The three issues discussed below have in common factual circumstances that preclude resolution under the Policy. Either the complainant has no registered trademark and cannot prove an unregistered one; or its grievance is complicated by a contract dispute relating to the future ownership of the disputed domain name; or it offers its trade name (composed of a geographic indicator) as a jurisdictional basis for the proceeding.
The cases illustrate complainants clutching for straws. In all three cases Respondents interposed responses and pointed out the deficiences of the complaints. All three complainants failed the initial, jurisdictional test [paragraph 4(a)(i) of the Policy] and the complaints were dismissed.
1. Application for Trademark Insufficient to Support a Right
Certifying in an application that the trademark is “in use” is not by itself proof of an unregistered right. The trademark office does not investigate the truth of a claimed first use in commerce, but when the claim is put in issue, as it frequently is in UDRP cases, the Panel demands evidence that the alleged unregistered right predated the registration of the domain name. The Complainant in Fahim Saleh v. Trey Glauser, FA0909001283115 (Nat. Arb. Forum October 29, 2009) applied for PRANK DIALER a few months prior to commencing the proceedings to capture the Respondent’s <prankdialer.com>, <prankdials.com>, and <prankdial.org>.
According to the Respondent, when “<prankdialer.com> was launched on April 1, 2008, the Complainant’s site PrankDial.com was getting minimal traffic, believed to be non-functioning and did not compete in any way with PrankDialer.com.” While this is clear evidence that the Respondent was aware of a domain name similar to its own it denied any knowledge of the Complainant. But, confusing similarity between two domain names is not the controlling issue. A complainant cannot bootstrap its domain name by subsequently registering it as a trademark. The prudent complainant will register the corresponding domain name at the same time as its trademark application. Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009) is an instance of a complainant unsuccessfully attempting to undo its imprudency in not purchasing the domain name.
2. Business Disputes Outside Scope of the Policy
Not all contract claims are excluded from adjudication under the UDRP. The forum is appropriate for example where respondents are contractually bound to transfer domain names they have registered in their own names on their principal’s or employer’s instructions or are obliged to do so by written agreement. However, the UDRP is not available for contract disputes in which the central claim is ownership of domain names rather than cybersquatting.
In William J. Hopke v. Ellie Chambers, FA0909001282934 (Nat. Arb. Forum October 23, 2009)
(<vuelive.com>) the Panel found “that both parties have presented evidence of rights in the disputed domain name and the central issue in this case centers upon who should be the rightful owner of the disputed domain name.”
Civil or business disputes involving ownership of a domain name as distinct from priority of right to it belong in a court of law.
3. Geographic Indicators Used as a Trade Name Unprotected Under the Policy
Even a holder of a well known trademark composed of a geographic indicator has no superior claim to a domain name used in its generic sense even if its right predates the registration of the domain name. An earlier case in point was Superga Trademark, S.A. v. Gilberto, Publinord S.r.l., D2008-1890 (WIPO February 24, 2009) (<superga.com>, “a hill overlooking the city of Turin (Torino) and the site of an 18th Century basilica and royal tombs.”). In Warendorfer Küchen GmbH v. MDNH Inc., D2009-1067 (WIPO October 16, 2009) the Complainant claims “Warendorfer” as an unregistered service mark, although it is a geographic indicator for a municipality in Germany. The Respondent’s website contains information about the Warendorf, the place.
The Panel list six reasons for dismissing the complaint:
1) Warendorf is a geographical name, used by numerous businesses; 2) “Warendorfer Küchen” is a descriptive term, meaning “kitchens of Warendorf”, and so has little inherent distinctiveness; 3) the Complainant’s tradename consists of two descriptive words in German and does not confer any rights to the two individual words or any derivative of the individual words; 4) the Complainant uses “Warendorfer Küchen” as a business name rather than in the active marketing of its products; 5) there is no evidence of actual confusion by Internet users between the Respondent’s website and the Complainant’s business (such evidence is not routinely required in a UDRP proceeding, but it is one way that a complainant might reinforce the conclusion that a domain name was, on its face, confusingly similar to a mark); and 6) there is no evidence that the sponsored links on the Respondent’s website have ever generated any links to the Complainant or its products.