In Domain Name Disputes, Priority of Registration Will Often Trump Registered Trademark Rights

It isn’t often that a UDRP panel finds that a complainant who owns a registered trademark does not satisfy the first prong of the UDRP’s abusive registration test, namely, that the domain name is “identical or confusingly similar” to the complainant’s registered trademark.  Typically, UDRP panels will find that a trademark registration is prima facie evidence of confusing similarity.  But a recent panel has held that a complainant that registered its trademark after the respondent registered its domain name does not have the right to claim that the domain name is confusingly similar to its trademark.  Priority, it seems, is everything.

Fired.com registered its domain name approximately five years before complainant World2Work received its federal registration for FIRED.  Complainant World2Work, as revealed by Domain Name Wire, argued that they “should not be forced to pay the inflated fees that domain name profiteers routinely charge for warehoused domains which they have never bothered to use or develop.”  Unsurprisingly, the single National Arbitration Forum panelist disagreed.

In finding that the two marks were not confusingly similar, the sole panelist held that the term “fired” is generic as applied to fired.com, which acts merely as a reference and not a trademark use of the term.  The panelist noted that “Complainant’s belief that its registration gives it “an exclusive right to use the word ‘FIRED’ in commerce…’ and that such use extends to a ‘right to use that word as a domain name and to register the domain <fired.com> as its own domain name’ is sorely misguided.”  The panelist drew a distinction between the two competing theories of domain name law: domains as references vs. domains as trademarks.

The panelist disposed of World2Works claims by stating,

Trademark rights do not automatically confer domain name rights and vice-versa.  Procurement of one right simply provides an improved opportunity for the other. Complainant’s rights in its mark are restricted by time and nature.  The nature of the mark is one of limited scope based on proven secondary meaning and cannot be extended to prevent others from continuing to use that word in its normal descriptive sense.  The timing of the registration further limits its scope in light of the pre-existing rights established by senior users.  Complainant’s unsupported self-serving statement that is has established secondary meaning is insufficient to bestow the breadth of rights it claims.

This case shows that registered trademark rights alone are not always enough to show that the use of a domain name is confusingly similar to the registered mark.  Often, a UDRP case will come down to the simple issue of priority of registration: if the registrant registered first, the complainant’s claims fail even if the complainant later received a trademark registration for the mark.  Trademark rights do not grant a complainant a monopoly over the use of a mark on the Internet, especially where the complainant was the latecomer.

If you are faced with a domain name dispute issue involving descriptive or generic domain names, priority of registration, or trademark rights in a domain, contact an attorney with experience in this area.