Boho Brands LLC v. DOMAIN MAYBE FOR SALE / Cyan Yo
Domain name: <blkperiod.com>
Recently, we’ve discussed the difficulty around “pending” trademarks and whether they can have any value in establishing the UDRP’s first element in domain name disputes: that the domain name in question is confusingly similar to a trademark to which the Complainant has rights. Unfortunately for one alcohol beverage company, this issue reared its head yet again in a recent FORUM decision, which held that a pending trademark alone was not sufficient to establish rights.
This appears to have been an otherwise watertight cybersquatting case. The Complainant was in the process of registering a variety of trademarks for various alcohol products with the US Patent and Trademark Office, such as “BLK.”, “ZOYA VODKA” and “LONG NOSE GIN”. Curiously, within days of filing each of these trademarks, domains with identical names were being registered by a certain Mr. “DOMAIN MAYBE FOR SALE” based in the Cayman Islands, also known as Cyan Yo. The addresses all redirected to identically styled pages offering to sell the domain names.
At the time the Complainant submitted the complaint to FORUM, only one of its eight trademarks had been successfully registered, “BLK.”. The cybersquatter’s creative interpretation of this trademark was to convert the full stop at the end of the mark into the word “period”. The <blkperiod.com> domain might not roll off the tongue, but it was deemed to be enough to satisfy the confusing similarity requirement (citing Google Inc. v. Milan Kovac, FA 1391350 (Forum July 14, 2011) wherein <googledot.com> was found to be confusingly similar to the GOOGLE mark).
The subsequent elements of the case were made out relatively easily for <blkperiod.com> and the domain was transferred. The Respondent failed to submit any evidence that it had any rights to that name, and its clear intent to sell the name to the Complainant pointed towards a conclusion of bad faith. It is hard to deny that this would have been the case with the full package of domain names, if only the US Patent Office had given the official green light to register the trademarks earlier. But why the distinction?
As with most disputes, it all came down to the evidence. Panelist Steven M. Levy, Esq. was not satisfied by the evidence submitted by the Complainant that it did indeed have rights to the other names. The Complainant submitted screenshots of their application on the US Patent Office’s website, but despite the fact that the screenshots were limited and patchy, this would not have been enough to establish rights, citing Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i)”).
The Complainant may have been able to circumvent this if it had submitted evidence of common law rights to the mark, but this was not done, a frequent omission in UDRP cases. Despite the Respondent’s complete lack of evidence, the Complainant’s evidence was not enough to get across what is usually a low threshold as it had not been able to show its standing to bring the claim, which requires a trademark.
This case adds to the growing number of cases that suggest UDRP Panelists are well aware that they should not assume a Complainant has trademark rights just because an application for such rights has been submitted or filed. The fact that this alone appears to be the deciding factor in this case further stresses the importance of having your trademarks registered, or proof of an unregistered trademark assembled and ready to go, before launching a complaint.
See also our case notes on what has to be proved to show an unregistered trademark and our recent note on Nicolas Karl Reep v. Ali Bazzi , FORUM Claim Number: FA2004001891242 which shows there is one more pitfall to be avoided, i.e., that in US cases, the registered trademark must be on the Principal Register and not the Supplemental Register, because if it is on the latter, it does not identify the source of the goods or services and is of virtually no value in UDRP proceedings.