TM as the basis for a UDRP

[Theo]

From my understanding, one has to display use of a TM in order to establish a claim to a domain via UDRP? In other words, registration of a mark is not necessary as long as there was use of the mark (in commerce etc).

So what happens if a tm holder proceeds with registration of the mark, long after the domain under dispute gets registered, but cites prior use of the mark (in their registration)?

For example: tm holder starts using the mark in 2000, the domain under dispute gets registered in 2002 and the trademark is registered in 2004, citing use of the tm since 2000.

 

[Busynic]

It's a good question.

In a bricks and mortar world the prior and existing use is allowed to continue as they have already done.

The potential problem with domain names is that a "change" in ownership or more importantly site content, could remove the pre-existing condition.

The prior use of the mark rule does not mean the TM holder can go and demand longer name holders (in a business sense) from operating in the region they have always operated.

Of course the whole region and ubiquitous nature of the internet then throws all the rules and regulations into chaos. Which is predominantly why people are still debating the "asset" category of domains (virtual real estate argument v only a trademark).

I'll make the caveat that I am not an attorney, so any opinions are simply conjecture on my behalf.

Lastly the most fundamental test must rest in the classification of business use if domain names are ever to be classed in the same category as existing businesses do now.

Building a business around domain names is probably the greatest protection - anything short of that is going to always be the subject of accusations and opinions (rightly or wrongly).

I can see a future where domains are regionalized to the point of county's or cities in order to give all businesses an opportunity to trade in their business name. The TLD's on the other hand are in space that will always command global attention.

TM fights are won by those with the deepest pockets. The internet is now affecting big business and governments all over the world. TM rules are just a means to pretend a cat fight is legitimate.

2 cents worth of opinion.

 

[Theo]

Thanks for your input; however my question is date-specific and not a broader discussion about tm's. It has to do with the potential of retroactive enforcement of a tm, which is registered after the domain under dispute was registered.

 

[DNQuest.com]

Date of first use is when the trademark is considered "effective", so the 2000 date would take precedence and a valid basis for a challenge. A TM DOES NOT have to be registered to be afforded protection under TM laws.

 

[Theo]

I should be more specific.

The tm is pending registration, with a claim of prior use predating that of the .com

The applicant holds the .org, I own the .com a year before they applied for the registration of the mark (there are a couple of other TLDs that belong to others).

The tm classes applied for are unrelated to what I use the .com for. What would be an effective response strategy in the likely event of a UDRP?

 

[Gerry]

Sounds like a PM to JB or Brett or Dave is in order.

 

[Dave Zan]

What would be an effective response strategy in the likely event of a UDRP?

Maybe you can show them this?

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0823.html

Or...tell them to pound sand.

 

[jberryhill]

So what happens if a tm holder proceeds with registration of the mark, long after the domain under dispute gets registered, but cites prior use of the mark (in their registration)?

You are unnecessarily complicating the question.

Take these dates:

Claimed date of first use: X

Domain Registration: X+N

Trademark Registration: X + N1

where N1>N

Now, take the same situation, and forget about the TM application. What the Complainant has to show, as a threshold matter, is that they owned a relevant trade or service mark right as of the date of domain registration. You appear to understand that one doesn't have to have a registered mark in order to demonstrate ownership of a trade or service mark.

The trademark registration is evidence of ownership of a mark at the time the registration issues. It is essentially irrelevant to whether the claimant can show ownership of a relevant right at the time the domain name was registered.

Merely making an ex parte claim of first use in a TM application is not evidence of ownership of a relevant right as of the claimed date.

Whether they will "win or lose" on the facts stated is indeterminate. The situation simply reduces to any other common law claim scenario as of the date the domain name was registered. The trademark application, and the first use date claimed therein, is an unnecessary distraction.

 

[Theo]

As I said, I am not concerned at this point as my content and theirs are not in related classes at all. I caught the .com in a drop a year before they even applied for tm registration. There is no way for me to predict the future; they did not claim tm use in the days prior to the tm registration application. In other words, during the two years since my registration they did not approach me to claim tm use. Furthermore, their tm application was denied initially because they claimed it was "for all lawful purposes" with no selected classes etc. They had to go back and amend the application. It all looks like an amateur attempt to eventually extort the .com - I am simply preparing in advance. Furthermore, the domain is an obscure but valid dictionary word that is non-descriptive of goods or services.

 

[DNQuest.com]

For example: tm holder starts using the mark in 2000,

This is the only line that matters in this scenario.. you admit they were using the mark in 2000. That could be the point where they have a recognized common law TM. The domain was registered in 2002, so they could have a claim on the domain (yes, there are other factors involved, but your question is only about dates so I will keep it to that.)

