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Prior Business Relationships

The UDRP provides a remedy for abusive registrations of domain names, including against parties formerly related, but jurisdiction does not extend to disputes or circumstances concerning past relationships. The Respondent in Feline Instincts, LLC v. Feline Future Cat Food Co., Inc., FA0906001270908 (Nat. Arb. Forum October 2, 2009) claimed that prior to partnering with the Complainant it had used the term “instincts” so that in registering <felineinstincts.info> it was returning to its base. At the same time it registered <catinstincts.com>. Its history in the feline food industry of using “instincts” gave it a right or legitimate interest in the domain name. It was entitled to connect its present with its past. And why not? Because, after the business relationship ended the Complainant registered FELINE INSTINCTS with the USPTO. It did not have a trademark registration and did not use the term “cat instincts” but contended that substituting a synonym was a violation of its trademark rights.

It may be that a party, consciously or not registers as a trademark a term invented by the counter party. In Armor Games Inc. v. — A / A, D2009-1027 (WIPO September24, 2009), for example, the Complainant registered ARMOR GAMES as a trademark after an industry announcement by the Respondent that he was changing his domain name to “armourgames.” When the Respondent found that the Complainant had registered <armorgames.com> – the American spelling – he registered <armourgames.com> – the Canadian spelling. “In all the circumstances it seems to the Panel that at the date of registration of the Disputed Domain Name the Respondent had a comparable right or legitimate interest in the Disputed Domain Name to the Complainant.” If there is an issue outstanding it does not belong in a UDRP proceeding.

The same can be said of the Respondent’s claim in Feline Instincts that it had a priority on the use of “instincts” in connection with feline food, except intervening history affected the parties’ rights. The domain names that included the trademark were registered in bad faith because the Respondent was aware that the Complainant had acquired rights it was entitled to invoke under the Policy. While the Respondent was free to challenge the Complainant’s registration of FELINE INSTINCTS in the USPTO that action was for another day, in another forum. Substituting “cat” for “feline” however was a threshold issue. The Panel found that the substitution was neither identical nor confusingly similar to the Complainant’s trademark, thereby doing what arbitrators are generally said to do, giving a Solomonic decision, finding bad faith for the “feline” domain names and dismissing the complaint for the “cat” domain names.

Gerald M. Levine <udrpcommentaries,com>

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