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Trademark Overreaching and Faux Cybersquatting Claims

Trademarks can be strong in two ways: either inherently distinctive (arbitrary or fanciful marks), or composed of common elements that have acquired distinctiveness (descriptive or suggestive marks). Trademarks can also be weak in two ways: either composed of common elements, or lacking significant marketplace presence other than in their home territories.

Panelists have seen them all, even by respondents alleging trademark rights registered later in time to complainant’s. The Madonna case, Ciccone, p/k/a Madonna v. Parisi and “Madonna.com”, D2000-0847 (WIPO October 12, 2000) is a prime example in which the Panel found the trademark registered in Tunisia was “merely a way of bolstering respondent’s domain name registration.” In other words, a faux registration.

More recently, there is Royal Institution of Chartered Surveyors v. Martin Rushton, D2016-095 (WIPO August 11, 2016) in which the Panel held: “So far as the Respondent’s French RICS Trademark is concerned the Panel takes the view that this trademark was manifestly chosen by the Respondent so as to produce an acronym which corresponds to the Complainant’s trademark.”

But, faux registrations and claims for trademark rights are also found with complainants. In Chicago Restaurant Management Group, LLC v. Fred Latsko / Ideology Entertainment, LLC, 2016-1291 (WIPO August 18, 2016) (<chicagocutblackhawks.com>, <chicagocut.com>, and <thechicagocut.com>) Complainant’s application for CHICAGO CUT was denied by the USPTO but it nevertheless alleged common law rights which the Panel rejected.

The most notorious claims falsely alleging cybersquatting are by trademark owners whose trademarks postdate the registrations of the corresponding domain names, based on the theory they have better rights to the domain names. In fact, as I’ve pointed out in previous essays, these owners have no actionable claims under either the UDRP or the Anticybersquatting Consumer Protection Act (ACPA). Faux claims under the ACPA would also expose them and counter-claiming defendants to statutory damages and attorney’s fees.

Under the UDRP, not all trademarks even if registered are treated alike or have equal dignity. Unexamined trademarks, for example, are treated as unregistered marks. Registrations in U.S. States are unexamined, but so too are registrations in a number of national registries such as Tunisia and Pakistan for example. There are also disputes in which registrations may be abandoned in one jurisdiction but continued in others. Abandonment is not dispositive that businesses formerly owning them lose their rights unless the evidence supports respondents abandoned the business itself, Big 5 Corp. v. EyeAim.com / Roy Fang, FA1308001513704 (Nat. Arb. Forum October 11, 2013) (with dissent; a questionable decision given the UDRP’s conjunctive model but in light of bad faith use Respondent would have had no defence under the ACPA).

But where the business continues in other jurisdictions new trademark owners are disempowered from claiming rights to corresponding domain names. In Jeffrey Kaplan v. Societe des Produits Nestle S.A., FA1606001680748 (Forum July 28, 2016) (<chipwich.com>) Complainant is in the business of registering abandoned trademarks in the United States. Although this is not a faux registration, neither does it give the Complainant any right over the domain name.  This is apparently Complainant’s first venture for a cybersquatting claim, but Nestle maintains the trademark in other jurisdictions (complaint dismissed).

Similar business models registering trademarks for the purpose of claiming corresponding domain names held by others are on the horizon. Of interest in this connection are a recent spate of posts from Domain Name Wire, Online Domain, and Domain Gang calling attention to companies filing questionable trademark applications, including ones that match domain names they don’t own. Andrew Allemann of Domain Name Wire mentioned three companies, Domain King, CKL Holdings, N.V., and Bigfoot.

The concerns addressed by Mr. Allemann are serious and should be kept in mind, but are they overblown and what should domain name holders take note of?  When we look at decisions, it is plain that panelists have noted the concerns. complainants have the burden of proving their claims. Panels in the CKL Holdings case (one so far) and in two Bigfoot UDRPs find the complaints defective; either or both for failure of proof and asserting incredible allegations. In one of the Bigfoot cases the Panel noted that Complainant was professionally represented and awarded a reverse domain name hijacking sanction, and other intimated as much but because the Respondent defaulted decided against a sanction.

CKL Holdings’ complaint for <flaminea.com> was rejected in no uncertain words, CKL Holdings N.V. v. Paul Flammea, D2016-1340 (WIPO August 18, 2016) (<flammea.com>):

[T]he Panel records summarily that the disputed domain name was created a year before the Complainant’s trademark was applied for and nearly two years before trademark registration was granted. There is no evidence the Respondent had any privileged prior knowledge or reason to anticipate the trademark plans of the Complainant or of the trademark’s previous owner.

