UDRP Panelist Slams Complainant With Charge Of Reverse Domain Name Hijacking: Might This Decision Reverse A Longstanding Trend Of Pro-Trademark Owner Panelists and Decisions?

A recent Uniform Domain Name Dispute Resolution Policy (“UDRP”) decision may be seen as a ray of hope for Domainers with respect to reversing a longstanding trend of pro-trademark leaning panelists and decisions. In the case of M. Corentin Benoit Thiercelin v. CyberDeal, Inc.(decided August 10, 2010), single panelist Tony Willoughby pulled out paragraph 15(e) of the UDRP regulations and reprimanded the complainant for abusing UDRP proceedings and for an attempt to reverse hijack the subject domain name.

Complaint, M. Corentin Benoit Thiercelin, runs a company named VirtualExpo, which was registered in 2000. Complainant did not secure trademark registration until 2005. Complainant claimed that CyberDeal, Inc. had registered – and was using – the domain name in bad faith to prevent Complainant from acquiring the domain name for itself. Interestingly, CyberDeal had registered the domain name in 1996, at least four years before Complainant had acquired any alleged rights in the name VirtualExpo and nearly ten years before Complainant secured trademark registration. 
   
Per the decision, prior to the filing of the UDRP proceeding, Complainant’s attorney sent CyberDeal a cease and desist letter alleging that CyberDeal was using the subject domain name in connection with a web site that was “causing commercial as well as image damages for which my client will seek damages.” Interestingly, however, there was no evidence placed in the UDRP proceeding record to suggest that the domain name had ever been put to any use.
 
The panelist considered whether (1) the subject domain name and Complaint’s mark are confusingly similar, (2) the defendant had any legitimate interests in the subject domain name and (3) the subject domain name was registered in bad faith.

The panelist found that the mark VirualExpo and domain name are confusingly similar. The panelist elected to skip prong two of the test and move directly to the issue of whether the subject domain name was registered in bad faith.

The panelist first considered the issue of whether a domain name can be registered in bad faith before trademark rights are acquired by a third-party. Although bad faith will not generally be found when a subject domain name was registered before acquired trademark rights, there are those cases where bad faith may be found. For example, in those instances where a domain name holder had inside knowledge of a trademark owner’s plan to use a certain trademark.

In this case, Complainant’s earliest alleged trademark rights began in 2000, or four years after the registration of the subject domain name. Based upon the record of this case, the panelist stated, “On the papers before the Panel this was a wild, unsupported and wholly misconceived claim.” The panelist continued on to state the following:

“In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 10 years before the Complainant acquired his registered rights, no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates. It simply was not mentioned. Instead, a flagrantly insupportable claim was made as to the Respondent’s bad faith intent at time of registration of the Domain Name and the Panel can only assume that it was hoped that the Panel would miss the point.”

Reverse domain name hijacking occurs when trademark owners secure domain names by making false cybersquatting claims against rightful owners of domain names. In those closer cases that result in transfers of domain names to complainants, but still constitute reverse domain name hijacking, places trademark owners in jeopardy of being sued in federal court for reverse domain name hijacking. Although there are no statutory damages for reverse domain name hijacking, the idea of defending a federal court action – not to mention receiving a “black eye” – should cause trademark owners to pause and seriously consider whether to bring arguably baseless UDRP claims.

Could this decision be a turning point for reversing a longstanding trend of pro-trademark leaning panelists and decisions or simply nothing more than a decision regarding clear abuse of the UDRP process?

Should federal trademark law be amended to provide statutory damages for victims of reverse domain name hijacking? What about “attempted” hijacking? I think it should.

What should the standard and statutory damages be? What do you think?

Brand Name Selection Runs Afoul with U.S. Trademark Trial and Appeal Board: Board Finds Trademarks BECKER FURNITURE WORLD and STUDIOBECKER Confusingly Similar

A recent decision at the U.S. Trademark Trial and Appeal Board (the “Board”) once again highlights the importance of proper brand name selection and clearance.

In the case of In re Conleasco, Inc. (TTAB July 7, 2010), the Applicant sought registration for the trademark BECKER FURNITURE WORLD for “retail store services in the field of furniture, home furnishings, rugs, window treatments, gas fireplaces, paint, flooring, sinks, bathtubs, showers, and toilets.” Registration of that mark was refused by examining attorney Christopher Buongiorno on the ground it so resembles the registered mark STUDIOBECKER for “kitchen, living room, bathroom, dining room and bedroom furniture; wall components, namely, shelving and furniture, kitchen, bathroom and medicine cabinets, sold separately or as a unit; and room dividing furniture made of wood, metal, synthetic or laminate materials” as to be likely to cause consumer confusion or consumer deception as the to the source of the parties’ respective goods and services.

