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123INKJETS Didn’t Get the Printout on Evidence

In the recent domain name dispute of LD Products, Inc. v. Webatopia Marketing Limited (Nat. Arb. Forum FA1360908 Jan, 7, 2011) a single member Panel was faced with a dispute over the domain www.123inkjetx.com. Complainant owns rights to the 123INKJETS mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,212,566 issued February 27, 2007), in connection with online retail store services featuring inkjet printer cartridges, inkjet printer ink, filled inkjet printer ink cartridges, toner, toner cartridges and related accessories. Complainant also asserted common law rights in the 123INKJETS mark dating back to 1999. Complainant maintains a website at www.123inkjets.com. Respondent, registered the disputed domain name on October 19, 2004, which resolves to a click-through website featuring links to Complainant’s competitors.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel only made it through the first element in this case. Since the registration date of the domain predated the registration date for the trademark, Complainant was under an obligation to provide evidence of common law rights to the mark. The Panel explained that Complainant failed to “set forth sufficient evidence supporting” common law rights. It is unclear what evidence, if any was presented by Complainant since the Panel did not elaborate.

In light of the following findings, the Panel explained that Complainant failed to establish the first element. As a result the Panel declined to review the remaining elements. Ultimately, the Panel DENIED the request for transfer.

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