The Freename Forum

The Authentic Brands Group LLC from New York started a second UDRP procedure shortly after losing it. In doing so, it did not reflect the grounds for the decision from the first legal dispute, but only attempted to correct one point that was not relevant to the decision.

In a June 2024 UDRP proceeding at The Forum, Authentic Brands Group LLC had suffered a setback in the dispute over the domain authentlc.com because it had failed to prove its claimed common law trademark. Decision-maker Charles A. Kuechenmeister found that the complainant's trademark “AUTHENTIC BRANDS” was not registered and that it had not proven its distinctiveness in the course of trade. He discontinued the examination of the complaint due to the non-existence of a trademark, but nevertheless briefly addressed one point on the issue of bad faith. The complainant had substantiated the misuse of the domain with an email in which a forged invoice emanated from an address of the authentlc.com domain in dispute, which corresponded to the address of an employee of the complainant under the authentic.com domain. Kuechenmeister considered this - the only - evidence of bad faith use to be unconvincing. He dismissed the complaint in July 2024 due to the lack of evidence of a trademark right (Forum Claim Number: FA2406002104055).

In September 2024, the complainant again initiated UDRP proceedings for the domain authentlc.com before The Forum (Claim Number: FA2409002117143). In the complaint, she explains that the decision-maker in the previous proceedings rejected the complaint because he misunderstood the evidence presented: The fraudulent email did not come from the complainant or one of her employees, it came from the opponent. The decision-maker had not read the sender address correctly (@authentic.com instead of @authentlc.com), which are visually almost identical. As in the first case, the domain owner and opponent, Shipley Marmion from California (USA), did not comment.

However, the British lawyer and mediator Dawn Osborne, who was commissioned to examine the second complaint, made short work of it and made it clear that the reason for the complainant's failure in the first UDRP proceedings was that the decision-maker was of the opinion that the complainant had not proven that its trademark “AUTHENTIC BRANDS” had distinctive character in trade. With reference to various UDRP proceedings, Osborne examined whether there were circumstances here that would allow a new procedure. However, there was no serious misconduct on the part of the decision-maker, no falsified evidence had been submitted, no new credible evidence essential to the proceedings was now available which could not reasonably have been foreseen or known at the first proceedings, nor was there a breach of the right to be heard. In essence, the appellant had filed the same complaint again without submitting new evidence or reasons that would have led to a different decision in the previous proceedings. It merely referred to new evidence regarding the question of the use of the domain in bad faith; however, this question was not the basis of the decision at all, which meant that the complainant had not fulfilled its obligation to provide evidence. The complainant had resubmitted the same case and the same evidence without addressing the deficiencies in the evidence regarding the publicity and distinctiveness of its mark highlighted by the previous decision-maker in the earlier UDRP case. Osborne thus dismissed Authentic Brands Group LLC's appeal at the admissibility stage, as the case had already been decided.

The current UDRP decision on the domain authentlc.com can be found at:
https://www.adrforum.com/DomainDecisions/2117143.htm

The previous UDRP decision on the domain authentlc.com can be found at:
https://www.adrforum.com/DomainDecisions/2104055.htm