Dyson loses 2 UDRP complaints in a row at WIPO

Dyson lost 2 identical UDRP complaints within a month. Both complaints were for similar domain names, but with different Respondents, and both were decided by the same Panelist. The complaints were for bladelessfansmall.com and bladelessfanonline.com.

Do you wonder why Dyson lost these complaints? It is no surprise as Dyson owns no trademarks that are similar to these 2 domain names, ie “bladeless fan”. Dyson only owns trademakrs for “Dyson” and “Air Mulitiplier”. Good job on Dyson’s legal counsel Wragge & Co. LLP from United Kingdom charging Dyson with legal fees for what was bound to be a certain loss! In fact no party holds a trade mark for the term “bladeless fan” at the USPTO.

Both cases would have been clear Reverse Domain Name Hijacking decisions but both Respondents did not reply to the Complainant’s contentions. And of course if you don’t ask for a RDNH ruling, you will not get one.

Dyson argued that while it has no registered trade mark for the words “bladeless fan” with respect to fans and similar products, it nonetheless has common law rights in these words as an unregistered mark based on its extensive use of them in the promotion of its fan product. This argument didn’t really cut it with the Sole Panelist that decided both cases at WIPO. The Panelist found that both cases failed on the first element of the UDRP: Identical or Confusingly Similar. The Panelist used an Administrative Panel Procedural Order to seek further submissions from Dyson with respect its reputation in, and usage of, the expression “bladeless fan” but was not convinced.

Panelist said that because the Complainant had no registered trade mark, national or otherwise, in respect of these words, must therefore establish that they are capable of protection as an unregistered trade mark by virtue of the reputation attaching to them through usage and consumer recognition. In the present case, the burden on the Complainant is even greater, in that the words “bladeless fan” are almost completely descriptive of the goods themselves, namely domestic fans without blades. As with any descriptive expression, it is therefore necessary to show that there is some secondary meaning associated with this expression that indicates a specific trade origin rather than just a characteristic or quality of the goods concerned. On the material before it, however, the Panel was unable to determine whether the words “bladeless fan” had been used as a trade mark by the Complainant, rather than just as a general description of the product which is usually identified by reference to the registered trade marks DYSON or AIR MULTIPLIER.

The “Discussion and Findings” portion of the 2 decisions was almost identical (copy paste) with only the reference of the first decision on the second one.

Panelist denied both complaints but reached these decisions “with some regret”. Panelist said that it appeared to be evidence in the Complaints with respect to elements 2 (Rights or Legitimate Interests) and 3 (Registered and Used in Bad Faith) of the UDRP that suggested that both Respondents were engaging in a course of conduct that may well be confusing and an infringement of copyright to boot. Such matters may give rise to other rights of action against the Respondents, but cease to be relevant to the present proceeding once the Complainant has failed to show that it has rights in a trade mark that has been incorporated in the Respondent’s domain names.

There shouldn’t have been any regret on behalf of the Panelist as this was the correct usage of the UDRP proceedings. Panelist should be proud of these decisions. The UDRP proceedings were not created for companies to go after people selling products that are counterfeit or copies.

One last thing. While it appears that the 2 Respondents are not the same person both  bladelessfansmall.com and bladelessfanonline.com resolve to what seems to be almost the same website. In the contact us page of the bladelessfanonline.com website there is a mention of a “service@air-multiplier.org” email that is linked to another UDRP decision for the domain name air-multiplier.org that Dyson won against a different person. It is safe to assume that all 3 domain names are owned by the same person or people that use different aliases to avoid mass UDRP complaints.