Does owning a trademark for a phrase, regardless of its specificity, entitle the trademark holder to that domain name? That is, essentially, the question that Manhattan Center Studios posed when it filed a UDRP complaint against James Lawson with the National Arbitration Forum (NAF) over the domain name ManhattanCenter.com.
The Complainant is a well-known New York City performance venue called the Manhattan Center, a building that houses the famed Hammerstein Ballroom. The Complainant owns a registered trademark for MANHATTAN CENTER HAMMERSTEIN BALLROOM THE GRAND BALLROOM as well as common law marks for THE MANHATTAN CENTER and MANHATTAN CENTER. In its filing, the Complainant alleges that the Respondent's mark is identical to the common law mark and makes up a dominant portion of the official mark.
The Respondent registered the disputed domain name in 2004 after seeing it on a drop-list of soon-to-expire domains. He explains that he purchased it because he saw value in a name that referenced the geographic center of Manhattan, not because he knew about the Complainant's facility. He also argues that the term MANHATTAN CENTER is geographically generic and cannot be claimed by the Complainant, saying that if the Complainant could have obtained an official trademark for the term, it would have.
Ultimately, the Panelist ruled in favor of the Respondent and allowed him to keep the domain name. He determined that the Respondent had not registered the domain name in bad faith, as the Complainant's trademark application was merely pending at the time of registration, and the Respondent was not using it to promote goods or services that were detrimental to the Complainant's business.
This decision should be a lesson to all brand owners looking to file a UDRP complaint on a domain name made up of a generic term or phrase. If the Respondent is abusing the domain name, selling goods or services that explicitly reference a Complainant's business, there might be a case, but in a situation like this one, where the only evidence is the name, it is harder to prove. It is best to consult with experienced UDRP lawyers before any filing, but it is especially crucial in cases including generic terms.
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