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Competing with the Same Trademark and Defaulting on Evidence of Priority

Paragraph 4(b)(iii) of the Policy has specific reference to the acts of a competitor. If for its “primary purpose” a respondent registered the disputed domain name to disrupt the other’s business it is evidence of bad faith. The Respondent’s narrative in SunSpots Productions Inc. v. John Laprad, D2010-0184 (WIPO April 26, 2010) claims bona fides in using “sunspots” for his business identity concurrently with the Complainant or possibly antedating the Complainant’s use and registration of SUNSPOTS, thereby putting the parties in a duel of priority. Complainant appears to have a wider range of business but both parties compete in offering voiceovers. The Respondent appears to be a one-man operation who “can currently be heard in a popular series of radio advertisements” on local radio stations in Worcester, Massachusetts.

A successful defense requires a party to offer both narrative and evidence. In SunSpots, the Respondent failed to “provide any evidence or exhibits in support of his response.” His narrative, however, was partly corroborated by evidence supplied by the Complainant who “provided a copy of a Business Certificate in which Respondent registered as ‘Sun Spots Productions’ in 1980, along with the Massachusetts statute that provides that such certificates, unless renewed, expire after four years.” It is not expiration of the business certificate that is dispositive in disproving a right but whether following non-renewal the Respondent continued to use the unregistered trademark or abandoned it.

The Complainant obtained a certification of registration for its trademark on the Principal Register in 2003, claiming first use in commerce 1988. The disputed domain name, however, was registered in 2006. The Respondent chose not to respond to the Complainant’s supplemental submission to “the Panel Procedural Orders” (authorized under Rule 12) leaving the record ambiguous as to its right to an unregistered trademark and corresponding domain name by reason of priority of use in commerce. The Complainant offered no evidence that its reputation was such in 2006 that the Respondent “knew or ought to have known” of it and its trademark. The Panel found

contrary to Complainant’s conclusory assertions [that it had been well-known throughout the United States and particularly to those in its industry] [] that the issue of bad faith presents a close question. The parties appear to be competitors, each using a ‘sun spots’ name in connection with the same services…. [On the one hand], it appears that the Respondent’s use of the domain name violates paragraph 4(b)(iv) of the Policy by creating a likelihood of confusion with Complainant’s mark and related services.] On the other hand, given that, at least in 1980, Complainant registered ‘Sun Spots Productions,” it might be that Respondent has rights in a ‘sun spots’ name that are, at least in some respects, superior to those of Complainant.

The Respondent in Sun Spots forfeits the disputed domain name not because the Complainant has a registered trademark but because the Respondent and its counsel failed to support the narrative. The absence of evidence in the exclusive control of the Respondent “leads the Panel to draw adverse inferences about whether such evidence exists or what it might show.”

Levine Samuel, LLP. <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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