Recent Case Notes & Commentary

Once upon a time in Colorado: No rights in pending trademark applications

Domain Name <truth4greeley.com>



The Resource Center for Pregnancy and Personal Health v. Abigail Hutchings

FORUM Claim Number: FA2002001885848

March 30, 2020[1]



We have already dealt with this interesting case on the issue of ‘truth’ being a generic word. But it raises so many points that it is worth noting here on the basic issue of the need for a Complainant to prove its trademark.

In this case, the Complainant failed on several grounds. It could not show it had a trademark. The domain name was not identical or confusingly similar to the trademark it claimed it had. And the Respondent had a right or legitimate interest in the domain name because it was exercising it rights to freedom of speech.

The Resource Center for Pregnancy and Personal Health (the Resource Centre) is a community medical centre in Greely, Colorado. Its primary function is to be provide STD resources and support and, allegedly, anti-abortion counselling services. Abortions remain legal in Colorado although it has become practically more difficult to get one due to political pressure affecting their availability. Unsurprisingly, the Resource Centre has been the subject of criticism by ‘pro-choice’ members of the Greeley community, including the Respondent in a recent UDRP case – Abigail Hutchings.

In Ms Hutchings submissions she described her website’s mission as to have “…the Resource Center and other Anti-Abortion Counselling Centers around Colorado held accountable for abusing the trust of the communities they serve” and for the truth about the Center to be known. She was referring to a tactic used by a number of similarly religious-based counselling centres whereby they present themselves as ostensibly neutral or even ‘pro-choice’ centers but in reality, advise women not to have abortions.

On September 17, 2019, Ms Hutchings registered the domain name <truth4greeley.com> and began publishing ‘the truth’ about the Center as she saw it. The Resource Centre, who runs the website <tests4greeley.com> then filed the UDRP complaint against Ms Hutchings to obtain the domain name.

WAS THERE A TRADEMARK?

Being the Complainant, The Resource Centre had filed a trademark application for a TESTS4GREELEY.COM mark but the application was still pending at the time of filing the domain name complaint. This became a big problem for The Resource Centre because, as they would learn, a pending trademark application does not confer the same rights as a granted application, because it has not been advertised so that other parties can come forward and object to the trademark being granted. For that reason, The Resource Center failed the standing requirement imposed by paragraph 4(a)(i) of the Policy. That paragraph tells us that only complainants with trademark or other service mark rights have standing under the UDRP, as confirmed by a number of other cases (see for example Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”).[2] In the absence of a registered trademark, a common law trademark can also do the job but in this case The Resource Centre did not suggest that it had one.

Ms Hutching's interest in <truth4greeley.com>

A necessary part of all UDRP claims is that the Complainant/.trademark owner must show that the Respondent/registrant does not have any rights or legitimate interests in the disputed domain name. The Resource Center failed in this regard because Ms Hutchings had rights to the name based on her “legitimate non-commercial use” which the UDRP Rules allow for (see paragraph 4(c)(iii)). Ms Hutchings was not using the site as a source of revenue, she was merely publishing information and criticism about The Resource Center. A range of arguments for protecting that sort of activity could be made based on the US First Amendment rights, which among other things guarantees freedom of speech. More simply though, it suffices that because there was no commercial gain being made and that Ms Hutchings was not trying to ‘misleadingly divert consumers’ or ‘tarnish the trademark’ (because there was no relevant trademark), her non-commercial interest was a legitimate one.

The fact of the issue being politically charged may have also helped her because any action to stifle the free exchange of political ideas and information will (and should) always be treated very cautiously by UDRP Panels especially American ones.

[1] The Hon Neil Brown QC was the panelist in this case. [2] Under some international domain name Policies and Rules, such as the Australian one, it is not necessary to prove a trademark and a registered company or business name will be sufficient to give standing. But under the UDRP, the Complainant must prove it has a trademark.