By Steve Levy
When it comes to domain name disputes under the UDRP, the devil is in the details and sometimes it’s in the disclaimers. Three recent decisions involving the restaurant chain Pollo Tropical show how important it is to submit the right evidence of trademark rights and scope since this can swing outcomes dramatically, even when the domain names at issue are strikingly similar and are being used in bad faith.
In my own recent decision, I denied a complaint against pollolisten.cfd despite the likelihood that the resolving website was a Splog (spam blog). I found that the Complainant never got past the threshold of showing that the domain name was confusingly similar to the complainant’s trademarks. Although the Complainant owns several U.S. trademark registrations that incorporate the Spanish word “Pollo” (“chicken” in English) such as POLLO TROPICAL, MY POLLO, POLLO TIME!, POLLO TROPICAL EXPRESS, and POLLO PANTRY. However, these explicitly disclaim exclusive rights to the word “Pollo” apart from the registered marks as a whole. The UDRP decision emphasized that “Pollo” alone, without the accompanying stylized elements or additional words like “Tropical,” lacks distinctiveness which led to the disclaimers in the USPTO trademarks. Moreover, the complainant failed to submit any evidence that it owns trademark rights, either registered or at common law, in the composite phrase “Pollolistens” despite its claimed use of the domain name pollolistens.com to automatically forward users to a customer survey at a page hosted under a different domain name, pollocares.com.
This reasoning echoed the outcome in another recent decision, by a different panel, denying transfer of the domain name pollolistens.cfd. Again, the panel noted that “Pollo” was disclaimed in the complainant’s registrations and that no common law rights in “Pollolistens” were proven. Even though the domain name mimicked the Complainant’s customer survey site, the panel dismissed the complaint, suggesting that without trademark rights in the full phrase, the resemblance wasn’t enough under UDRP standards.
Contrast these with a UDRP decision from August where the panel ordered the transfer of the domain pollolistens.vip. Here, the panel found that the domain “fully incorporates the dominant POLLO element of the mark, merely omitting the space and the TROPICAL element and adding the term “listens” and a gTLD” and was used to attract traffic to a pay-per-click site, evidencing bad faith. The panel accepted the Complainant’s argument that a significant portion of the POLLO TROPICAL mark was recognizable within the domain name, even though the word “Tropical” was omitted. This diverges significantly from the finding the later two decisions mentioned above.
As someone who has practiced U.S. trademark law for over 35 years, I feel that disclaimers in trademark registrations do matter and need to be carefully considered in UDRP cases. Panels are reluctant to grant relief when a domain name uses only the disclaimed portion of a mark, unless the complainant can show secondary meaning or common law trademark rights to that disclaimed element or at least to a composite mark that’s incorporated in the disputed domain name. Even if the use of the domain name is clearly bad faith, such as impersonation or commercial exploitation, this may not save the case if the Complainant can’t get past the initial requirement of proving trademark rights in a word or phrase that’s recognizable in the disputed domain name.
For brand owners, these decisions underscore the importance of submitting evidence that they own relevant rights – even if only at common law where the copied term isn’t itself granted rights by a trademark registration.