June 15, 2010 - - Kenyon & Kenyon LLP announced a favorable arbitration decision for its client, Mrs. Jello, LLC, a leading domain name developer that combines the acquisition of domain names which incorporate generic and common words or phrases and the subsequent commercial development of those domain names by means of click-through revenue.
At issue was the domain name <entrado.com>. Mrs. Jello, LLC's domain name consists entirely of a generic word, namely, "entrado" - which is a common Spanish word meaning "entrance". Despite the common meaning of the word entrado, West Corporation claimed to own trademark rights in the INTRADO designation which it uses in connection with its business as a provider of 911 systems as well as other emergency services response systems.
West Corp. contended that Mrs. Jello, LLC's ("MJ") registration and use of the entrado.com domain name was confusingly similar to West Corp.'s INTRADO marks and, therefore, in violation of the the Uniform Dispute Resolution Policy (the “UDRP”). West Corp. brought the dispute pursuant to the UDRP, claiming that it was the proper owner of the domain because it owned superior rights to the domain and MJ's use of the domain for a pay-per-click advertising portal with links to adult content tarnished its INTRADO marks.
The National Arbitration Forum Panel held that West Corp. failed to prove that MJ's use of entrado.com in connection with pay-per-click advertising was not a legitimate use. The Panel also ruled that West Corp. had failed to show that the domain was registered and/or used in bad faith. Refusing to transfer the domain to West Corp., the Panel stated, "[A] respondent is free to register a domain name consisting of common terms for use of those terms in their common descriptive sense as [MJ] did in the instant case." The Panel found that MJ's use of “entrado” was in good faith because it used <entrado.com> to suggest that it is an entry or opening to the Internet: "[MJ's] descriptive fair use . . . established rights or legitimate interests in the disputed domain name." With respect to MJ's use of the domain for a dating website with links to adult oriented material, the Panel noted, "The mere fact that a domain name resolves to a website featuring adult content does not per se render the registrant devoid of rights or legitimate interests in the domain name."
Mrs. Jello, LLC was represented by Kenyon & Kenyon LLP partner James E. Rosini and associates Mimi Rupp and Aaron Johnson. “We are very pleased that the Panel recognized that commercial use of a domain name consisting of a generic word constitutes a legitimate use under the UDRP. Hopefully, this decision will dissuade others who may be tempted to use UDRP proceedings as an improper means to acquire valuable generic domain names,” said James E. Rosini.
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