No bad faith registration where the Respondent registered domain name for its descriptive qualities

The Panel denied the complaint seeking transfer of the domain name <>, finding that the Complainant failed to establish that the Respondent registered the domain name in bad faith.

The Respondent registered the domain name on April 22, 2007, less than four months after the Complainant alleges that it began to use its PDFFILLER mark in commerce (January 1, 2007). This mark was not actually registered until October 2014, and hence until that date, the Complainant was relying entirely on common law rights.

Despite the fact that the Complainant asserted a U.S. trademark registration for its mark that included the January 1, 2007 date of first use, the Panel found that there was “absolutely nothing” in the record to prove that the Complainant made any actual use of the mark prior to April 22, 2007, much less such substantial use that one would lead one to conclude that the Respondent more likely than not had the Complainant’s (then) common law mark in mind when registering the domain name.

On the other hand, the Panel noted, there was a fair amount of evidence put forth in the response to suggest that the Respondent’s motives here, at least in terms of registering the domain name, were innocent. It appeared clear that, for several years prior to the Complainant’s alleged first use of the PDFFILLER mark as a source identifier for its PDF-related offerings, the Respondent was operating his own business, in a similar field of activity (essentially, ways to create, alter, and manipulate PDF documents). The record shows that some of the Respondent’s offerings included software allowing the user to add content to (i.e., fill in) PDF documents, including adding data to forms that were in PDF format.

The Panel found that to register a few domain names with “pdf” in them and redirect them to a main website where the Respondent features its PDF-manipulation offerings “hardly seem[ed] remarkable or untoward.” As the Respondent claimed, he registered the domain name for its descriptive, not distinctive, qualities. On the same day (April 22, 2007) as Respondent registered the domain name, he also registered a few other domain names containing “pdf” and a descriptive word. This fact, in the Panel’s mind, tended to corroborate the Respondent’s account of his motives here.

Without evidence that the  Respondent was aware of the Complainant’s mark on April 22, 2007, the Panel concluded there was no evidence of bad faith registration by Respondent.

PDFFiller, Inc. v. Chris Truxaw, d/b/a Red Software, WIPO Case No. D2015-2200