Lewis & Lin obtained another UDRP victory this week, defending the domain name <palace.com> against a complaint filed by the owner of The Palace of Auburn Hills, home to the Detroit Pistons.
The complainant had argued that the domain name was confusingly similar to its registered trademark THE PALACE OF AUBURN HILLS, and its common law rights to the mark PALACE. Complainant further argued that our client lacked rights or legitimate interests to the domain name, and that our client registered and was using the domain name in bad faith.
Lewis & Lin defended the domain dispute on three grounds. First, the domain name <palace.com> was not identical or confusingly similar to a mark the complainant had rights to. Regarding complainant’s federally-registered trademark, its five-word mark combined the generic word “palace” with the geographic modifier “of Auburn Hills,” and therefore obtained distinctiveness only in the combination as registered. Regarding complainant’s allegation that it had common law rights to the term “Palace,” complainant had failed to offer any evidence in support of its claim.
Second, Lewis & Lin pointed out that our client had spent several years prior to learning of the UDRP to prepare to use the domain name in connection with an online gambling business that it was contemplating. Lewis & Lin submitted proof of our client’s actions in creating a website, executing an SEO and marketing strategy, obtaining required licenses, and entering into contracts to develop its business.
Finally, Lewis & Lin argued that the complainant failed to show that our client both registered and used the domain name in bad faith—a required element under the UDRP.
A three-member panel of the World Intellectual Property Organization (“WIPO”) agreed with Lewis & Lin on all three points, ruling for our client, and denying the complaint in its entirety. The full decision is available here.