November 20, 2017
It's highly unusual for a well-known trademark to be accused of cybersquatting. That's what happened to Apple, who received a UDRP complaint Case No. D2017-135 against the lala.com domain name.
The facts are as follows: Apple obtained the domain name lala.com in 2009 following the acquisition of LA LA Media, an online music company. Although Apple ceased to operate the music service in 2010 and LA LA trademarks were cancelled for non-use in 2015 and 2017, Apple continued to use the domain name in connection with e-mail services.
A Mexican milk producer then filed a UDRP complaint claiming to have used the LA LA mark since 1987, long before Apple acquired LALA.COM. The complainant further argued that Apple registered and used the disputed domain name with the bad faith intent to defraud the Complainant's customers and that Respondent's passive holding of the disputed domain name constitutes sufficient evidence of its bad faith use and registration.
The Panel rejected these arguments by considering that between June 2006 and May 2010, the respondent and his predecessor made legitimate use of the disputed domain name in connection with the offer of bona fide services under the LA LA mark, and whose services have no connection with those of the complainant.
The Panel also wrote: the fact that the Respondent chose to cease active use of the Disputed Domain Name does not demonstrate in itself that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It is common practice for trademark holders to maintain the registration of a domain name, even if the corresponding trademark was abandoned, e.g., following a rebranding exercise. Apart from the goodwill that might be associated with the trademark, the domain name in question may have intrinsic value. In the case at hand, the Panel notes that the term "la-la" is often used as a nonsense refrain in songs or as a reference to babbling speech, and that there are many concurrent uses of the "LALA" sign as a brand. In such circumstances, a domain name holder has a legitimate interest to maintain the registration of a potentially valuable domain name.
In addition to the Panel's conclusion, this case is also interesting in that it is the first time that Apple, a multinational company ranked No. 1 on Interbrand's Best Global Brands list with a Quarterly business figure of $ 52.6 billion, has to defend itself against a cybersquatting complaint.
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