TM denied by USPTO - but can complainant still refer to "common law" TM in UDRP?

tonyk2000 · Mar 5, 2007

An unusual case. The complainant, "XYZ Flowers LLP", is selling both flowers and DVDs. They applied to U.S. TM for "xyzflowers" in both "Flowers" and "DVDs" classes.
Their application in "flowers" class was denied by USPTO (being similar to another existing TM). As such, they amended their TM application for "xyzflowers" -
now it is in "DVDs" class only. The TM is not yet registered anyway.
The problem is that they are starting UDRP for xyzflowers.com (currently parked with flowers links) and referring to their pending TM application in "DVDs" class.
For UDRP purposes "common law" TMs can be taken in account, but in this case it is not clear - should the UDRP panel agree that they have "common law" rights
to "xyzflowers" mark in connection with flowers even though it is already officially denied by USPTO?
Or, should the panel consider their TM rights (if any) in connection with DVDs only, as this DVD-only activity is listed in the pending TM application?
Does it make sense for Respondent to refer to this "USPTO-denied" fact in the response at all?
Any advise would be greately appreciated!

all names and domains are "maid-up"...

Theo · Mar 5, 2007

Sounds like they are over-reaching and they might get slapped with a reverse hijack attempt if the respodent is competent in their response.

DNQuest.com · Mar 6, 2007

In UDRPs, The complainant needs to show rights or greater rights to a name. Just because they were denied a "registered mark" does not mean they do not have rights to the domain. If they have been in business and using the name "XYZ Flowers" and can prove that the name has aquired secondary meaning, they may be able to prove they have rights to a name.
In the post, you seem to state they are using the name in commerce for flowers and DVDs. You also state they are a LLP.

As far as using a USPTO denial, this case may not help because it appears it was not denied because it was descriptive, but because it was too similar to another registered mark. Now, if it was denied because it was too descriptive, that is another story.

tonyk2000 · Apr 19, 2007

The complaint was recently decided by National Arbitration Forum.
It was denied and the Panel indeed issued a finding that Complainant has engaged in Reverse Domain Name Hijacking!
Moreover, the Panel confirmed that domain parking is a bona fide offering of goods or services pursuant to Policy.
For security reasons, I would not post the direct link to NAF page, who knows maybe another complainant would be able to associate my forum(s) nickname with the respondent in this case, but it can be found very easy at
http://domains.adrforum.com/decision.aspx using the search criterias 'claim denied', decision date 04/18/2007. The domain name is 2letters acronym plus dictionary term dot com.

Gerry · Apr 19, 2007

Wonderful and just decision and great defense.

Laughed my ass off when actually saw this in print...

Respondent also alleges that he acquired the domain name from a list of expiring and abandoned domain names and that there is an element of âfinders keepers, losers weepers.â ound:

What a ROCKING n ROLLING defense! I can not believe this elementary school yard recess saying actually made it into the case. Too funny.