CASE LOST BY COMPLAINANT ON THE TIME WHEN A COMMON LAW TRADEMARK ACCRUED AND ON USING A DOMAIN NAME WITHIN THE ORDINARY MEANING OF THE WORDS
Platinum Luxury Auctions LLC v. Sherman L. Ragland, II
FORUM: FA2111001974395, 28 December 2021
The Complainant had a registered trademark with the USPTO for LUXURY AUCTION, registered in 2016. It relied on that trademark to claim two domain names: <luxuryauction.com> and <luxuryauctions.com>. Obviously, those domain names were confusingly similar to the trademark, so the Complainant won round 1.
However, the domain names were registered in 1998, long before the trademark. So, at the time of the registration of the domain names, they would not have been registered in breach of the trademark, which was not registered until 2016 and not used until 2010, and the Respondent would have had the right to register the domain names, which it had done in 1998.
Also, the words in the domain name were generic, descriptive and common words which helped the Respondent establish its right to register them. In fact, this was the first ground on which the Respondent won the case: it had registered generic words as its domain names and had not targeted the trademark owner. So it was going to win the case on that ground without more.
But if the Complainant could show that by 1998 it had a common law trademark, the Respondent probably would not have had the right to register the domain names at anytime after 1998 and they would have been registered in bad faith. It seems to have been implicit that the Complainant had a common law trademark, but it could not have been before 2010 which the Complainant conceded was when it first used the trademark, i.e. prior to its being registered. So, the Complainant had “succeeded” in having the significant date put back from 2016 to 2010 but could not show it had any trademark rights prior to 2010.
Thus, the Respondent won, first because its domain names were generic and then on the additional ground that it could not have acted in bad faith when it registered them in 1998, because the common law trademark had not been established by then.
Lesson to be learned for complainants: check all dates carefully, and if it is possible to adduce evidence that a common law trademark was established by the time the disputed domain names were registered, adduce that evidence and argue for its significance.
Lesson to be learned for respondents: check all dates to see if it can legitimately be argued that the disputed domain names were registered before a claimed registered trademark was registered and before any common law trademark had been established.