The USPTO database reports over 20 records containing the phrase “market watch” some of which are presently owned by Dow Jones. Dow Jones is the registered owner of a stylized form of the phrase which it acquired by assignment. It also has a trademark for <marketwatch.com> similarly acquired by assignment. The disputed domain name is <marketwatch.net> which was registered prior to the trademark registrations of Dow Jones’ assignors but in the same time frame Dow Jones alleges was the phrase’s first use in commerce. Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, D2009-1033 (WIPO October 18, 2009). Bad faith is not presumed; it must be proved.

The record indicates that when Dow Jones’s predecessor submitted its applications for registration of the MARKETWATCH and MARKETWATCH.COM service marks to the USPTO in 2002, “those applications were initially rejected by the examiner because the asserted marks appeared to be merely or commonly descriptive.” Applicant’s counsel was able to overcome the examining attorney’s skepticism by arguing that the phrase “had acquired secondary meaning in the service marks, or that the marks were suggestive.” Dow Jones did not provide any documents from the USPTO as to why the registrations were eventually accepted, but the filing date was four and a half years after the registration of the domain name. A later acquired trademark right precludes bad faith registration. In this case, Dow Jones pulled a card from its sleeve, arguing that the phrase was first used in commerce a month earlier than the registration of the domain name. A review of the trademark applications indicates the basis was “intent to use.” However, “the date of registration does not relate back to the date that the application was filed unless there is clear evidence of use in commerce sufficient to create a secondary meaning in the mark,” NAOP LLC v. Name Administration Inc. (BVI), FA0808001220825 (Nat. Arb. Forum October 7, 2008).

Ordinarily, when a complainant argues for common law protection by reason of a use in commerce earlier than the registration of the domain name the allegation must be proved; the evidentiary trail must be complete. An assertion is not proof. “Complainant argues that Respondent registered the disputed domain name in December 3, 1997, one month after the public launch of the ‘CBS Market Watch’ website.” However, “the identifier ‘CBS’ that precedes the descriptive terms ‘Market Watch’ distinguishes this service mark usage from the descriptive terms ‘market watch’ standing alone.” Indeed, there are other “market watch” trademarks preceded with distinctive identifiers, “ISO,” “TBH,” “SMITH,” etc. “The fact that a predecessor of Complainant launched a website distinguished by a well recognized news service provider identifier, ‘CBS’, does not provide substantial instruction regarding the extent to which the descriptive terms ‘market match’ were recognized as distinctive by the public in December 1997.”

In any event, and more important from an evidentiary point of view, “Complainant has not submitted evidence to show that this website was actually launched in November 1997.” The weaker the trademark, the greater must be the showing that the respondent registered the domain name with knowledge of the complainant’s trademark and to take advantage of it. Lacuna of evidence is read against the party with the burden to produce it.