No bad faith where Respondent registered domain name years before Complainant’s trademark rights began

Complainant began using its mark in 2008. Respondent registered the domain name in 2001, and the record showed that Respondent maintained a blank page at the domain name. The Panel denied the complaint, finding there to be no bad faith registration:

There is no evidence in this record that Complainant — or anyone else in the world for that matter — held the slightest trademark rights in the term “movius” at the time Respondent registered the Domain Name back in July 2001. The record suggests that Respondent had the good sense or good fortune to register a short, catchy domain name in the “.com” space well before anyone else thought to register it as a domain name, or to use it as a trademark. As such, even those ardent adherents to the principle that a domain name registrant is under some type of affirmative duty to ensure that a prospective domain name would not violate another’s trademark rights could not quarrel with Respondent’s conduct in this case.

The Panel also addressed the notion of whether a more “holistic” reading of the bad faith element would support divesting Respondent of the domain name. In this analysis, the Panel soundly rejected Complainaint’s suggestion that the case should be likened to Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case unlike this one, the mark was established before the domain name was registered. Moreover, the TELSTRA mark was undoubtedly famous, whereas in this case there was not even any attempt to show Complainant’s marks was famous.

Movius Interactive Corporation v. Dynamo.comWIPO Case No. D2015-1717

About the Author: Evan Brown is a technology and intellectual property attorney in Chicago helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at], or follow him on Twitter @internetcases

Res judicata barred subsequent UDRP proceeding

Domain Name:

Case: VRSim, Inc. v. John Makara, No. FA1003001314947 (Nat’l Arb. Forum April 30, 2010)

In 2008, Complainant brought a UDRP action over the same domain name at issue in this case – Complainant lost that proceeding because it failed to establish any protectible trademark rights (it asserted only a registration on the Supplemental Register and did not argue it had any common law rights).

Complainant tried again in this case, but the Panel rejected the effort, holding that the action was barred under principles of res judicata.

The Panel looked to Creo Prods., Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) to see that res judicata will bar subsequent complaints unless complainant meets a high burden.

Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) guided the Panel as to the factors derived from the common law that a panel should apply in evaluating whether this burden has been met:

  • serious misconduct
  • perjured testimony
  • new credible and material evidence
  • breach of natural justice

In this case, the Panel found that Complainant presented nothing that would support entertaining a second complaint. For that reason, the Panel denied relief to Complainant.

Photo courtesy CarbonNYC under this Creative Commons license.

Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at], or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for information about general internet law.

All signs point to descriptiveness in domain name dispute

Domain Name:

Element(s) Not Met: 4(a)(i)

Case: Glasgow Signs v. 1st Signs Limited trading as Sign-A-Rama, No. D2010-0409 (WIPO May 4, 2010)

Complainant and Respondent are both in the commercial signage business around Glasgow, Scotland. Respondent began using the Domain Name for its business in March 2006. The parties disputed when Complainant began using the term GLASGOW SIGNS.

That dispute as to facts, however, was immaterial to the Panel’s decision in the overall domain name dispute.

The Panel noted that under paragraph 4(a)(i) of the UDRP, a complainant may demonstrate rights in a mark which are not registered. But a person can only obtain rights in descriptive terms when it is shown through evidence that the term has become distinctive by acquiring a secondary meaning. Even very extensive use may not be enough to bring a highly descriptive term into the realm of protectibility.

In this case, the Panel found that Complaint failed because Complainant had put forward none of the following:

  • specific evidence as to the extent of its use of the descriptive term
  • a statement as to the value of sales made under the term
  • a statement of expenditures made on advertising or promotion of the term
  • disclosure of the nature of any advertising or promotin
  • evidence showing customers or suppliers had come to perceive the term as a brand

For these reasons, the Panel found that Complainant “fail[ed] at first base,” so there was no need to consider any of the remaining arguments under the UDRP.

Photo courtesy Flickr user rightee under this Creative Commons license.

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