Tag Archives: udrp

Trademark holder not entitled to domain name registered years before

Arizona State Trailer Sales, Inc. d/b/a Little Dealer Little Prices RV v. World Wide RV, No. FA1003001315658 (Nat’l Arb. Forum, May 7, 2010)

Startups in the process of selecting a company or product name are often frustrated to see that someone else, years ago, registered the .com version of their newly thought-of name. Similarly, companies that have acquired a trademark registration wonder whether they can use their crisp new registration certificate to stomp out someone else who has been using a domain name similar to the company’s new mark.

A recent case arising under the Uniform Domain Name Dispute Resolution Policy (UDRP for short) shows us that the earlier domain name registration is usually going to be on solid ground against a later-arriving trademark owner.

In the case of Arizona State Trailer Sales, Inc. d/b/a Little Dealer Little Prices RV v. World Wide RV, a National Arbitration Forum panelist denied the trademark owner’s cybersquatting claim against another company who had registered the domain name version of the trademark in 2006.

To be successful under the UDRP, the complainant would have had to show:

  • the domain name registered by the respondent was identical or confusingly similar to a trademark or service mark in which the complainint had rights;
  • the respondent had no rights or legitimate interests in respect of the domain name; and
  • the domain name had been registered and was being used in bad faith.

The complaint failed on the first of these three elements. The panel found that the requirement of being identical or confusingly similiar “necessarily implies that Complainant’s rights must predate the registration of Registrant’s domain name.” Since the domain name in this case was registered years before, there was no relief to be had. The request to transfer the domain name was denied.

UDRP loser did not commit fraud on USPTO by saying it was exclusive user of mark

Salu, Inc. v. Original Skin Store, Slip Copy, 2010 WL 1444617 (E.D.Cal. April 12, 2010)

This is kind of a wonky trademark/domain name case. So if that’s not in your wheelhouse, don’t strain yourself.

Plaintiff sued defendant for infringement of plaintiff’s registered trademark. Defendant moved for summary judgment, claiming that the asserted trademark registration was obtained by fraud on the United States Patent and Trademark Office. Specifically, defendant argued that plaintiff misrepresented when it told the USPTO that its SKINSTORE mark had “acquired distinctiveness” (i.e., was not merely descriptive of the goods and servcies) by means of “substantially exclusive” use in commerce.

The court denied the motion for summary judgment.

Defendant had argued that plaintiff committed fraud by saying its use was exclusive. It pointed to a case under the Uniform Domain Name Dispute Resolution Policy (UDRP) that the plaintiff had brought against the user of the domain name eskinstore.com. The WIPO panel in that case refused to find a clear case of cybersquatting.

In this case, defendant argued that plaintiff’s earlier unsuccessful UDRP challenge to a similar mark showed there were third parties using the mark and therefore the claim of exclusivity was fraudulent.

The court rejected this argument, noting that the plaintiff had undertaken significant efforts to protect its exclusive rights in the trademark. (It had sent out an astounding 300 cease and desist letters in the past couple of years alone!)

Moreover, and more importantly, the court noted that the WIPO panel hearing the UDRP complaint specifically declined to determine cybersquatting had occurred, finding it to be a question of infringement better addressed by the United States courts.

Disclaimer in trademark registration sinks UDRP action

Ideation Unlimited, Inc. v. Dan Myers, Case No. D2008-1441 (WIPO November 12, 2008).

A trademark owner who notices that someone else has registered a domain name incorporating the owner’s mark can file an arbitration action under the Uniform Domain Name Dispute Resolution Policy (UDRP for short). This often serves as a quicker and less expensive alternative to pursuing the cybersquatter in court.

To be successful under the UDRP, the “Complainant” has to show all of the following three elements:

(a) the registered domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(b) the “Respondent” has no rights or legitimate interests in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

Ideation Unlimited, Inc. uses a logo with the word PRESCRIPTION COSMETICS. It has a United States and United Kingdom registrations for this logo. But in the U.S. registration the term “prescription cosmetics” is disclaimed. (Trademark applicants are required to “disclaim” any exclusive rights to use terms within their marks that are generic or merely describe the products.”) In the U.K. registration the word “prescription” is disclaimed.

The panel concluded that “[i]f the Complainant has willingly disclaimed any trade mark rights in the entire term ‘Prescription Cosmetics’, it cannot and should not claim to have trade mark rights in that term by virtue of its . . . registration.”

But what about common law rights, you ask? After all, one can support a UDRP action even without a trademark registration. The panel noted as follows:

Of course, it is not necessary for the Complainant to establish registered trade mark rights – it would be sufficient for the purposes of these proceedings under the Policy for the Complainant to demonstrate common law trade mark rights in the term PRESCRIPTION COSMETICS. However in the Complaint, the Complainant relies heavily on the three device marks, and provides little evidence of common law rights or reputation.

The decision underscores the importance of keeping trademark registrations up to date. Presumably, the mark in question here could have acquired distinctiveness by now (it’s been in use since the mid-70′s) so the disclaimer probably isn’t necessary anymore. And the decision also shows the importance of submitting evidence (at least a declaration) showing what common law or unregistered rights the complainant has.

Useful tool for locating UDRP decisions

Enrico Schaefer of Traverse Legal sent me a link to a tool called DomainFight.net, which promises to be very useful. It’s a simple interface to allow one to easily search for decisions under the UDRP issued by both the National Arbitration Forum and the World Intellectual Property Organization. Try it out!