Bigfoot recently lost two UDRPs (discussed below) and prelude (it appears) several more complaints awaiting decision. More importantly, one of its attorneys posted credentials on his LinkedIn account that domain name commentators found highly questionable and possibly unethical. His original post stated that his duties included “co-existence, consent agreements, to ensure creative resolution of IP disputes, including manipulation of TMs and common law marks to achieve UDRP “reverse domain name hijacking” (emphasis added). When the statement was brought to his attention he cleaned up his account by deleting the emphasized clause and substituting “including administration of trademarks and domains mechanics involving UDRP procedures.”

Whether this attorney does this or not, or precisely what he does in line of duty, “manipulation” suggests an intention to use the faux registrations to claim rights to domain names from holders subsequent in time to the trademark registrations (assuming they become registered). Based on this research domain name holders are cautioned to “take note”:

From the outside, it appears that Gleissner and his companies are trying to use trademarks and UDRPs to get their hands on domain names. The companies have filed three UDRPs that were later terminated and have lost at least three others. If nothing else, people who own domain names that match the trademark applications listed below should take note.

In Bigfoot Ventures LLC v. Khurram Awan, D2016-1306 (WIPO August 8, 2016) (<slized.com>) the Panel found:

In particular, there are assertions as to use of and goodwill in a Benelux trade mark but these assertions are neither properly explained nor evidenced. No attempt has been made to explain the exact way in which the Complainant’s mark has been used and the extent of that use, whether that be in terms of the territories in which it has been used and the magnitude of the economic activity in those territories under that mark. Instead there are simply bare assertions that it has been used in “global commerce” in respect of each of the classes of goods in respect of which the Benelux mark has been registered and that there has been “extensive advertising and commercial use across the global marketplace”. That is wholly inadequate.

As to credibility,

First, the Complainant’s contentions are of themselves commercially implausible. Why would a business based in New York that had (if the Complainant is to be believed) since 2007 continuously used the term “Slized” as a mark in “global commerce”, only seek to register that mark as a trade mark in the Benelux states? Second, the Respondent has brought forward evidence, by reference to websites and social media pages controlled by the Complainant or associated companies, which suggests that this mark has not been used by the Complainant at all.

And reached the “unfortunate conclusion” that

the Complainant misrepresented the nature of its use of the SLIZED mark. In particular, the claim that there has been “extensive advertising and commercial use across the global marketplace” of that mark is at best exaggerated. Obviously, this is something that was highly relevant to the question of whether the Respondent was aware of that mark at the time he registered the Domain Name.

The Panel in the other complaint, Bigfoot Ventures LLC v. Shaun Driessen, D2016-1330 (WIPO August 6, 2016) (<bubblingbeats.com>) found the complaint and proof similarly defective and would have sanctioned Complainant had the Respondent appeared and defended the domain name. Both complaints were filed by experienced counsel, as already noted. The Panel in this second dispute held, first

A problem for the Complainant is that although it refers to its “accumulated goodwill” and its “extensive advertising and commercial use across the global marketplace”, it has produced no evidence of any of it. The annexes to the Complaint consist of no more than a print-out from the Registrar’s WhoIs database, the Registration Agreement, the Policy, the Complainant’s Benelux trade mark registration certificate and a screenshot of the Respondent’s parking page.

Importantly,

There are no sales figures, no advertising figures, no examples of the Complainant’s advertising, no press cuttings. In short, apart from bare assertions, there is nothing before the Panel to demonstrate that the Complainant has ever conducted any trade. Indeed, the only indication that the Panel has as to the Complainant’s possible area of business are the goods and services covered by the Complainant’s trade mark registration, which have been translated as “sound carriers”, “printed matter” and “entertainment called artwork activities (recreation and culture) [sic]; published in electronic or printed form”.

The Panel concludes by stating that “the Complainant should have known that on bare assertions its contentions under paragraph 4(a)(iii) of the Policy must fail.”

Each of these faux registrations (or if not faux, asserting rights where others have priority) rests on a misunderstanding of trademarks, namely the belief that marks are simply names rather than symbols representing earned reputations in their marketplaces. In none of the above claims of right (complainant or respondent) is there any attempt to prove earned reputations. Bigfoot and CKL Holdings have none. Respondents duplicating names of earned reputations and Complainants claiming rights to unearned names are alike in that both fail to understand the evidentiary demands for proving their contentions, and fail.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement here.

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