I was going through my traffic stats and I noticed that a visitor had landed on my post “Intent To Use” trademark application used to win a UDRP complaint at WIPO. The visitor made a google search for “is a trademark application enough for a udrp” in order to land on my post. That is a rather odd search term so I found the IP and then searched for this IP in an IP location service. I also noticed that an IP close in range to the first one made the same search about an hour and a half later. I also searched for that IP and my suspicions were confirmed.
Both IPs belong to Knobbe Martens Intellectual Property Law, a law form that claims to be America’s third largest Intellectual Property firm.
Does the second IP belong to a colleague of the lawyer that made the original search?
Knobbe Martens Intellectual Property Law has been active as a legal counsel in UDRP complaints since 2001. They weren’t very successful at first as they lost the first 3 of 4 UDRP complaints that they filed for their clients. They had better luck after that as their UDRP record is 30 wins, 4 losses and 1 split decision. Their biggest win was the transfer of the domain name vtp.com. Their 4 losses were:
audiopoint.com (against eCorp a/k/a Chad Folkening)
extremesports.com (where Respondent defaulted)
freedomvoicesystem.com/freedomvoicesystems.com (where Respondent defaulted)
I then checked to see who their latest client was. It is the Monster Energy Company or Hansen Beverage Company. These are part of the same company. Knobbe Martens has filled 5 UDRP complaints on behalf of these companies. All 5 complaints have been filed at the National Arbitration Forum and the latest 2 were decided on 21-Aug-2012 and 23-Aug-2012. All 5 complaints have been successful.
I then tried to find a possible domain target for a UDRP complaint but that proved to be impossible. Monster Energy Company has 187 live trademarks on USPTO and Hansen Beverage Company has another 104 live trademarks. 87 of these trademarks are not registered yet so it is very difficult to find which of those trademarks are filed as “Intent To Use”. These 87 trademarks have a filing date of May 2010 and newest and are still pending registration.
Nevertheless I ran the whole list of unregistered trademarks against the corresponding .com domain names and have found a list of 16 domain names that have been registered after May 2010. If anyone is interested in this list or wants to ask if one of their domains is in the list please contact me privately as I will not be posting the list.
If you have a domain name including the term “monster” I would suggest you search for this term at USPTO. If you have a domain name that matches one of these trademarks then you must be very careful with how you use the domain name.
Of course I could be wrong and Knobbe Martens has a new client (or a very old one) that wants to file a UDRP complaint using an “Intent To Use” application. My opinion on this type of complaints can be found here and it’s not very good: “Intent To Use” trademark application used to win a UDRP complaint at WIPO.