 

[Theo]

The mark was not used in 2000, their domain was (the .org). There was no "mark", just a web site of collective resources at that URL, under a title that contained the specific word.

In fact, it was not until after my acquisition of the .com that they started using the mark. I did my archive.org research.

I am pretty certain the .org holders bid against me in the dropcatcher's auction and failed to acquire it.

Note: the dates are used as an example only and differ from the actual dates.

 

[jberryhill]

There was no "mark", just a web site of collective resources at that URL, under a title that contained the specific word.

Save your research. It wouldn't be the first time someone lied about a first use date for the purpose of a bogus attempt to obtain a domain name.

 

[DNQuest.com]

The mark was not used in 2000, their domain was (the .org). There was no "mark", just a web site of collective resources at that URL, under a title that contained the specific word.

In fact, it was not until after my acquisition of the .com that they started using the mark. I did my archive.org research.

I am pretty certain the .org holders bid against me in the dropcatcher's auction and failed to acquire it.

Note: the dates are used as an example only and differ from the actual dates.

Gee, I'm sorry, I guess I should not have properly read you posting (these are your words)

"For example: tm holder starts using the mark in 2000"

Are you changing the example now? You state "TM holder" then you state when he started using it. I am just basing it off you timeline that you gave and the "facts" as you gave them.. You even later posted...

"however my question is date-specific "

You seem to lose your consistantcy in your presentation. Then you contradict yourself later on. Just trying to help, but if the story keeps changing how can we?

 

[Theo]

Hey DNQ, I don't need passive-aggressive commentary, thank you very much. If you can't understand the difference between what they claim in their tm application and what they did in reality in the years prior to the application, then obviously your feedback is as good as my will to disclose information.

Please refrain from an attitude-laden response; if your time is valuable carry on with your daily routine and let more qualified people such as John to make laconic but useful comments.

10-Q.

 

[DNQuest.com]

For example: tm holder starts using the mark in 2000, the domain under dispute gets registered in 2002 and the trademark is registered in 2004, citing use of the tm since 2000.

I am sorry, I will let smarter people respond to this because obviously I do not understand your example (referenced above). I do understand claims of prior use as opposed to actual use, but you are the one that said they used it at a certain time. Just letting you know that you were not being consistant with your later postings (your quote: The mark was not used in 2000" yet your example says they did) and was looking for clarification.

 

[jberryhill]

I don't need passive-aggressive commentary

In fairness, the facts as stated were "tm holder starts using the mark in 2000"

What we are going to look at in that situation is the extent and notoriety of that use, the geographic region of that use, and most importantly the degree of distinctiveness or inherent distinctiveness of the claimed mark etc. In a UDRP context, the threshold for the first criterion can be pretty low.

I have a pending dispute proceeding that follows a similar fact pattern. The Complainant claims to have been using the mark prior to registration of the domain name, but all of their evidence of use (and their UK TM registration) post-dates registration of the domain name. The case went to the panel a week or so ago, and after messing around with that case for a month, I *still* don't know when the Complainant started using the claimed mark. My bottom line on that one is that if the Complainant did not provide adequate evidence, and we can't even figure out, then we can't just assume the Complainant was in fact using the mark simply because they say so.

I'll dig up this thread when the decision comes out.

(although there are a couple of other issues such as a graphical presentation of the claimed mark, on which the decision may be based)

 

[Theo]

DNQ, I made no reference to your intelligence. Yet another misquotation.

Unfortunately, I cannot disclose the exact details for obvious reasons. However, it's a case of preparing for an attempt to extort the domain based on the registration of a mark that was never used as claimed, nor was it enforced - prior to its application for registration.

John, thanks for confirming that each case can be unique or closely linked to others, depending on the timing and the conditions of the use & registration. I suppose I will wait it out.

 

[carlton]

What we are going to look at in that situation is ... the geographic region of that use

I was going to mention this and saw your post. There are useful technicalities to TM law that actually work to the registrant's advantage.

 

[Dave Zan]

The Complainant claims to have been using the mark prior to registration of the domain name, but all of their evidence of use (and their UK TM registration) post-dates registration of the domain name. The case went to the panel a week or so ago, and after messing around with that case for a month, I *still* don't know when the Complainant started using the claimed mark. My bottom line on that one is that if the Complainant did not provide adequate evidence, and we can't even figure out, then we can't just assume the Complainant was in fact using the mark simply because they say so.

That's also what I figured. It's just that I also thought posting a recent one
detailing the things Acroplex mentioned here so far will at least give an idea
or so.

Of course, it's not some absolute ruling that how this one went will dictate
how a similar one will go, especially if just one small fact might make a very
big difference. As you said before, after all, it's panelist-dependent.

Looking forward to that upcoming decision, John. Now it wasn't filed summer
by any chance, was it?