Recent Case Notes & Commentary

BAD FAITH REGISTRATION - ANOTHER THINGIFY

The case of THINGIFY, INC. v. Ross Colquhoun concerns the domain name <thingify.com>.

FORUM Case. Claim Number: FA1405001558220

June 9, 2014


The Complainant owned and used the THINGIFY mark in connection with computer graphics design services. The Respondent owned the domain name <thingify.com> which it defended by saying it was used to direct internet traffic to two other sites, or to "create things from ideas" or "thingify".


The Respondent's argument that, as "thingify" referred to the process of turning ideas into things, it was in connection with a bona fide offering of goods or services. While this is something the panel would normally have needed to contemplate, fortunately for the Respondent, there was a stronger argument, as that argument does not have the ring of victory about it.


The Respondent’s other and better argument was that he, the Respondent, could not have registered the domain name in bad faith, because he had registered it on May 8, 2005, and the Complainant did not receive USPTO registration of its trademark until July 30, 2013. That registration also stated that the first use of the trademark, before its registration, had been on September 28, 2012.


The Panel agreed and determined that the respondent could not have registered or used the disputed domain name in bad faith when the respondent registered the disputed domain name even before the complainant began using the mark as a brand and of course before the trademark had been registered.


In these bad faith cases, it is important to remember the Complainant must prove that the domain name was registered in bad faith and used in bad faith (4(a)iii)). Thus, as in  Mary Hall dba The Recessionista v Ellen London, (see our note on that case) the panel concluded that as the registration was not in bad faith,  there was no requirement to consider whether the use of the domain name was in bad faith.