Intellectual property lawyer Kaitlin Corey recently secured a win for her client, a process serving company, in an administrative panel decision in the WIPO (World Intellectual Property Organization) Arbitration and Mediation Center. The complaint, which was filed by a competing process serving company, alleged that the client’s use of a particular domain name for its website infringed the complainant’s federally registered trademark.
In her WIPO response, Kaitlin established that the complainant’s federally registered trademark is merely descriptive, and the complainant failed to prove secondary meaning to establish a protectable mark. The Panelist also found that the complainant brought its WIPO complaint in bad faith, finding that its attempt to transfer the domain name was an attempt at “Reverse Domain Name Hijacking.”
This case serves as a worthwhile lesson to business owners to choose protectable trademarks and steer clear of descriptive marks.
Kaitlin is a partner with Goodell DeVries and a member of the firm’s Intellectual Property and Business and Corporate Law practices. She works with companies of all sizes by assisting them with general corporate governance, mergers and acquisitions, and intellectual property protection and management. She regularly advises on brand protection strategies by reviewing marketing creative for legal compliance, clearing trademarks for use and registration, and licensing of trademarks and copyrights. Kaitlin is co-editor of Goodell DeVries's intellectual property law blog.
