Domain names identical or confusingly similar to trademarks are not for that reason infringing another’s right. It is basic UDRP law that preexisting or concurrent rights (there being no evidence of opportunism) are sufficient to defeat a claim of abusive registration. This is not undermined by a respondent failing to comply with its statutory deadline. It continues to enjoy its benefits regardless of having its trademark canceled for failure to submit a Section 8 affidavit. It affects a respondent only to the extent that it loses (if it has one) its trademark registration . Otherwise, its right or legitimate interest in a domain name is not dependent on its having a trademark but in its using the domain name for a bona fide offering of goods or service “before notice” from the trademark holder [paragraph 4(c)(i) of the Policy]. Trademarks and domain names have in common pithy lexical arrangements that sometimes conflict but also allow for co-existing rights.
“Before notice” applies to respondents whose legitimate interest accrues by reason of their business activity on the Internet (which is the more usual application of the defense) as well to those respondents having a registered or unregistered trademark priority in the disputed term – a legal right rather than or in addition to a legitimate interest. The Respondent in Denis Freiden v. 411WEB Directory, FA1005001323356 (Nat. Arb. Forum June 18, 2010) for example appears to have both a “right” (as assignee of a registered trademark MYCITY) and a “legitimate interest” in the disputed domain name. Complainant nevertheless argues that its newly registered trademark MYCYTY (a deliberate misspelling of “city”) trumps the Respondent’s <mycity.com> because it has a present trademark and the Respondent (presently) does not. The parties are in competition in the online directory business. A current application by the Respondent has been indefinitely suspended.
On the issue of the Respondent’s “trademark right” as alleged assignee of MYCITY, while the facts are not entirely clear it is certain that there was a registration for that trademark, although now canceled. The USPTO records show that the trademark holder for MYCITY (name of the assignee not disclosed) failed to file a Section 8 affidavit of continuing use between the 5th and 6th years (15 U.S.C. 1058(a)). Although the Respondent offered no evidence to prove that it was the assignee of the trademark (it only asserted that fact), the Complainant at least “acknowledge[d] that the Respondent’s rights [if it had any] date back to 1995 through the lapsed Trademark Registration.”
At worst, therefore, the Respondent in Denis Freiden is operating its business without a registered trademark, which it does not need. However, it established its right or legitimate interest from its use of the domain name “as early as October 31, 2004 [before the first use in commerce of the Complainant’s MYCYTY], and [it] showed that the use continues to the present day with the same mark and logo displayed at <mycity.com>.” The Respondent had both a preexisting as well as (arguably) a concurrent right to the domain name.
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com