February 15th, 2008
“Confusingly Similar” Domain Name, but Domainer Not Liable
On November 20, 2007 the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center issued a panel decision denying a complaint brought forth by Jack Daniel’s Properties, Inc. against website jackdanielsgifts.com, which is owned and operated by Respondent Imanez of Essex. Jack Daniel’s Properties, Inc expressed concern toward the domain name, insisting Imanez purchased it in bad faith.
JackDaniel’s requested that Imanez make changes to the background of the website and provide a broader disclaimer. In turn, the Respondent added other brand name products to the site, but refused to change the disclaimer citing that it was sufficient as is. The Complainant later requested that the domain name be transferred to them, but the Respondent refused Jack Daniel’s offer of ?£2,000 for the transfer.
WIPO decided that the domain name was confusingly similar for policy purposes, but also decided that Imanez should not be held liable, finding that he used the domain name in connection with a bona fide offering of goods or services. To qualify for this holding, WIPO requires:
- the Respondent offer goods or services at issues;
- must sell only trademarked goods;
- disclose the registrant’s relationship with the owner on the domain site; and
- the Respondent must not corner the market in similar domains. WIPO ultimately refused to rule on the issue of whether or not Imanez registered the domain name in bad faith.








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