October 16th, 2013
Having Disclaimer Wins UDRP

A National Arbitration Forum panel has denied the claim of a trademark holder because the Respondent had a disclaimer on the web site. In the case of MySQL AB v. Mumbai Domains Pvt. Ltd. / Registration Manager, (http://domains.adrforum.com/domains/decisions/1514027.htm), Complainant was the owner of the mark MYSQL which it uses in connection with database software, management, development, and related services. Respondent teaches various “MySQL” and “LAMP” classes in India, and registered the domain name in 2008. The disputed domain name is based on a Hindi phrase “Tu To MySQL Guru hai bhai,” loosely translated to mean “You are a MySQL Guru brother.”

Respondent claimed that Complainant does not offer any of those same services. Respondent contended that the word “guru” in the domain name illustrates his Indian heritage and tells people that he has extensive knowledge in MySQL. The Panel determined that because Respondent’s domain name corresponds to his business purpose and use, Respondent has legitimate rights and interests in the domain name pursuant to Policy ¶ 4(a)(ii).

However, what was really important for the panel was that Respondent states at its resolving website, “This site is NOT affiliated with Sun Microsystems or ORACLE Corporation.” Previous panels have concluded that the presence of a disclaimer at the resolving website is evidence of a respondent’s rights or legitimate interests in the disputed domain name. The Panel likewise determined that the disclaimer at the resolving website demonstrates that Respondent has rights or legitimate interests in the domain name for the purposes of Policy ¶ 4(a)(ii).

So, the moral of this story is that if you have a domain name that you know could be confused with a trademark, put a disclaimer on the landing page or web site and you should be home free.

Thanks for “listening”

Howard