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Timing and Acquisition of Rights for “Intent to Use” Trademark Applications

Holders of trademarks composed of common words not infrequently flatter themselves as to their symbols’ distinction and market reach. It is not a per se violation of the Policy for a domain name to be identical or confusingly similar to a trademark. The violation has to be demonstrated. The key factors are timing of the registrations, geographic distance or propinquity of the parties and the respondent’s demonstrable knowledge of the complainant. Expressions familiar to a trade can be registered but not monopolized. The Complainant in Retail Royalty Company, and AEO Management Co. v. Modern Empire Internet Ltd., FA1103001378458 (Nat. Arb. Forum April 21, 2011) owns the mark 77 and claims to have been selling clothing under that mark for over thirty years. The Respondent registered the contested domain name, <seventyseven.com> in December 2007. The Respondent points out that the expression “77” is “merely representative of a popular ‘lucky number’ which is commonly employed in commerce for a wide variety of goods, including clothing.”

There is an aural but not an ocular similarity between “77” and “Seventy Seven.” The three member Panel passed on whether the domain name was confusingly similar to the trademark and directly addressed the issue of registration and use in bad faith. This is a rare but accepted procedure:

Thus while we are satisfied that Complainant has protectable rights in its 77 trademark by reason of its registration of the mark with a national trademark authority, the USPTO, because we are also satisfied that Complainant has fallen short in its efforts to establish that Respondent has proceeded in bad faith in connection with the registration and use of the <seventyseven.com> domain name, we elect to discuss that issue alone, treatment of the other two heads of Policy ¶ 4(a) being unnecessary.

The issue of standing is complicated because it allows a complainant to maintain a proceeding even though it acquires its trademark later than the respondent registered the domain name. Continuous use of a symbol for more than five years prior to its trademark registration may support a common law right to it, but use in commerce has to be proved not simply alleged. Complainant’s problem in Retail Royalty is that it filed an “intent to use” application for “77” which negates an argument of prior use in commerce. Whether this was intentional or a blunder on the registrant’s part it settled the issue of common law rights, namely that it had none despite its claim that the mark had been used in commerce for clothing for over 30 years:

We begin our examination of the question of bad faith by noting that it is well accepted that, absent exceptional circumstances, where a registrant registers a domain name before a trademark right is established, it cannot be said that the registration of the domain name was in bad faith because the registrant could not have contemplated a complainant’s then non-existent rights.

The Panel points out that there is authority for holding that the relevant date is the filing date of an application for registration, citing Planetary Soc’y v. Rosillo, D2001-1228 (WIPO February 12, 2002) – “this proposition proceeds on the evident basis that the filing of a mark registration application with a competent national trademark authority gives notice to domain registrants of a complainant’s rights in a mark.” But, even where the filing date is used and that date is earlier than the domain name, complainant cannot overcome the “intent to use” basis for the application.

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