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Trademark Infringement Outside Scope of the Policy

Just as with current use of trademarks existing in different classes, a trademark holder and a domain name registrant can co-exist in cyberspace using identical or confusingly similar terms. Whether the respondent in a UDRP proceeding is an infringer in a trademark sense is outside the scope of the Policy. The Panel is limited to determining only whether the respondent is guilty of abusive registration of the domain name. The distinction is explored in Advanced Reading Solutions LLC d/b/a Urok Learning Institute v. Vrvv Inc., D2009-1418 (WIPO January 4, 2010). Although the Complainant’s trademark is composed of an unusual combination of letters, “urok” – “you are okay” or “you rock” – it is its badge or symbol in the marketplace; on the Complainant’s trademark application it notes that the English translation of UROK is “charm.” The term is also incorporated into the two disputed domain names, <> and <>. Unusual though “urok” is there is another holder listed on the USPTO database in Class 16.

The Respondent in Advanced Reading is a second generation owner. It acquired <> by purchase from a third party in 2004. It subsequently obtained registration of a stylized version of UROK on the USPTO Principal Register in 2005, but lost it after a successful cancellation proceeding as infringing on the Complainant’s trademark in Class 25 (Clothing). Nevertheless, the Respondent has been “sell[ing] worldwide, through its websites accessible through both of the disputed domain names, rock and roll T-shirts, hoodies, and bell-bottomed jeans which bears its UROK mark” since 2004 (a paragraph 4(c)(i) defense).

There is no issue that the dominant term in <> is identical to the Complainant’s trademark and that the addition of “apparel” is confusingly similar to it. The question is whether Respondent’s continuous use of the domain names registered prior to the Complainant acquiring registration but after its application for the trademark establishes a right or legitimate interest in the domain names. Although the Respondent was aware of the Complainant in 2005 through the cancellation proceedings, it “first received notice of the present dispute [concerning the registration of domain names] when it received a copy of the Complaint” in 2009. The WIPO Final Report (paragraph 172) and UDRP do not condemn innocent or good faith registration where the respondent can show “through business plans, correspondence, reports, or other forms of evidence, that it had a bona fide intention to use the name in good faith.” This concept is built into the UDRP at paragraph 4(c)(i). In Advanced Reading, the Respondent was one better than “a bona fide intention” to use the disputed domain name; it operated a verifiable business.

Unless there is evidence that at the time of registration a respondent has actual knowledge of the complainant’s trademark and registered the domain name to piggyback on its reputation it cannot be said to contravene the complainant’s rights. Although not commented on in the decision, the Complainant’s trademark history includes notices from the USPTO of abandonment of application in 2003 and 2004 before reviving the application in 2005. The USPTO accepted the Statement of Use in 2006. If there is an open question on trademark infringement, however, “it is not the function of this Panel to comment on any such issue.”

Levine Samuel, LLP <>
Gerald M. Levine <>

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