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Wednesday, 19 February 2014

(When) a tweet is not enough .. to establish unregistered trade mark rights

Social media and IP: a field of novel arguments and legal creativity. Have you ever wondered whether a tweet may provide sufficient evidence of unregistered trade mark rights -- for the purposes of Paragraph 4(a)(i) UDRP?  This was the question posed in a recent domain name dispute under the UDRP decided by WIPO's Arbitration and Mediation Center: Play Club by Cipriani, S.L. / Giuseppe Cipriani v. Identity Protection Service / Amir Zeb / Eyhab Jumean (Case No. D2013-1883):

"The Complainants claim unregistered rights in the trademarks LA BOMBA IBIZA and BOMBA IBIZAdating from January 2013 when the second Complainant used the phrase “La Bomba Ibiza” in a tweet. The Complainants do not hold any trademark registrations for (or incorporating) BOMBA IBIZA."
WIPO's panellist was, however, not persuaded and decided not follow this novel argument:

"In order to establish this [Merpel: that is unregistered trade mark rights and in consequence that the Disputed Domain Name is identical or confusingly similar to one of the Complainants’ trademarks in the sense of Paragraph 4(a)(i) UDRP], the Complainants have provided evidence of a tweet on January 12, 2013 which included the phrase “La Bomba Ibiza”. The Panel accepts the Respondents’ evidence that “Bomba Ibiza” had not been chosen as the nightclub’s name at the time of the tweet.  
The Panel considers it highly unlikely that “Bomba Ibiza” became a distinctive identifier associated with the Complainants’ services in the time between the tweet (January 12, 2013) and the registration of the Disputed Domain Names (February 12, 2013). As such, the tweet alone is insufficient evidence of unregistered trademark rights to satisfy the first element of the Policy."
This interesting decision can be found here (via .muepe.de and markenblog.de).

2 comments:

Noric Dilanchian said...

In the mid-2013 case of Robyn Rihanna Fenty and Others vs Topshop and Another the following @Topshop (350,000 followers) tweet was worthy enough for mention by Justice Birss as evidence in support of Rihanna's successful passing off claim against Topshop:

“Ridiculously excited! @Rihanna in our Oxford Circus store as we tweet. Ah, wonder what she'll buy…".

The tweet supported the misrepresentation element of the passing off remedy successfully sought by Rihanna.

I mention the tweet and overview the case in "Passing off, taking goodwill takes business": http://www.dilanchian.com.au/index.php/lightbulb-blog/749-passing-off-taking-goodwill-takes-business

Jeremy said...

Thanks, Noric, for your comment. so far as I can see, there's no problem with Tweets being admissible as evidence -- and a single Tweet can clearly constitute a misrepresentation, a defamation etc. But establishing reputation or the existence of goodwill is a different matter altogether, whether through a Tweet or any other electronic or conventional medium.

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