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Proof of First Use in Commerce Earlier than Domain Name

Ordinarily, a domain name registered prior to the complainant’s acquisition of a trademark could not have been registered in bad faith “because the registrant could not have contemplated the complainant’s then non-existent right,” WIPO Overview paragraph 3.1. The trademark and disputed domain name in Spacebound, Inc. v. Amaben Internet Services Inc., D2011-1403 (WIPO October 3, 2011) are PRICE PLUNGE (registered June 21, 2011, application filed April 10, 2010, first use in commerce December 12, 2010) and <> (registered February 24, 2011). Complainant registered <> on April 5, 2010. The Respondent defaulted.

Default in answering the complaint, however, does not lead to an automatic ruling for complainant. Brent Redmond Transportation, Inc. v. SSI Express, D2008-1765 (WIPO December 30, 2008) (“Unlike in civil litigation in the United States of America, failure to file a response in a Policy proceeding does not constitute an admission of any matter pleaded in the Complaint or result in the Policy equivalent of a default judgment.”) A complainant does not prevail on its pleadings alone anymore than a respondent forfeits the domain name for failing to answer the complaint. VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000). While default may be a factor in assessing the respondent’s right or legitimate interests in the domain name and its intention in registering it, it is not by itself an admission of bad faith.

The parties in Spacebound are respectively in the U.S. and Canada. There is only circumstantial evidence that the Respondent had any knowledge of the Complainant or its trademark, but the similarity between domain name and trademark is suspicious. The combination of “price” and “plunge” is not common although the words are. The sole difference between the domain name and the trademark is the hyphenation. That a domain name registration precedes the certificate of trademark is a factor but not conclusive of good faith. The WIPO Overview has an “however” which reads:

In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.

The evidence in Spacebound (such as it is) consists of negatives:

[T]he Respondent does not have a clear identity, and its address is effectively a post office box. It also appears unlikely to the Panel that the Respondent can have registered a domain name so closely similar to the Complainant’s mark, but had no awareness of the Complaintant’s mark or its business. Further, as noted above, the Respondent has chosen to submit no formal response. As such, the Panel considers that it is reasonable to draw a negative inference from the Respondent’s failure to reply.

It is also a negative that the domain name does not resolve to an active website. It is thus open to the argument that “it is not possible to conceive of a circumstance in which the Respondent could legitimately use the disputed domain name.” An active website offers a clue to a respondent’s identity and the nature of its business. In Spacebound Respondent’s post office box address is a strip shopping mall. For the Panel, it appeared “unlikely … that the Respondent can have registered a domain name so closely similar to the Complainant’s mark, but had no awareness of the Complaintant’s mark or its business.”

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