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Registering Trademark With Knowledge that Corresponding Domain Name is Taken

There is not an available, corresponding domain name for every trademark so it would seem prudential for a party before it becomes invested in what it regards as a desirable moniker to research the Whois database before filing its trademark application. The domain name should be purchased before application to avoid the frustration of learning thereafter that it has legitimately been registered by someone else.

The issue is illustrated in three cases from 2009 and 2010. In Success Bank v. ZootGraphics c/o Ira Zoot, FA0904001259918 (Nat. Arb. Forum June 29, 2009) the Complainant argued that it had a superior right to because it owned the trademark and because “ZootGraphics does not own any state or federal trademarks including the term ‘success bank.’ Further, ZootGraphics has not conducted any business using the name ‘success bank’.” The argument [quoting from the decision] Complainant “seeks to stretch [it] to the extreme.” Complainant’s mistake is to equate having a trademark with priority of right to a corresponding domain name. If this were the law (again quoting the Panel) “one could peruse the lightly used or parked domains, initiate a trademark registration application years after the a disputed domain name was registered and then claim UDRP rights in the domain under the first element of the UDRP.”

Similar argument were made in Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009)(< everydayfood.com>) and New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010) (). It may have been the case that Respondents took advantage of generic terms with knowledge of complainants’ prior rights, but unless a complainant is able to establish that respondent had actual knowledge or that the trademark had by the date of the domain name registration acquired secondary meaning the complaint will be denied. In the New York Times case, there was another factor: Complainant waited too long.

Four recent examples of disappointed hopes are reported in Octoberm, November and December of last year, Publicare Mareting Communications GmbH v. G.E.D. Faber/GAOS BV, D2012-1580 (WIPO October 16, 2012); BlankPage AG v. Waleed Altywaijri, D2012-2189 (WIPO November 11, 2012); Beehive.com, LLC v. Alliance Capital Management, D2012-2003 (WIPO December 2, 2012); and LiveOne Group, Ltd. v. Kim KwangPyo / MediaBlue Inc., FA1210001467218 (Nat. Arb. Forum December 10, 2012). “Publicare” is a generic Latin word; “Keetab” is unusual. The other two words, “beehive” and “live one” are generic. But, the greater problem, even if the names were higher on the classification scale for all four is that the domain names were either registered before the trademarks came into existence or their registrations, hence my opening comment on prudence.

The Complainant in LiveOne Group offered 6 points as proof of bad faith. None of them satisfy Complainant’s burden of proving its case, but 3 of them demonstrate ignorance of domain name jurisprudence and should be highlighted as instruction to other complainants about domain name law as developed under the UDRP:

[2] Respondent’s defenses hinge on the fact that it registered the disputed domain name prior to Complainant establishing U.S. trademark rights in the LIVEONE mark. However, past panelists have held that if such a rule were adopted it would allow a Respondent that originally registered a domain name in good faith to continuously and flagrantly exploit a Complainant’s mark.

[With regards to the second sentence, even assuming that some Panel could be cited for the proposition that “continuous[] and flagrant[] exploit[ation of] a Complainant’s mark” by a respondent whose domain name was registered before the Complainant acquired its trademark, it is not the law.  Complainant has to prove both registration in bad faith and use in bad faith].

[3] Respondent renewed the disputed domain name after Complainant had established a large Internet presence and received a registration for the LIVEONE mark in 2010.

[Bad faith is measured from the original registration NOT from renewal of registration].

 [5] Complainant’s trademark registration need not predate the registration of the domain name.

[Applies to the issue of bad faith only on proof of common law right predating the registration of the domain name. Otherwise the statement only applies the issue of standing].

[6] Bad faith is not limited solely to the date of registration of the disputed domain name.

[Incorrect on the law.  Bad faith is measured from the date of registration, regardless of subsequent use which may be infringing].

In rejecting Respondent’s request in LiveOne Group for a Reverse Domain Name Hijacking ruling – the Panel noted it was a “close call” – the Panel included a sentence that obliquely concerns the problem of acquiring a trademark after the registration of the domain name, namely that “Complainant must have realized that the fact that its trademark was registered after the registration of the domain name would pose real difficulties for its success in this proceeding.” It indeed does “pose real difficulties” and that should be a reason to rethink continuing its application for the wished-for trademark; not just because there is no remedy under UDRP, but complainant is locked out of the preferred address in cyberspace.

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