What? Why would the mark Becker Furniture World for retail store services and the mark StudioBecker for furniture likely cause consumer confusion or deception!? Read on and find out.

Important to note that the application for the mark BECKER FURNITURE WORLD was based upon an intent-to-use the mark in commerce. Meaning that Applicant claimed in its application that its mark was not yet being used in commerce as of the application filing date — or as of May 29, 2008. The cited registration issued well before then on January 16, 2001. As of the May 29, 2008 application filing date, Applicant was clearly on constructive notice as to the registration of the mark STUDIOBECKER for certain furniture products. A properly conducted trademark search would have found that registration. And an availability opinion should have raised a red flag.

In upholding the examining attorney’s refusal, the Board considered the following main factors:

Similarity of the Parties’ Respective Goods and Services and Channels of Trade

The Board first noted that it’s not necessary that the parties’ respective goods and/or services be identical or even competitive in order to support a finding of likelihood of consumer confusion. That’s so because it’s sufficient that the goods and/or services are related in some manner, or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks being used, to a mistaken belief that they originate from or are in some way associated with the same source, or that there’s an association or connection between the sources of the parties’ respective goods and/or services. The Board correctly noted that because the subject application and registration don’t contain any limitations as to the channels of trade in which the goods and services travel that it’s presumed that they travel in all channels of trade which are normal for those goods and services and they would be available to all potential buyers in those channels of trade.  The Board also pointed out that it’s well settled that consumer confusion is likely to result from the use of the same or similar trademark for goods, on the one hand, and for services involving those goods, on the other hand.

Under the facts of this case, the Board found that retail store services featuring furnishing and home furnishings may involve the sale of the registrant’s living room, dining room and bedroom furniture. Thus, the Board found that the parties’ respective goods and services are sufficiently related and that consumer confusion is likely should those goods and services be offered under the same or similar trademark(s).

Marks

The Board turned next to the issue of whether the marks BECKER FURNITURE WORLD and STUDIOBECKER are similar or dissimilar in terms of sound, appearance, connotation and commercial impression. Although the Board must compare the parties’ respective marks in their entireties when determining the issue of likelihood of confusion, it’s well settled that the Board or court may give more weight to a dominant portion of a mark when considering a mark’s overall commercial impression. Furthermore, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression such that confusion as the source of the goods and services is likely. Applying those principles, the Board found that the dominant portion in each mark was BECKER.

The Board found that the marks are similar in terms of connotation, since the terms FURNITURE WORLD and STUDIO only lend slightly different meanings to the marks, since they would only be seen as modifiers of the dominant term BECKER. In terms of overall commercial impression, the Board found that the marks are similar in that they both convey BECKER as the source of the parties’ respective goods and services. Comparing the marks in terms of overall appearance and sound, the Board quickly disposed that issue by finding that the marks are more similar than dissimilar due to the use of the term BECKER in both marks.

The Board concluded by stating that although one mark includes the wording FURNITIRE WORLD and the other STUDIO, consumers familiar with registrant’s living room, dining room and bedroom furniture identified under the mark STUDIOBECKER are likely, upon encountering applicant’s retail sale services in the field of furniture and home furnishings identified by the mark BECKER FURNITURE WORLD, to mistakenly believe that applicant’s retail store services in the field of furniture are related in some manner to registrant’s individual furniture items.

Accordingly, the Board upheld the examining attorney’s refusal to register on the ground of likelihood of confusion.

What have we learned from the Board’s decision? We learned that when clearing and selecting trademarks, we must consider, at a minimum, the following trademark principles:

1. Overall similarity of the marks? We don’t only check to see whether there are identical third party trademarks. We must search for “confusingly similar” trademarks. Trademark attorneys should carry out availability searches, not the assistant to the assistant secretary. Please remember this principle: “There are attorneys that say they do trademarks. Then there are trademark attorneys.” Please seek out the latter.

2. Relatedness of goods/services? The goods and/or services only need to be related for there to be a finding of likelihood of confusion. As long as consumers would reasonably believe that the parties’ respective goods and/or services are of the type that may originate from the same source – that’s all we need to raise the “relatedness red flag.” Period.

3. Channels of trade and class of buyers? When considering whether a selected mark is available, one must consider the channels of trade and the class of buyers. Most examining attorneys forget these important points.

4. As we’ll see in an upcoming post, strategic trademark application drafting may be warranted. Applicants must know what landmines potentially exist and, if ethically available, be sure to draft trademark applications that don’t raise “examining attorney” red flags. Once a red flag goes up, good luck convincing some examiners to take it down, even if the red flag is not warranted. 

Stay tuned for my next post when I discuss the Board’s recent decision refusing registration of a mark for clothing due to a registered mark for oyster bar services. What?!