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Proving Trademark Acquisition

“Pay-per-click websites” (noted the Panel in Business Filings Incorporated v. John Thalacker D/B/A Traffico, D2010-1332 (WIPO October 1, 2010)) “are often found not to be bona fide offerings of goods or services, but this is not always the case.” It continued that the “issue turns primarily on the content of Respondent’s website at a particular point in time and whether Respondent’s use of the Domain Name was infringing or impairing Complainant’s trademark rights at a given time.” So, for example, if a domain name registered prior to complainant’s acquisition of its trademark  dabbles in different goods or services the respondent’s interest is likely to be legitimate. If the timing is prior but the content appears to take advantage of the trademark the respondent is unlikely to prevail against the complainant’s prima facie case. In Business Filings the Panel “ believe[d that] the record in this case is [in]sufficient to make these calculations with any precision.” However, the Panel ruled in favor of good faith registration. There are a couple of reasons for this, but one is particularly noteworthy.

The Complainant alleged that it had been offering its services prior to the Respondent’s registration of <bizfiling.com> through its own domain name at <bizfilings.com>. It had also (unsuccessfully) applied to register BIZFILINGS.COM as a trademark prior to the registration of the disputed domain name, but as an “intent to use” filing. The USPTO rejected the application after the registration of the disputed domain name. There was no evidence that the Respondent was aware of the Complainant. Subsequently, the Complainant filed another “intent to use” application which was accepted based on “acquired distinctiveness.” The earliest date of “use” post-dated the registration of the disputed domain name. The Panel rejected the Complainant’s argument that the first filing was irrelevant – “the Panel finds otherwise” – and had this to say:

The history and resolution of the BIZFILINGS.COM application in the USPTO suggests that, as of the time in question there, Complainant did not consider “bizfilings.com” to be a trade or service mark in actual use in commerce (as Complainant filed its initial application on an Intent-to-Use basis), that the USPTO did not consider “bizfilings.com” to be a protectable trade or service mark because it was merely descriptive of services offered, and that Complainant was not able to persuade the USPTO that it had protectable trademark rights in “bizfilings.com” on grounds of acquired distinctiveness as a trademark or service mark because “bizfilings.com” was not functioning as a trademark or service mark.

Although it does not often arise, a trade name is not protectable, unless it functions as a trademark. “An Internet address [which may be thought of as equivalent to a trade name] and a trademark are not per se the same thing.” The Panel continued that a “web address is not in itself protected by trademark law.” The “intent to use” application is effectually an admission that the symbol is not associated at that time with any goods or services. A complainant must be particularly persuasive not to have its admission counted.

In Business Filings the Complainant offered “statistics on the number of hits on, and unique visitors to, its site during the period from 1996 to April 2002.” But, the Respondent “produce[d] strong evidence that ‘bizfilings’ was not in fact being used as a trademark during this period.” Rather, it “appear[ed] to have used other ‘marks’ or denominations, including Business Filings Incorporated and BFi, as apparent service marks identifying its website, with ‘bizfilings.com’ functioning only as a web address until some later time.” The similarity of domain name (even if confusing) is irrelevant because “the Policy does not protect one domain name from another’s use of a similar domain name.”

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

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