Wednesday, February 7, 2007 Survives TM Dispute

The National Arbitration Forum just released its decision in Metro-Goldwyn-Mayer Studios Inc. v. World Readable c/o R.L. Cadenhead, the domain-name dispute in which the film studio tried to take Wargames.Com away from Rogers Cadenhead because it owns a trademark related to the 1983 film WarGames and the upcoming sequel WarGames 2: The Dead Code. After going through a lengthy dispute under the Uniform Domain-name Dispute Resolution Policy (UDRP...thought it seems like it should be at least the UDDRP), Cadenhead convinced the court that he was not using the trademark to profit off of the movie, but rather to sell video games. It helped that registration for the wargames mark came two years after Cadenhead had begun work on his site.

How about a nice game of chess?

The site itself seems bootleg and outdated. He hasn't begun selling any next generation war games yet. I guess those lawsuits can really tie your hands. Accordinging to Cadenhead, the UDRP grossly favors trademark holders, and as a result, usually the only winning move for a potential infringer is not to play. While my instincts tell me side with the little guy, it looks like Cadenhead has engaged in some unscrupulous domain name registering, such as and, though he claims that he had no intention of profiting off of these names and offered them to the Vatican and MGM respectively.

Here is the legal standard under the UDRP:

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.

MGM satisfied (1), had a prima facie case for proving (2), but when the burden shifted to Cadenhead to prove that he had a legitimate interest in the domain name, he carried his burden and won. After deciding (2), there was no need to settle (3).

No comments: