In the recent domain name dispute decision of Kim Laube & Company Inc. v. RareNames, WebReg FA1291282 (Nat. Arb. Forum December 22, 2009) a three member Panel was faced with a dispute over the domains www.natureschoice.com and www.natures-choice.com. Complainant sells pet grooming products and has a a trademark registration for the mark NATURE’S CHOICE. Respondent provided a response to the complaint and registered the disputed domains in 2002 and 2003.

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

The Panel addressed the first element of the analysis and explained that the domains were identical or confusingly similar to Complainant’s mark. Although Respondent argued that Complainant could not hold exclusive rights on the common words, the Panel dismissed this argument under this prong of analysis.

The Panel declined to address the second prong, directing its attention to the third prong. First the Panel noted that there was no evidence presented that Respondent’s registered the domains primarily for the purpose of disrupting Complainant’s business.  The Panel only paid serious attention to Policy ¶4(b)(i) and (iv). Those sections state:

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Panel explained as follows:

Turning first to Policy ¶ 4(b)(i), Respondent states that its business is the acquisition then sale of domain names for profit.  The only important issue is whether Complainant can point to circumstances indicating that Respondent registered the names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.

Likewise, Policy ¶ 4(b)(iv) requires proof that Respondent for commercial gain; intentionally used the disputed domain name to attract web users; to an on-line location; by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that on-line location, or of a product or service at that location.

Once more, the key issue is whether Respondent can be said to have used the domain names in a way which intentionally created a likelihood of confusion with Complainant’s trademark.

The Panel recognized that there are other contrary decisions on this topic but noted that their view was that “proof of actual knowledge of a Complianant’s trademark rights is necessary.” The Panel explained that in the situations where there is a trademark with descriptive elements, then the onus rises on proof of knowledge. The Panel discounts the arguments put forth by Complainant of its common law rights, based on a lack of evidentiary support. The Panel concluded by noting:

Taking account of the inherently descriptive character of both the trademark and the disputed domain name, the degree to which either very similar domain names or identical domain names with different extensions have been registered/used by others, the lack of evidence that Respondent has habitually abused third party trademark rights, and all of the circumstances, the Panel finds that neither Policy ¶ 4(b) (i) or (iv) is made out.

Ultimately, the Panel found that Complainant had failed to prove up all three elements, and DENIED the request for transfer.

In two recent domain name dispute decisions, Mattel, Inc. v. Bladimir Boyiko (Nat. Arb. Forum, FA1290718, Dec. 16, 2009) and Mattel, Inc. v. Domain c/o VO (Nat. Arb. Forum, FA1289791 Dec. 15, 2009) two separate three member Panels were faced with disputes over www.wwwhotwheels.com and www.hotwheels.org. Mattel is the well known toy company responsible for the HOT WHEELS die cast cars. HOT WHEELS were first sold in the U.S. in 1968. Complainant operates web sites at www.hotwheels.com and www.mattel.com. Both Respondents failed to provide a response to the complaints.

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.

In the first case referenced above, the Panel recognized Mattel’s HOT WHEELS mark and had  “no difficulty in finding that the Domain Name is confusingly similar” to the mark. Mattel presented a prima facie case, which included an argument that Respondent was not commonly known by the disputed domain. Additionally, as the Panel found, Respondent was using the domain for third party link click through fee generation.  Lastly the Panel noted that the domain was an example of typosquatting. The Panel found that Respondent was involved in other UDRP proceedings and therefore was engaged in a pattern of bad faith.

In the second mentioned case, the Panel also noted that the HOT WHEELS mark was well known throughout the world and that the domain was identical to the disputed domain. The Panel found that Respondent was not commonly known by the disputed domain and that Mattel had presented a prima facie case. Lastly the Panel found that Respondent’s inaccurate or incomplete contact information was evidence of bad faith. Additionally, Respondent’s failure to respond was evidence against.

Ultimately, the Panels found in favor of Mattel and ordered the domains be TRANSFERRED.

In the recent domain name dispute decision of Vaga-lume Midia Ltda v. Kevo Ouz d/b/a Online Marketing Realty FA1287151 (Nat. Arb. Forum, December 7, 2009) a three member Panel was faced with a dispute over the domain www.vagalume.com. Complainant runs a Brazilian based web site about music, since 2002, located at www.vagalume.com.br and www.vaga-lume.com.br. Respondent is a domain name entrepreneur who admits to registering domains of common or descriptive words. The disputed domain was purchased by Respondent in December 2007.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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 provided a split decision, with only two of the Panelists providing the majority opinion. In addressing the first prong the Panel explained that Complainant provided a Brazil  trademark registration certificate for VAGALUME and design. The Panel concluded that the there was letter-by-letter coincidence of the disputed domain and the mark.

The Panel next addressed the second element, whether the Respondent has any rights or legitimate interests in the domain. The Respondent argued that the term vagalume means firefly in Portugese. The Panel however noted that Complainant’s use of the mark is not descriptive and instead was arbitrary. Respondent claimed he registered the domain due to its high traffic, but the Panel noted he failed to provide any evidence of this traffic being a result of common nature use of the term. Instead the Panel noted that results of an Alexa.com search showed that over 91% of the visitors to the disputed domain originated from Brazil. Next the Panel addressed the actual control and use of the domain, and this is where the Panel began to chastize Respondent:

As also shown by Complainant, after having received service of the present complaint, Respondent manually modified the parameters governing the generation of ads appearing on the website at the disputed domain name, from ads almost related to music to generic ads. This shows that Respondent always could and did control the contents of his website (“pay-per-click” links), which deprives of any credibility Respondent’s contention that he did not did not select the links, and that they were auto-generated by Yahoo and Parked.com. Respondent’s manual change of the ads parameters, following his having received service of the complaint, was hidden until Complainant revealed it in its additional submission. This shows that when Respondent registered the disputed domain name he was targeting Complainant’s mark to extract income from pay-per-click links precisely aimed at Complainant’s audience and traffic. Only after having been served with the complaint, did Respondent use his ability to manually control the contents of his website at the disputed domain name, and posted texts explaining that VAGALUME means “firefly”, in an obvious attempt to justify – ex post facto – his having chosen the disputed domain name. All this does not reveal a use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, pursuant to Policy ¶ 4.c.i., or a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers, pursuant to Policy ¶ 4.c.iii.

The Panel then moved to the final element, bad faith. The Panel explained that bad faith requires knowledge or awareness of the mark. This knowledge or awareness is a responsibility for those who own large portfolios of domains. This willful blindness concern was addressed by Respondent who claimed that he conducted a search for the trademark on the USPTO site prior to purchase. Additionally, the Respondent claimed that a U.S. resident should not be obliged to search the records of all foreign trademark offices. The Panel disagreed with this view, noting that since the domain was a Portugese word, a search in Brazil would have been necessary. The Panel went on to explain:

Additionally, the Panel notes that Respondent’s remarks that he had no knowledge of the Complainant or its trademark prior to the instant dispute are contradicted by the uncontroverted circumstantial evidence discussed above.  Respondent’s prevarication regarding his prior knowledge of the Complainant and its common law trademark, as well other apparently disingenuous statements made in his pleadings, is additional independent and sufficient grounds for finding bad faith registration and use.

The Panel does not stop the bleeding there, as they then discuss the three prior UDRP cases which Respondent lost on default. As a result the Panel stated:

While Respondent observes that in all such cases he was in default, the Panel cannot but speculate that an experienced domainer like Respondent may have considered that its case was indefensible. In any event, there is no evidence that Respondent has challenged any of these decisions before a court, as it was his right under the UDRP. Respondent cavalierly considers such cases to be a “few UDRP losses”. The Panel believes that those cases demonstrate that Respondent had engaged “in a pattern of such conduct” when he registered the disputed domain name in order to prevent Complainant from reflecting the VAGALUME mark in a “.com” domain name, which is a circumstance of bad faith registration pursuant to Policy § 4.b.ii.

The reasons for ruling against Respondent did not stop there, though. The Panel criticized Respondent for changing the parameters of the pay per click links on his web site after receiving notice of the dispute. The Panel found that this showed Respondent had control of the web site all along and that since this is an experienced domainer “it is unlikely if not absurd to find that he was unaware of exactly how the parking page worked and that he could manipulate it.”

Ultimately, the Panel found that all three elements were satisfied and ordered the domain be TRANSFERRED.

DefendMyDomain Commentary: There is a very long and well thought Dissent opinion. The Panelist takes a careful approach at noting that there are issues on both sides, but that the Complainant just did not provide evidence sufficient for a finding that satisfied all the elements. The dissenting Panelist instead challenged that the decision should not be based on supposition and conjecture. Take the time to read this dissent to get an understanding of just how different Panelists can view a specific case.  We believe the Domainers are going to have a real problem with this decision, but the current UDRP system remains.

In the recent domain name dispute decision of Life Extension Foundation, Inc. v. PHD Prime Health Direct Limited (FA1289603, Nat. Arb. Forum, November 25, 2009) a three member Panel agreed to transfer the domain www.lifeextensionfoundation.com to Complainant. Life Extension Foundation maintains web sites at www.lef.org and www.lifeextension.com. As their web site states:

The Life Extension Foundation is the world’s largest organization dedicated to finding scientific methods for addressing disease, aging, and death. The Life Extension Foundation is a non-profit group that funds pioneering scientific research aimed at achieving an indefinitely extended healthy human lifespan. The fruits of this research are used to develop novel disease prevention and treatment protocols.

 Our law firm represented Life Extension Foundation in this dispute, so we will refrain from providing our normal commentary. If you would like to know more details please read the decision (here).

In the recent domain name dispute decision of Bin Shabib & Associates (BSA) LLP v. Hebei IT Shanghai ltd c/o Domain Administrator FA1287164 (Nat. Arb. Forum, November 19, 2009), a three member Panel was faced with a dispute over the domain www.bsa.com. Complainant is a law firm which operates in the United Arab Emirates and maintains a website at www.bsa.ae. Complainant claims rights to the BSA mark since based on two different dates, 2001 and 2007. Complainant filed for a trademark in the UAE, but has not yet received a registration. Respondent provided a Response, including an additional submission. The Panel noted that the Response was deficient for not being timely, but concluded to review the materials regardless.

Paragraph 4(a) of the ICANN UDRP Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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.

In addressing the first element, the Panel explained:

The Panel finds that Complainant has failed to establish registered trademark rights or common law rights in the BSA mark. Specifically, Complainant’s use of the BSA mark for less than two years has been too short, and Complainant has not shown any evidence of the sort that is usually used to establish that a mark has acquired secondary meaning. In light of Respondent’s arguments, the Panel finds that Complainant has failed to establish common law rights in the BSA mark pursuant to Policy ¶ 4(a)(i)….Having found that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, the Panel declines to analyze the other two elements of the Policy.

The Panel was not finished though, since it then addressed the issue of Reverse Domain Name Hijacking.

The panel finds that Complainant has failed to present any evidence to support its claimed rights in the disputed domain name. It only provided an application for trademark registration which does not establish any enforceable rights under the UDRP. It did not offer any evidence to support a finding of common law rights in the disputed mark. Also, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the disputed domain name or that Respondent registered and is using the disputed domain name in bad faith. Based on the foregoing, the panel finds that reverse domain name hijacking has occurred.

In light of the following, the Panel DENIED Complainant’s request to transfer the domain. and made a finding of reverse domain name hijacking.

In the recent domain dispute decision of The American Automobile Association, Inc. v. QTK Internet c/o James M. van Johns FA1261364 (Nat. Arb. Forum, July 25, 2009) a three member Panel provided an interesting decision regarding www.aaa.net. Our friends over at Domain Name Wire provided an excellent review of the decision, so we suggest you read their version. (available here). We can already forsee that there will be many future disputes which cite to this decision.

In the recent domain dispute decision of Sigourney Weaver v. Stephen Gregory a/k/a ‘THIS DOMAIN NAME IS FOR SALE’ (Nat. Arb. Forum 1256394, May 22, 2009) a three member Panel was faced with a dispute over www.sigourneyweaver.com. We all know who Sigourney Weaver is, so we won’t waste time with her list of credits. (Although she deserves an extra nod of appreciation for the Alien movies) Respondent, purportedly located in the Philippines, registered the disputed domain in 1999, nearly 20 years after her emergence in the entertainment world. Weaver argued that the disputed domain was being used to automatically forward to a pornographic web site located at www.clubpink.com which then takes the user to www.nymphogirls.com. Weaver also argued that Respondent was using the domain to sell it for profit, based upon the Whois information which stated “Stephen Gregory ‘THIS DOMAIN NAME IS FOR SALE.’”

Under the ICANN UDRP policy Complainant must prove (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.

In addressing the first element, the Panel noted that Weaver did not have a federal registration for her name and thus reviewed the evidence to determine if she possessed common law rights. The Panel found that her career has made her sufficiently famous and that she demonstrated secondary meaning to establish common law rights. Thus the Panel found that the domain was identical to Weaver’s rights in the mark.

Moving to the second element, the Panel noted that Weaver made a prima facie case that Respondent lack any rights or legitimate interests. This was based on the fact that Respondent was not commonly known by the disputed domain name, as stated earlier regarding the Whois information. Additionally, since the domain was being linked to pornographic material, this use was not in connection with a bona fide offering of goods and services. The Panel noted that Respondent stopped the forwarding to the pron web sites after receiving a cease and desist from Complainant. Lastly, the Panel found that since Respondent was offering to sell the domain this showed a lack of legitimate rights or interests in the domain.

Moving to the final element, bad faith, the Panel noted that Respondent had been involved in numerous prior analogous UDRP proceedings and that he engaged in a pattern of bad faith registration and use. Additionally, the Panel noted that the pornographic nature of the redirected web site also satisfied the bad faith element.

Ultimately, the Panel ruled to TRANSFER the disputed domain.

In the recent decision of Shoe Land Group LLC v. Development, Services c/o Telepathy Inc. (Nat. Arb Forum 1255365, June 9, 2009) a three member Panel was faced with a dispute over the domain www.shoeland.com. Complainant, is a footwear retail store and maintains a web site at www.shoeland.net. Complainant claimed use of the mark SHOE LAND since March 1, 1997 and has a Federal registration for the mark since April4, 2006. Respondent replied to the ICANN UDRP complaint noting that they are a business who regularly registers domains with intrinsic value and generates revenue from pay-per-click advertising links. The disputed domain was registered in 1998.

As the Panel noted, Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;  (2) the 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 began with the first prong, whether the domain was identical or confusingly similar to Complainant’s mark. The Panel found that complainant had sufficient rights under the Policy ¶4(a)(i), but noted as follows:

In its Complaint and Additional Submission, Complainant also asserts and provides evidence of its rights in the SHOE LAND mark through its continuous use of the mark in commerce since at least as early as March 1997. Nevertheless this use of the mark remained local, and does not provide the mark with secondary meaning. As a result, the Panel finds that Complainant does not have sufficient common law rights in the SHOE LAND mark under Policy ¶ 4(a)(i), dating back to March 1997. 

Regardless the Panel found Complainant had satisfied the first prong. Moving to the second prong, whether Respondent had any rights or legitimate interests in the domain, the Panel noted that Complainant failed to establish a prima facie case. Respondent argued, and the Panel agreed as follows:

Complainant does not have common law rights dating back as far as September 1998, when Respondent registered the disputed domain name, because Complainant’s SHOE LAND mark had not acquired secondary meaning by that time.  Respondent contends that the evidence put forth by Complainant fails to demonstrate that Complainant was well-known yet outside of the Orlando, Florida area, or that Complainant had spent much money promoting the SHOE LAND mark.    

Respondent also argued that it registered generic domain names as a business practice, which would satisfy the rights or legitimate interests section of the policy. The Panel agreed with this concept as well finding that “registering such a generic domain name is a business practice that confers upon the practitioner rights or legitimate interests in that domain name. As a result, the Panel finds that Respondent established rights in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”

Moving to the last prong, whether the domain was registered and used in bad faith, the Panel explained that since Respondent had proved it had rights or legitimate interests in the domain at the time of registration, then the registration could not have been in bad faith. The Panel explained:

The Panel finds that a respondent is free to register a domain name consisting of common terms, unless he is aware or should have been aware of the secondary meaning those common terms had at the time of the registration. Since the disputed domain name contains such common terms and as there was no secondary meaning at the time of the registration, the Panel is of the opinion that Respondent did not register  the <shoeland.com> domain name in bad faith under Policy ¶ 4(a)(iii).

The Panel also addressed a request by Respondent to find Reverse Domain Name Hijacking. The Panel explained that since Complainant provided evidenced of active promotion of the SHOE LAND mark since 1997 there could not be reverse domain name hijacking. The Panel further explained that reverse domain name hijacking requires bad faith on the part of Complainant and that none was present.

For an interesting counter perspective on the issue of reverse domain name hijacking, read the dissenting opinion by one of the Panelists, who believes this was a clear case of reverse domain name hijacking. He argues that the Complainant had no reasonable basis for arguing bad faith The single dissenting Panelist also chastises the Complainant for revealing emails and facts that the parties engaged in settlement discussions and sale of the domain negotiations prior to the dispute, despite the fact that those communications were labeled “Confidential-For Settlement Purposes Only.”

Ultimately, the Panel DENIED Complainant’s request for transfer and DENIED Respondents request for reverse domain name hijacking.

In the recent decision of Norbert A. Aleman v. Crazygirls.com/Vertical Axis, Inc., WIPO Case No. D2008-1252, (October 29, 2008), a three member Panel was faced with a dipsute over the domain www.crazygirls.com. The Complainant claimed ownership of a registration for the mark CRAZY GIRLS, registered on November 20, 2001, for services of a live stage show, based on a first use date of August 1986. The Claimant maintains a domain at www.crazygirlslasvegas.com.  The disputed domain was first registered on August 8, 2001, and at the time of the dispute, was resolving to a generic landing page with automatically generated links.

The three member Panel found that the domain was identical or confusingly similar, regarding the first prong of the UDRP/ICANN policy. Regarding the second prong of the Policy, namely whether the Respondent has any rights or legitimate interests in the disputed domain, the Panel made the following observation:

[T]here is no evidence of any of the following circumstances: (i) that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding to the disputed domain name; (ii) that the Respondent is authorized or licensed by the Complainant to use the CRAZY GIRLS trademark or to register and use the disputed domain name; (iii) that the Respondent has been commonly known by the disputed domain name.

The Panel also analyzed Respondent’s arguments that the domain was made up of two generic words and Complainant’s complaints about the Respondent’s use of pay-per-click advertising links, but ultimately the Panel found the “legitimate rights” factor to be in favor of Complainant.

Moving on to the last prong of the Policy, whether or not the Respondent registered and used the domain in bad faith, the Panel noted that Respondent’s use of a privacy service for the registration data does not, by itself, establish bad faith. In fact, the Panel noted there are legitimate reasons for using such a service.

Addressing other aspects of bad faith, the Panel also explained about:

Further, the Complainant has not identified any source of actual confusion between the Respondent’s use of the disputed domain name and the Complainant’s trademark, such as links within the Respondent’s website to the Complainant’s show, or shows of its competitors. The Complainant states that it has continuously used the CRAZY GIRLS trademark since August 1986 to brand a stage show and review running in Las Vegas, and has owned the trademark registration since 2001. It has not provided any evidence of the extent of the goodwill or reputation of its trademark beyond Las Vegas, such as its own Internet use of its trademark, that might assist the Panel in inferring that the Respondent knew of or intended to profit from the CRAZY GIRLS trademark. The Complainant does not explain when it first learnt of the Respondent’s registration of the disputed domain name, or explain its inaction in defending its trademark during the period of nearly seven years since the Respondent’s registration.

Ultimately, the Panel DENIED Complainant’s request to Transfer.

In the recent case of NAOP, LLC, v. Name Administration, Inc. (BVI) (Nat. Arb. Forum. 1220825, October 7, 2008), a three-member Panel was faced with the interesting task of determining when applicable trademark rights existed for the purposes of UDRP decisions. Respondent states to be in the business of acquiring domain names that use common terms, which in the instant case were “jump” and “pro.” The Complainant, North American Outdoor Products, LLC, claims ownership to a trademark for JUMPRO, for exercise and recreational trampolines and replacement parts therefor. The mark was registered on July 18, 2006, with the application first being filed on October 2, 2003. The decision noted that the registration claims a first use in commerce date of April 2003. The disputed domain, www.jumppro.com was registered on January 19, 2004.

The Panel, in reviewing the first prong of the UDRP test, whether the domain in dispute is identical or confusingly similar to the Complainant’s trademark, acknowledged that the domain and the mark were identical or confusingly similar. However, the Panel explained the “Complainant had not shown it had rights in the name at the time the domain name was registered.” (Compare domain registration in January 2004 and mark registration in July 2006).

The Panel reviewed the evidence and explained:

In the instant case Complainant has submitted no evidence whatsoever to demonstrate use of the mark in commerce prior to the time Respondent registered the domain name. All that Complainant has done is assert (without providing a copy to the Panel) that it provided a specimen to the USPTO and claimed use in commerce when it filed its application in 2003. This falls far short of the required evidence.

The Panel went further to rely on prior decisions and noted:

This Panel agrees with the recent decision of the panel in Xoft Inc. v. Name Administration Inc. (BVI) (Nat. Arb. Forum Apr. 25, 2008) which stated: “The relevant time for the determination of whether or not the complainant has rights in a mark is the time that respondent registered the disputed domain name. …The question for this panel is what rights had Complainant demonstrated in the mark XOFT on that date?” In the Xoft case, as here, the complainant had filed an intent-to-use trademark application prior to the time that the domain name was registered, but that panel held, as we do, that the date of registration does not relate back to the date that the application was filed unless there is clear evidence of use in commerce sufficient to create a secondary meaning in the mark.

As a result the three-member Panel found that the Complainant did not satisfy the first portion of the UDRP Policy. The Panel also declined to find that the Complainant engaged in reverse domain name hijacking. Ultimately, the Panel DENIED the request for transfer.

DefendMyDomain Commentary:
Although not discussed by the Panel, a more detailed investigation into the trademark registration records available at www.USPTO.gov reveal that the trademark specimen filed in the USPTO by Complainant shows the packaging of the goods to be labeled as JUMPPRO instead of JUMPRO (the registered mark). It is not clear if a mistake was made during the registration process. This point is of interest because when one visits www.jumpro.com, the link leads to a marketing company web site (vertically integrating merchandising, advertising and marketing). The Complainant and the marketing company appear to have nothing to do with each other.