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No Priority Over Respondent’s Legitimate Interests

Registering domain names composed of dictionary words improves the likelihood of good faith even if they conflict with existing trademarks, Kim Laube & Company Inc. v. RareNames, WebReg, FA0910001291282 (Nat. Arb. Forum December 22, 2009) (<> and <>). If there are any “buts” they depend on the timing of the registration, the proximity of the parties and the contents of the websites. Layby Services Australia Pty Ltd. v. Chrisco Hampers Australia Ltd., D2009-1066 (WIPO November 3, 2009) (<>). As a general rule the more ordinary the words, the heavier the Complainant’s burden to prove bad faith.

NATURES CHOICE is not exactly one of a kind. There are approximately 80 registrations on the Principal Register that either include the term or are composed of the two words (with or without the possessive). The Complainant in Kim Laube is a successor to an earlier registrant who allowed its trademarks to lapse. Those earlier trademarks were composites that included prominent and distinctive device elements. This led the Panel to query “which trademark Complainant is claiming long and continuous use.” The Complainant only applied for registration for NATURES CHOICE after its purchase of the name rights which was many years after the registration of the domain name. There are, of course, documented examples of holders inadvertently losing their trademarks and later re-acquiring them, but in contest with a domain name registrant a declaration of first use in commerce is insufficient (by itself) for priority of right.

To prevail on an argument of “extensive use of the mark” with all that that implies requires more than an assertion. Where knowledge of a fact is within the control of he who asserts it the failure to offer supportive evidence undermines its truth. According to the Complainant it and “its predecessor in interest have been using the trademark NATURE’S CHOICE continuously for more than 22 years, since at least as early as November 21, 1986.” Further, it “states that it acquired the trademark in 2007, at which time the estimated value of the goodwill in the mark was approximately US$500,000 … [and that] since 1986, the mark has acquired significant consumer recognition in the field of animal and pet products. Tens of millions of dollars in NATURE’S CHOICE products have been sold since the mark was adopted.” However, there is “no documentary support for the claim that in 2007, the value of the goodwill in the trademark was an estimated $500,000. There is no proof of the “tens of millions of dollars” of product sold. There are no other indicia that the trademark has ‘acquired significant consumer recognition’.”

The basic principle in UDRP jurisprudence is proof that the respondent has actual knowledge of the complainant’s rights and intended to take advantage of the complainant or its trademark’s reputation. Intent is generally inferable from the surrounding facts and circumstances. “[F]or that reason a complainant must be assiduous to prove its reputation in, and the public awareness of, its trademark even when it has registered trademark rights. That onus rises when the trademark consists of descriptive elements, as in this case” (emphasis added). That a holder would like to have domain names corresponding to its trademark is not grounds to wrest domain names from the respondent first to register. The Complainant in Kim Laube “owns the domain names <> and <> which, albeit that they might not be Complainant’s first choice, nonetheless fully reflect its trademark.”

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