23 May 2013

Common Law Trademark - Caveat Emptor to buyers of domain names

Caveat Emptor to buyers of domain names--are you buying a domain name already covered by a common law trademark? Stratfor Enterprises, LLC v. Leviticus Wilson . . .quoted in part below, is a good example of how to lose your domain name to a common law trademark holder . . .

WIPO Domain Name Decision: DCO2013-0001: " . . . The Complainant asserts common law trademark rights in STRATFOR in connection with a subscription based website providing geopolitical intelligence and guidance to its clients. The Complainant has used STRATFOR to designate its services for more than a decade . . . The Respondent registered the disputed domain name stratfor.co on or about December 21, 2012. The disputed domain name redirects Internet users to a webpage posting information on a December 2011, hacking of the Complainant’s computer systems, in which customer credit card and other information including email was stolen . . . . The Complainant submits that the disputed domain name is identical to its STRATFOR mark, in which the Complainant asserts common law rights. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant has not authorized the Respondent to use the STRATFOR mark, and as there is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant contends that the Respondent’s objective in registering the disputed domain name was to damage and disrupt the Complainant’s business, operations, reputation and employee morale, tarnish the Complainant’s trademark, and mislead the Complainant’s customers. According to the Complainant, the Respondent intentionally has attempted to divert and attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark and falsely suggesting an affiliation of the Respondent’s website with the Complainant’s “www.stratfor.com” website. For all of the foregoing reasons, the Complainant also submits that the Respondent registered and is using the disputed domain name in bad faith. . . . The Respondent did not reply to the Complainant’s contentions. . . .The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”.Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The disputed domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel initially addresses whether the Complainant has established trademark or service mark rights in STRATFOR. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; and The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others. Based on evidence submitted by the Complainant attesting to the continuous and exclusive use of the distinctive term STRATFOR for more than 10 years as a designation of source for the Complainant’s services, including the sworn declaration of the Complainant’s marketing director, the Panel is persuaded that the Complainant has demonstrated common law trademark rights in STRATFOR.

Turning to the question of identity or confusing similarity, the Panel finds that the disputed domain name <stratfor.co> is identical to the Complainant’s STRATFOR mark. In considering this issue, the first element of the Policy stands essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain beyond question is identical to the Complainant’s STRATFOR mark for purposes of the Policy. . . ."

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