Yo Quiero Domain Name – Yum! Brands (Taco Bell) v. Nelson Wellness & Therapy Center

You may have seen Taco Bell’s New Year weight loss campaign, “Drive Thru Diet.”  I have to admit, I have sampled the menu.

Taco Bell acquired www.drivethrudiet.com prior to the campaign launch in 2010, but did not secure www.drivethroughdiet.com, a domain owned by a Georgia weight loss center.

Yum! Brands, the parent company of Taco Bell, filed a UDRP Bad Faith action to acquire the Georgia weight loss center’s domain name.

The arbitration panel denied Yum! Brand’s request to transfer drivethroughdiet.com based on 4 factors:

  • 1) Drivethrudiet.com was under construction until December 21, 2009;
  • 2) Yum! Brands did not provide evidence of using their trademark first;
  • 3) The trademark registration for, DRIVE-THRU DIET was assigned to Yum! Brands in October 2008, and
  • 4) There was no evidence the Georgia weight loss center had registered and used their domain in bad faith.

To be successful on an UDRP bad faith/cybersquatting claiming the following factors must be meet:

  • Domain name in question is identical or confusingly similar to a trademark in which Complainant has rights
  • Respondent has no legitimate rights/interests in domain name
  • Domain name has been registered and used in bad faith.

Read the arbitration decision here.

Listen to attorney Tamera Bennett and attorney Gordon Firemark discuss this decision on the Entertainment Law Update Podcast Episode 8.

About Tamera Bennett

Tamera Bennett, nicknamed by her clients as the IP quarterback, develops strategies to protect and leverage each client's intellectual property. She works closely with her clients to implement customized brand management programs. Her clients range from rock star to leadership coach and financial guru to custom motorcycle designer. Prepared with an undergraduate degree in Recording Industry Studies and a law degree from Texas Wesleyan University School of Law, Tamera represents clients throughout Texas and Tennessee in entertainment, trademark and copyright law related matters View all posts by Tamera Bennett

One response to “Yo Quiero Domain Name – Yum! Brands (Taco Bell) v. Nelson Wellness & Therapy Center

  • Gretchen Goldsmith

    I agree with the National Arbitration Forum on this one. Good call. It appears there was good faith on Taco Bell’s side, but I’ve seen decisions ruling that the complainant was practicing reverse domain name abuse. For small companies that do not have the means to hire a law firm, there are alternatives. If they meet very specific criteria, they may want to use Domain Name Defenders. Their flat fee is usually much less than the offer a client has made to a cybersquatter. DomainNameDefenders.com.

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