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Registering Trademark Without First Obtaining Corresponding Domain Name

Complainants who register trademarks without first obtaining corresponding domain name have no actionable claims against respondents already holding corresponding domain name, at least under the UDRP as traditionally applied. What is meant by “traditional” is that complainant has to prove bad faith in the conjunctive. Yet, despite this obvious truth that trademark rights have to precede domain name registration these claims regularly appear on the docket.

There seems to be two possibilities, namely first-time trademark registrations ––RssMint, LLC, DBA Easy Ads v. Steven Elwell / Corinth Computers Ltd., FA1408001576521 (Nat. Arb. Forum October 7, 2014) –– and rebranding of businesses––SiTV, Inc. d/b/a NUVO TV v. Javier F. Rodriguez, D2014-1143 (WIPO August 14, 2014). Both kinds of claim can be traced back to inattention to that most fundamental of detail: someone else got there first, an avertable disaster since domain name registrations are easily accessible through the Whois directory. The only instance supporting a meritorious defense is against opportunists shown to have advance notice through public announcements or publicity of to-be registered trademarks.

RssMint involved the EASY ADS mark, <>. A great idea except that the Respondent registered the domain name years prior to Complainant acquiring the trademark. Unusual about this case is not the result but the Panel’s departure from the traditional analysis of jurisdiction. The consensus is that a complainant has standing to maintain a proceeding if it has acquired a trademark prior to filing a complaint, regardless that it has no actionable claim. This Panel goes against the grain to deny jurisdiction, although it is a perfectly understandable view:

Paragraph 4(a)(i) of the Policy requires Complainant to show that Respondent’s domain name is identical or confusingly similar to Complainant’s mark. This provision necessarily implies that Complainant’s rights predate the registration of Registrant’s domain name…. Respondent registered the disputed domain name on June 11, 2002, which is many years prior to Complainant’s first use of its trademark and many years prior to Complainant’s filing of its trademark application. As Complainant has not shown that its rights predate the registration of Registrant’s domain name, Complainant has not satisfied paragraph 4(a)(i) of the Policy.

Very unusual also in this case is that the only authority is self-referential, Expert Computers, Inc. v. Name Delegation, FA 787937 (Nat. Arb.  Forum Oct. 24, 2006) in which the panelist chaired the three member Panel, although there are like-minded panelists, for example EDREAMS, Inc. v Arise Company Ltd., D2006-0725 (WIPO July 24,2006) (“[h]aving considered [cited] authorities and the submissions of the parties, the Panel finds that complainant is unable to satisfy the test in paragraph 4(a)(i) of the Policy because it has no trademark rights which predate the date of creation of the disputed domain name.”)

SiTV illustrates a rebranding problem. Complainant has no actionable claim but met the criterion for jurisdiction: “The Complainant rebranded  under the NUVO TV mark in July 2011. There is no evidence in the record suggesting that the Complainant’s intentions were publicly known  until the latter half of 2010, and no plausible explanation has been offered as to how the Respondent when registering the disputed domain  names in July 2008 could have foreseen this development.”

The reference to “no evidence in the record” is an important station to visit because the Panel would have been looking to see whether Complainant could prove a common law right to the mark as a basis for claiming opportunistic infringement. A fuller understanding of this theory can be seen in the WIPO Overview paragraph 3.1 which states that “[i]n 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.” But, Complainant did not argue and the record did not support the theory that would have allowed it to take the corresponding domain name to its trademark.

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. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.

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