UDRP Does Not Resolve Trademark Conflicts

A friendly reminder to any attorneys who are considering bringing a cybersquatting case: the UDRP is not the appropriate forum for mediating trademark disputes.

A disagreement about the website SmartPrivacy.com centers mostly on these issues.

Regarding the dispute over the ownership of the domain name, Gazey and Partners LLP, doing business as Privacy Partnership, submitted a UDRP (pdf) complaint against One Trust.

Both of these enterprises make use of the phrase “Smart Privacy” in their operations. Both parties have registered at least one trademark in connection with the word.

Given this information, it is very hard for Gazey and Partners to argue that One Trust does not have any rights to the domain name or any legitimate interests in it. That is a precondition for being successful in a UDRP.

It would appear that Gazey & Partners and One Trust are engaged in a legitimate dispute about who should be permitted to use the phrase “Smart Privacy.” A UDRP panel will not be able to offer a solution to that problem.

A panelist for the World Intellectual Property Organization named Assen Alexiev found in favor of One Trust and made the following observation: “…the relationship between the Parties involves complex issues of fact and law regarding concurrent and possibly conflicting trademark rights (better addressed in a court).”

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