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Trafficking Heavily with Appropriated Trademarks

Domainers brought many times to the bar for abusive registrations of domain names are sometimes serendipitous in spite of themselves, FJ Enterprises v. Belize Domain WHOIS Service Lt, FA0910001291660 (Nat. Arb. Forum December 8, 2009) with <huntwise.com> and Kay Hill, Ltd. v. Texas International Property Associates- NA NA, FA0805001190984 (Nat. Arb. Forum July 9, 2008) with <tabootoys.net>. But there is generally a great distance between their successes. The occasional wins occur when – and this is where serendipity comes in – the domain name is registered before the complainant acquires or fails to prove its common law rights in the trademark. Or, perhaps, success comes by trolling new trademark applications for potential winning combinations of words which the applicant has neglected first to register as a domain name, Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009) for “everydayfood.”

So frequent is Texas International Property Associates a respondent that a recent Panel noted that “in the case of some persons involved [in] the secondary market in domain names, the term ‘cybersquatter’ is applied unfairly. However, in this case, the term ‘cybersquatter’ accurately describes the Respondent,” Les Parfumeries Fragonard v. Texas International Property Associates, D2009-0835 (WIPO September 2, 2009) (2 successes in over 70 appearances in 2009 alone). One of the two 2009 successes occurred because the complainant failed to allege and prove how the domain name was being used. Belize Domain has had 2 successes in 75 appearances.

The Complainant in FJ Enterprises lost because it acquired its trademark after the registration of the domain name. The Respondent won in the old fashioned way, getting there first, at least there was no evidence to the contrary. The Complainant in Kay Hill lost because it failed to marshal evidence of its common law right to a subsequently obtained registration for TABUTOYS.COM. It imagined that its first use in commerce declaration in the trademark application gave it priority in the race to the domain name registry.

First to register a winning combination that preempts a later trademark cannot be later captured by the complainant despite the respondent populating the website with links to complainant’s competitors. In FJ Enterprises the Panel found that the “disputed domain name resolves to a website that displays hyperlinks to third-party websites, some of which directly compete with Complainant.” But this finding is only sufficient to prevail on the lack of rights or legitimate interests requirement.

It is interesting in these cases to note that complainants appear to be imitating the domain name rather than the other way round. More than cursory investigation and a better understanding of domain name law is necessary for complainants. It is surprising that before filing its registration the FJEnterprises Complainant failed to research whether the prospective trademark was in use as a domain name; or in Kay Hill that Complainant did not present its best case; or in Martha Stewart that the company failed to register the corresponding domain name.

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