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.
