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Descriptive Contraction of Unregistered Trade Names

In science there are multiple examples of people in different locations contemporaneously discovering the same laws of nature, inventing the same mechanical devices and formulating the same mathematical equations. And, in these cases there frequently is no definitive conclusion of priority except to put the laurel on both heads. Trademark law is simpler: the same term can be a source indicator for two registrants offering goods or services in different classes. It is unusual, however, for commercial parties contemporaneously to invent and exploit a non-word.

In Intellogy Solutions, LLC v. Craig Schmidt and IntelliGolf, Inc., D2009-1244 (WIPO November 24, 2009) the parties contemporaneously invented “intellogy”. The Complainant took the non-word to the USPTO and obtained a trademark registration. The Respondents employed it as a domain name, <intellogy.com>. The Panel found that “Domain History and WhoIs Search Results indicate that the Disputed Domain Name was created on February 6, 2000, whereas Complainant’s <intellogy.net> Domain Name was created on November 20, 2000, and Complainant’s <intellogy.info>, <intellogy.org>, and <intellogy.biz> domain names were created on April 1, 2002. Application for a trademark was filed on December 8, 2000. The Respondents contended that they “registered the Disputed Domain Name because it is a contraction of their trademark INTELLIGOLF (which has been registered with the USPTO since 1999) and ‘technology,’ and that they did so in their effort to market and sell the above-named sports-enhancing software.” The Panel found this persuasive: “Respondents’ assertion that they have used the INTELLOGY designation in this way is credible given that Respondents market and sell an entire family ‘intelli-’ named software products and technology.”

The WIPO Final Report states that the “scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or ‘cybersquatting’ and is not applicable to disputes between parties with competing rights acting in good faith” (Paragraph 135(i)). The problem in Intellogy is that in 2008 the original registrant transferred the domain name to another entity which he also controlled. Ordinarily, a transfer is regarded as a new registration; the rule is that a transferee does not enjoy the benefits of its transferor’s good faith. Thus, in considering

Respondents’ evidence, there is a threshold issue of whether to consider only the use by the current registrant, Intelligolf, or whether the Panel also may consider the use by the former registrant, Karrier. Generally, a transfer of ownership of a domain name constitutes a new registration, and panels typically look only at the claimed rights and interests of the current registrant in determining whether that registrant has rights or legitimate interests.

The Panel held that where a transfer does not “effect any material change in the beneficial ownership of the domain name … it is appropriate … to consider [at one time] Respondents’ and the prior, related registrants’ rights and interests in the Disputed Domain Name.” Just as there are clearly factual circumstances that justify treating the current and former registrants as one, so there are cases that justify the opposite. In Certipost NV v. Virtual Point Inc., D2008-1183 (WIPO September 25, 2008), the Panel held that it saw “no injustice in the ‘internal’ transfer of the Domain Name within the wider business group, producing the ‘side effect’ of giving the third party trade mark owner who has been subjected to the bad faith use, an opportunity to invoke the Policy which it would not otherwise have had (because it could not show that the original registration of the disputed domain name had been made in bad faith).”

The decision turns on the transferor’s use of the domain name. In Intellogy, the transferee and the transferor “consistently promoted” the same goods. In contrast, in ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., D2009-0785 (WIPO August 5, 2009) the transferee “effectively abandoned [transferor’s] own prior use and actively sought to associate the Domain Name with the Complainant’s business.”

Gerald M. Levine <udrpcommentaries.com>

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