Marshall Gerstein & Borun Secures Order Transferring Domain Name ‘guinnessbookofworldrecords.net’ To Client Guinness World Records Limited

August 16, 2011

On August 2, a single-member panel of the National Arbitration Forum ruled in favor of the Firm’s client Guinness World Records Limited in a Uniform Domain Name Dispute Resolution Policy (UDRP) case filed by Marsha K. Hoover with assistance from Tiffany D. Gehrke.

A Chinese citizen registered the domain name guinnessbookofworldrecords.net for a website that contained repeated uses of the mark GUINNESS BOOK OF WORLD RECORDS intermingled with nonsensical text and advertising. Although the domain’s owner did not respond to the Complaint, the forum’s arbitrator carefully examined the offending website in order to ascertain whether the evidence supported Guinness World Records’ allegations that the respondent had no legitimate interest in the domain name, and had registered and was using it in bad faith.

The panelist found bad faith registration even though the domain name is not identical to the Complainant’s current mark GUINNESS WORLD RECORDS®. He also found that the site’s combination of meaningless information and advertising content constituted bad faith use of the disputed domain name.

Cybersquatting continues to be an important concern for trademark owners, who must enforce their rights against offenders around the globe. Because a UDRP case does not require the trademark owner to establish personal jurisdiction over the wrongful registrant in a court, and because the proceedings are handled in writing via email with the arbitrators, the UDRP is an expeditious and cost-effective way of getting a domain name out of the hands of an infringer.

Marsha K. Hoover counsels corporations and individuals with respect to trademark rights, copyrights, and rights of privacy and publicity. Tiffany D. Gehrke prosecutes trademark and patent applications, and investigates evidence of trademark, patent, and copyright infringement.