It is out of the ordinary for respondents in UDRP proceedings to have registered trademarks; it is more so that parties should also be in the same business. It may be suspicious that the later to register was unaware of the earlier but domain name registrants are under no duty to search trademark databases to avoid possible infringement of another’s rights. There is no application of constructive notice. There is a rare line of cases in which respondents have been found to bolster their rights or legitimate interests in disputed domain names by registering trademarks in foreign jurisdictions. The “Madonna” case illustrates why subsequent trademarks registered solely to escape the consequences of cybersquatting can be disregarded, Ciccone, p/k/a Madonna v. Parisi and “Madonna.com”, D2000-0847 (WIPO October 12, 2000).
However, in a contest between two trademark owners “Complainant’s trademark [cannot be considered to have] a higher level of distinctiveness or protection [than the subsequently registered trademark].” Jobvertise, Inc. v. Oscar Moreno / Diversity Job Seekers, LLC., FA1507001629481 (Forum August 24, 2015). In this case Complainant owns JOBVERTISE registered in 2001 and Respondent owns JOBERTISING.COM registered in 2008, both with the USPTO. The disputed domain name is identical to respondent’s trademark, <jobertising.com>.
Although Complainant frames the issue as cybersquatting the real dispute concerns the similarity of trademarks but there is no jurisdiction the UDRP to question trademarks properly registered with national registries. It may be true as Complainant alleges that the “disputed domain name prevents Complainant from reflecting its trademark in the corresponding domain name” but complainants have no absolute right to own corresponding domain names.
ICANN stated in its Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, Paragraph 4.1(c) that
Except in cases involving ‘abusive registrations’ made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide.
It incorporated this policy into the UDRP at paragraph 5 of the Policy:
All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.
While respondents have no duty to investigate and are not charged imputed knowledge of another’s trademark rights the same is not true of complainants. Trademark owners claiming cybersquatting by respondents with rights to their own trademarks have constructive notice of subsequently applied-for trademarks that may infringe their rights. It is because constructive notice applies to them that services exist to monitor new applications in national registries to alert owners to possible confusing trademarks so they can oppose conflicting registrations.
The Panel in Jobvertise correctly noted that “Complainant had the opportunity to oppose. Nonetheless, no opposition was filed against Respondent trademark registration.” The failure to oppose has consequences, namely that the application advances to registration. See Angels Baseball, L.P. v. Lee Dongyeon, FA 925418 (Nat. Arb. Forum May 14, 2007) (Respondent registered ANGELS in South Korea and purchased the corresponding domain name, <angels.com>). Panelists have no authority to rule on the validity of trademarks; they are limited as noted in the ICANN Report.
Under the circumstances there are two possible lines of reasoning in such cases: either dismiss complaint on jurisdictional grounds; or, as the Panel did in Jobvertise explain why Complaint cannot succeed:
The Panel finds that despite Complainant’s allegation regarding secondary meaning, well-known status and notoriety, no evidence was filed on that regard. Hence, the Panel cannot consider that Complainant’s trademark has a higher level of distinctiveness or protection, since all the aforementioned standings have to be duly proven.
In any event, the Panel continued
Both Complainant’s and Respondent’s trademarks have peacefully coexisted for at least seven (7) years. In addition, Complainant should have known of Respondent’s trademark in 2008, when the USPTO granted Respondent’s trademark registration.
Hence, a claim brought after eight (8) years of domain usage by Respondent has a higher burden for Complainant when proving the bad faith registration element. However, in this case, Complainant did not file any convincing evidence on that regard.
On the contrary, Respondent submitted sufficient evidence to persuade the Panel that it registered its trademark and the corresponding domain name before “any notice” for the simple purpose of “providing a valid and legitimate service to consumers based upon its trademark rights.” Complainant submitted no evidence that this was not true:
Complainant did not provide evidence that (i) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name; or (ii) Respondent registered the disputed domain name for the purpose of depriving Complainant of use of the trademark online, and benefitting financially from the sale of competitor’s products; or (iii) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant’s trademark.
In deciding to explain why a second trademark registration is unassailable in a UDRP proceeding the Panel usefully complements the reasoning in Madonna. When a trademark registration is not for pretense of ownership its validly is beyond the scope of the Policy; and probably not actionable in a court of competent jurisdiction for the reasons stated in the Panel’s decision.
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here