Post Dating Trademarks can't support domain claims

January 27th, 2003
By Demys News service

In no less than three separate reported domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP), decided within a day of each other, the complainant has been unsuccessful because in each case it relied upon a trademark which came into existence after the registration of the domain name.

In Roberta Chiappetta dba Discount Hydroponics v. C. J. Morales a bizarre situation is described - apparently the complainant had already successfully obtained the right to the domain name discounthydroponics.com as part of the settlement of a court action against the original California-based registrant but then lost it to the present Philippines-based registrant during the transfer process. The complainant then filed a UDRP complaint against the new registrant, relying on a trademark of 31 December 2002 in the US Patent & Trademark Office's Supplemental Register. However, the domain name was registered on 14 August the same year, pre-dating the mark by over four months.

The Panellist said: There is widespread support for the view that [the UDRP] requires the complainant to have rights (be they strong or weak) in a trademark before the disputed domain name is registered. While the Panellist went on to say that registration is not the only determinant for proving the complainant has rights in a trademark, as common law rights may exist in some situations, he noted that no evidence had been provided of any such rights in the present case.

A three-member panel struggled with the rights of complainant and respondent to the domain name power1051.com in Clear Channel Communications, Inc. v. Emmis Communications. The parties were both radio station operators, the complainant running, among others, Power 105.1 in New York and the respondent broadcasting as Power 106 FM in California. The respondent had a service mark for POWER 106 FM and argued that its power-related marks pre-dated the complainant's interests. It also pointed out that it registered power1051.com on 8 March 2002, while the complainant did not begin commercial use of Power 105.1 until six days later.

Initially, the panel felt the trademark issues were just too tricky. It said that the question was whether the complainant had prior rights which would establish that it held a mark. But it then added: This is a difficult assessment to make in this particular case and...we prefer not to reach a firm conclusion on this ground. Accordingly, we leave this ground open.

The panel found it easier to consider the issue of post-dating trademarks when looking at bad faith. It decided that the domain name could not have possibly been registered in bad faith if the registration pre-dated Complainant's interests in the mark.

In Transpark LLC v. Network Administrator the complainant owned a registered service mark for TRANSPARK registered on 11 June 2002 claiming a first use in commerce of 5 July 2000. The domain name transpark.com was registered by the respondent on 7 December 1998 - some considerable time before even the claimed first use by the complainant.

The panel predictably found against the complainant, stating:

...without establishing rights in a mark that predates a disputed domain name registration the outcome would allow junior trademark users to contest a prior domain name registration. Such an outcome is contrary to the Policy, which was intended to protect against infringement of existing trademark rights by identical or confusingly similar domain name registrations.

In this case, the complainant might have helped itself by giving evidence of any common law rights it might have had in the TRANSPARK name pre-dating the domain name registration. No such evidence was provided and in fact the complainant was hoist by his own petard in that his officially claimed first use itself post-dated the registration.

Demys' successful defence on behalf of the registrant of the generic domain name trinity.com reported last year (TRN Business Trust and Trinity Industries, Inc. v. Internet Holding Group) followed a similar pattern of a pre-dating domain name registration with a complaint founded on a series of subsequent trademark registrations.

So is there an increasing trend on the part of post-dated trademark owners to file a complaint come what may? If there is, the three recent cases should certainly give prospective complainants cause for reflection. Panellists of both WIPO and NAF are now sending clear signals that a complainant will have to work much harder; rather than simply relying on a post-dated trademark, it will need to show evidence of prior common law use. This is essential in all borderline cases - even in those such as Transpark where the respondent did not bother to file a response.