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Date of First Use in Commerce in Application for Trademark Not Evidence

As a general rule, there can be no bad faith registration of a domain name registered prior to the existence of a trademark. For a complainant to prevail on the first requirement that it has a trademark right, the date of first use in commerce disclosed in the application must pre-date the registration of the domain name. Where the timing of a trademark is in issue complainant must do more than point to the date of first use in its application. Hidden Values, Inc. v. Spirit Marketing c/o Paul Morrissette, FA1204001437627 (Nat. Arb. Forum May 15, 2012) (KIDS DIRECTORY and). Trademark application filed 2005, registered 2010, citing a first use in commerce 1990. The domain name was registered January 21, 2004.

A representation in a trademark application of an earlier use in commerce than the domain name registration is not an evidentiary fact, but rather a representation to be proved. There is no “evidentiary presumption in favor of trademark registrant.” Under U.S. trademark law, “[t]he allegation in an application for registration, or in a registration, of a date of first use is not evidence on behalf of the applicant or registrant; a date of first use must be established by competent evidence.” 37 CFR §2.122(b)(2).

A representation that the date of first use in commerce is later than the domain name registration is an admission against interest. It cannot be undone Greenline Financial Technologies, Inc. v. Griffin IT Media, Inc. a/k/a Tim Griffin, FA0605000701179 (Nat. Arb. Forum June 28, 2006); Qwizzle, LLC v. Whois Privacy Protection Service, Inc. / Profile Group, D2012-0636 (WIPO May 6, 2012). Where the critical date is the date of filing, a respondent’s argument that it registered the domain name before approval of the trademark application is without merit, since the effective date for an “in use” trademark registration is the date of its application. Planetary Soc’y v. Rosillo, D2001-1228 (WIPO February 12, 2002). Where the critical date is first use complainants have been hoisted where their alleged dates of first use in commerce are contradicted by their trademark applications. inExile Entertainment, Inc. v. Telecom Tech Corp., D2009-0655 (WIPO July 3, 2009).

To establish the truth of the representation of common law rights preceding the domain name registration complainant has to provide documentary or other evidence to support the date of first use in commerce. The Panel in Mariposa Ltd. v. Stonecutter, Don Sawtelle, D2010-0200 (WIPO March 28, 2010) found that

The disputed domain name was registered by Respondent on May 12, 1995. Complainant’s MARIPOSA trademark was registered by the USPTO on October 28, 2008, some 13 years following registration of the disputed domain name.

Complainant’s rested its case on first use and first use in commerce of its trademark in 1980:

However, Complainant has presented no documentary evidence in this proceeding that would support a claim of trademark use in 1980. Since Complainant’s trademark term is otherwise used as a geographic term, and is also a commonly used term in the Spanish language (for “butterfly”), Complainant would have to present substantial evidence to establish secondary meaning in connection with its trademark in order to establish rights based on use (i.e., common law rights) dating back prior to May 12, 1995.

Absent documentary or other evidence there can be no reasonable basis for concluding the complainant either held rights to the trademark earlier than the registration of the domain name or if it did that respondent could have been aware of it and had the trademark in mind in registering the domain name. “[C]laimed dates of first use are meaningless without supporting evidence.” eSnipe, Inc. v. Modern Empire Internet, Ltd., D2009-0719 (WIPO August 5, 2009).

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