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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Brees Company, Inc. v. Brees Company Inc.

Claim Number FA0506000493869 (NAF, July 28, 2005)

In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel refused to transfer the domain name Drew to Complainant, Brees Company, Inc., a company apparently affiliated with the professional football player Drew Brees.  The Panel refused to grant such relief because Mr. Brees did not establish that he held common law trademark rights in his name at the time of the registration of the domain name in dispute.

Complainant Drew Brees Inc. is an entity apparently affiliated with Drew Brees ("Brees").  Brees is a professional football player who plays quarterback for the San Diego Chargers of the NFL, and is currently one of the highest paid players in the league.  Brees played quarterback in high school.  From 1997 to 2001, he played quarterback for Purdue University.  Mr. Brees was drafted by the Chargers in the 2001 draft, and has played with them continuously since then.

The domain registrant did not appear in this proceeding and its identity is unclear from the Panel's decision.  Apparently, shortly after the Complaint was filed, the registrant transferred registration, but not control of the domain name in dispute, to Complainant Brees Company Inc.  The decision does not state the use, if any, made of the Drew domain.

To prevail in a UDRP proceeding, the Complainant must show that the domain name at issue is identical or confusingly similar to Complainant's trademark.  The Panel held that Complainant failed to establish that it had trademark rights in the "Drew Brees" mark at the time of its registration in 1998.  Neither Brees Company, Inc. nor Mr. Brees had registered that mark.

Nor, on the record before it, did they hold common law trademark rights in the "Drew Brees" name in 1998.  To hold such rights, a mark holder must show that the name developed and secondary meaning, and that the public associated it with a particular individual, in this case Mr. Brees.  The Panel held that the evidence Complainant submitted was insufficient to establish such a secondary meaning, given the fact that at the time of the domain's registration, Mr. Brees had only played quarterback for Perdue for one year, and had neither appeared in the NFL nor received the significant press coverage he later received.  Because Complainant could not show that the domain name was identical or confusingly similar to a mark in which Complainant held trademark rights at the time of the domain's registration, the Panel held Complainant could not prevail in this proceeding.

The Panel accordingly resolved this domain name dispute by denying Complainant's request for a transfer of the domain name.

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