related to the AREDS2 mark? 2) Does the site only promote the AREDS2 study? 3) Is there a disclaimer clearly explaining the lack of respondent’s relationship with the Complainant? And 4) has the Respondent tried to corner the market by registering a bunch of other AREDS2 domains? Under such a test the only real question would appear to be whether the Google search link on the un-named respondent's website could be viewed as only promoting the AREDS2 study and products related thereto or whether it runs afoul of the second part of the Oki Data test. I suppose it’s possible that the search results show a company that is also owned by Respondent and that is selling unrelated vitamins or products. However, that would be for the Complainant to investigate and argue in its pleadings. For now, the Complainant will have to decide if it wants to follow the panel’s advice and take this mystery domain owner to court – obviously a far more expensive and distracting process than pursuing a UDRP complaint.

• smlevy42 01:23 pm 19-Sep-2014 This Panel notes that the question of fair use creates a legitimate legal dispute which should be decided by the courts as it is outside the scope of the UDRP. What I find odd about this decision is that it fails to even mention the well-established line of UDRP cases that deal with a very similar area of fair use and which could have been considered here. The seminal case is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in which the Panel formulated a 4-part test for determining whether a domain owner is making a bona fide offering of goods and services though fair use of a Complainant’s trademark. I expect this test could have been adapted to the AREDS2 case as follows: 1) Is the Respondent actually posting content related to the AREDS2 mark? 2) Does the site only promote the AREDS2 study? 3) Is there a disclaimer clearly explaining the lack of Respondent’s relationship with the Complainant? And 4) has the Respondent tried to corner the market by registering a bunch of other AREDS2 domains? The only real question here seems to be whether the Google search link on the un-named Respondent's website could be viewed as only promoting the AREDS2 study and products related thereto or whether it runs afoul of the second part of the Oki Data test. I suppose it’s possible that the search results show a company that is also owned by Respondent and that is selling unrelated vitamins or products. However, that would be for the Complainant to investigate and argue in its pleadings. For now, the U.S. Department of Health and Human Services will have to decide if it wants to follow the Panel’s advice and take this mystery domain owner to court – a far more expensive and distracting process than pursuing a UDRP complaint.