Posted on 4/21/2016 1:12:00 AM By Daniel L. Rogna

Simply registering a .CLUB domain name doesn’t classify you as a “fan” in the eyes of the Uniform Rapid Suspension (URS), as a recent panelist determined. Although a registrant may have legitimate interests in a “fan site” that incorporates a trademark in the domain name, such use should be clearly distinct from an official site and should be noncommercial in nature.

ServiceMaster Brands filed a URS complaint to address this issue with regards to the registration of <>. The requirements of such a complaint are that it must prove (i) the domain name at issue is identical or confusingly similar to a mark in which it has rights, (ii) the registrant has no rights or legitimate interests in that domain name, and (iii) the registration and use were in bad faith.

The National Arbitration Forum handed ServiceMaster a victory, suspending the domain name and finding that ServiceMaster had successfully demonstrated all three elements of the URS by clear and convincing evidence.

The panelist noted that the website displayed links to ServiceMaster’s competitors, which “indicates bad faith competition and disruption of a complainant’s business” because “such use can result in misleading Internet users as to the source of the domain and website.” Any averments to use as a “fan site” were simply not plausible based on the evidence at hand.

The final decision to suspend the domain was entered by Ms. Antonina Pakharenko-Anderson in SERVICEMASTER BRANDS L.L.C. v. Dave Chandler et al., Claim No. FA1603001667647 (April 8, 2016), and the full decision is available here.

ServiceMaster Brands was represented by Partridge Partners in the matter.

Internet, Trademark