Recent Case Notes & Commentary

DOMAIN NAME REGISTERED BEFORE TRADEMARK- THE CASE YOU WILL NEVER (WELL, ALMOST NEVER) WIN

The Trimount Company, Inc DBA StinkySocks Hockey v. Eric Sweet / Scribblers' Club

FORUM Case: FA1511001647849, Dec. 30, 2015


In the world of domain name arbitration, there are some complaints brought that have little chance of succeeding; there are some that don’t have a hope in hell, and some have even less.


It must be pretty embarrassing to lose when a complaint goes undefended. Yet it happens. By following some straightforward rules and clues (and reading Domain Times regularly), you can prevent this happening to you.

The following case was a true stinker.

This case centres around the domain name <stinkysocks.com>, and a Complainant, StinkySocks Hockey, which had the registered US trademark STINKYSOCKS HOCKEY. While the disputed domain name was confusingly similar to the Complainant’s trademark, the decision to file a complaint was a true stinker. One sentence was all it took for it to fall apart:


“It does not appear that Complainant’s trademark was ever in use when the disputed domain name was registered.

Although the case was undefended, it came out in the wash that the domain name was registered some 6 years before the complainant’s trademark had been acquired.


As has already been noted on many occasions in the Domain Times, it is almost impossible to prove bad faith registration when a domain name was registered before the complainant accrued its trademark rights. The number of cases still brought in spite of this is truly alarming.


(PS. Although this case was decided in 2015, we thought it useful to give it another run, as it is a good illustration of an important principle.)