Last week, Lewis & Lin received a decision from the National Arbitration Forum denying the claim of The Sinclair Group against our client, a best-selling author, award-winning scholar and global business consultant.
The complainant argued that it has had a federal registered trademark for RAPID TRANSFORMATION since 2006 for technical consulting services and business management consulting, and that it has been offering operations management consultancy services under the mark since 2004. It further argued that our client’s RapidTransformation.com domain name redirected web users to a website offering directly competing services, thus constituting illegitimate and bad faith use.
On behalf of the respondent, Lewis & Lin showed that our client was an internationally recognized expert on organizational and leadership transformation who has written five books on how organizations and businesses manage change. One of those books, “Rapid Transformation: A 90-day Plan for Fast and Effective Change,” was published in 2007 by the Harvard Business Review Press. We provided evidence that our client had been using the phrase “rapid transformation” as part of his global business consulting services since 2002.
We further argued that the words “rapid” and transformation” are common use, generic, dictionary words, and that our client registered the domain name for its descriptive significance—not to take advantage of the complainant’s mark.
A single-member panel of the National Arbitration Forum ruled in favor of our client. The panel found that although our client’s RapidTransformation.com domain name was identical to complainant’s RAPID TRANSFORMATION registered trademark, our client had established sufficient rights or legitimate interests to the domain name pursuant to the Uniform Domain Name Dispute Resolution Policy. The panel further concluded that the complainant failed to establish bad faith registration and use of the domain name, as is required under the policy.
The case is The Sinclair Group Nevada, LLC v. Tabrizi, FA1606001679802 (NAF Aug. 3, 2016) and can be accessed here. Please contact us if you have any questions about domain name disputes or the UDRP.