It's highly unusual for a well-known trademark owner to be accused of cybersquatting, but that's what happened when a Mexican milk producer filed a complaint against Apple Inc. under the Uniform Domain Name Dispute Resolution Policy (UDRP) in an attempt to get the domain name <lala.com>.
Not only did Apple win the case, but the panel issued a finding of "reverse domain name hijacking" (RDNH) against the company that filed the complaint.
The 'LA LA' Story
According to the UDRP decision, Apple obtained the domain name <lala.com> in 2009 when it purchased the online music-streaming company La La Media, Inc. The domain name had been registered in 1996 and was acquired in 2005 by La La Media, which used it in connection with its online music service between 2006 and 2009.
Although Apple stopped operating the La La Music service in 2010, and the corresponding LA LA trademarks were canceled in 2015 and 2017, Apple said that it continues to use the domain name <lala.com> in connection with "residual email services."
Apparently seizing on the cancelled LA LA trademarks, Comercializadora de Lacteos y Derivados filed a UDRP complaint against Apple for the domain name, arguing that it "claims to have used LALA as a trademark before the registration of the Disputed Domain Name, since as early as 1987" — long before Apple acquired <lala.com>.
The complainant further argued that Apple "registered and used the Disputed Domain Name with the bad faith intent to defraud the Complainant's customers" and that "Respondent's passive holding of the Disputed Domain Name constitutes sufficient evidence of its bad faith use and registration."
Apple's 'LA LA' Rights
The UDRP panel rejected these arguments, as well as those related to the UDRP's "rights or legitimate interests" requirement, finding that the complainant had "put these assertions forward without any supporting argumentation or evidence."
Importantly, the panel wrote:
The Panel is of the opinion that, between June 2006 and May 2010, Respondent and its predecessor-in-interest made legitimate use of the Disputed Domain Name to offer bona fide services under its own LA LA mark. These services are unrelated to the Complainant and its LALA mark.
The Panel also wrote:
[T]he fact that the Respondent chose to cease active use of the Disputed Domain Name does not demonstrate in itself that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It is common practice for trademark holders to maintain the registration of a domain name, even if the corresponding trademark was abandoned, e.g., following a rebranding exercise. Apart from the goodwill that might be associated to the trademark, the domain name in question may have intrinsic value. In the case at hand, the Panel notes that the term "la-la" is often used as a nonsense refrain in songs or as a reference to babbling speech, and that there are many concurrent uses of the "LALA" sign as a brand. In such circumstances, a domain name holder has a legitimate interest to maintain the registration of a potentially valuable domain name.
(Interestingly, the panel said nothing about "La La Land," the 2016 movie that won six Academy Awards — and which uses the domain name <lalaland.movie>.)
After its conclusion in favor of Apple, allowing the computer company to keep the domain name, the panel found that the "Complainant was, or should have been aware, of [Apple]'s bona fide acquisition and use of the Disputed Domain Name" and that it "must have been aware, before filing the Complaint, that the Disputed Domain Name has never be[en] used to target the Complainant or trade on its goodwill."
As a result of this finding, the panel said that the Complainant had engaged in RDNH, which is reserved for situations in which a complaint was brought in bad faith and constitutes an abuse of the UDRP process.
Lessons from 'LA LA'
The <lala.com> case is interesting for many reasons, including the panel's findings about the impact of expired trademarks and the multiple uses for some trademarks.
But the case is probably most interesting simply because it was filed against Apple — a 40-year-old company that is ranked No. 1 on Interbrand's list of "best global brands" and has quarterly revenue of $52.6 billion. Companies of this sophistication and stature typically aren't sloppy enough to own problematic domain names, and anyone who files a UDRP complaint against a company of this size should expect a rigorous legal fight.
Plus, not surprisingly, companies like Apple are typically filing (not defending) domain name disputes. Apple has filed at least 37 UDRP complaints through the years, but the <lala.com> case appears to represent the first time that it had to defend itself against a claim of cybersquatting.
This case holds a lesson not only for companies considering filing a domain name complaint against a large and well-known trademark owner (be prepared for an uphill battle), but also for the trademark owners themselves: No one is immune from having a domain name dispute filed against it, so be ready to file a quick and effective response.
Written by Doug Isenberg, Attorney & Founder of The GigaLaw Firm