legal Worst UDRP Decision Of The Year? Panel Gives Away Domain Registered Before TM Was Filed

[News]

A one member UDRP panel has awarded a domain name purchased in 2010, TheLightBlubStore.com, to Lumen Inc. based off a trademark filed in 2011, after the owner wanted to “reselling it for an outrageous profit. Specifically, Respondent offered to sell the disputed domain name for $18,000.00.”

Hon. Carolyn Marks Johnson was the Panelist who found the Complainant had a common law trademark right even though the Complainant did not make that argument or even a statement that they had a common law trademark right.

Complainant owns THE LIGHTBULB STORE mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,189,954, registered August 14, 2012, filed Dec. 15, 2011).

Although Respondent’s purchase date of September 27, 2010, predates Complainant’s earliest demonstrated legal rights in the THE LIGHTBULB STORE mark, namely the December 15, 2011, filing date with the USPTO, the Panel found that Complainant’s rights in the mark dated back to the date represented to the federal government in the filing process as 2009, a date that is earlier in time than Respondent’s purchase of the disputed domain name and that therefore a finding of bad faith is not precluded.

Full Article: http://www.thedomains.com/2015/03/1...s-away-domain-registered-before-tm-was-filed/

 

[DU]

They were not making a claim of word exclusivity in that document. They were just trying to lay claim to the bulb in 'i'. This statement does not void their rights to be 'awarded' a common law trademark..

Beware the fools that try to use !deation in their domain names.... let alone ideation because that bubbly ! looks like an i!

You're smelling the fishy and applying it incorrectly. It's like me buying a nice wild king salmon from a "FISHMONGER" (TM) <--I'm claiming that and then taking it home and 2 weeks later claiming it smells off. Sure it does....now.

 

[DU]

They took a shot hoping that the owner was unprepared; and they were.

and they took a long shot hoping that the single panelist could either be bought or would make an absurd decision - and won.

 

[DU]

@johname - So they can be awarded a common law trademark for a term even though their TM specifically precludes that? I'm asking, because it seems strange concept to me.

UDRP has no legal jurisdiction or mandate to correctly assess the applicability of a Trademark / ServiceMark.
That's the joke. Ha ha.

 

[Name Trader]

@defaultuser - I thought we all knew that And people can lose their assets when they incorrectly assess the applicability of a TM, when they have no legal jurisdiction or qualification to do so.

 

[DomainVP]

and they took a long shot hoping that the single panelist could either be bought or would make an absurd decision - and won.

I agree, that's why everyone needs to be prepared and at least know that you have to respond to every claim a complainant makes, and have your fair use and good faith responses done correctly.

You would think that TM is black-and-white but it leaves a lot of room open for interpretation.

 

[johname]

2 weeks later

If you want to look at it purely in a time frame.

The domainer purchased the domain in 2010

The company applied for the bulb in 'i' mark in 2009

Panelist went for the earlier 2009

****************************

As I stated in posts on NP over the years don't assume you get the credit for the original creation date of a domain you purchase on back orders. Because if the other side has money they will pay someone to research these things or the first dude to own it was such a pain in the ass they memorized his name lol

 

[onebrand.co]

No matter what, any blatant UDRP attempt on a Generic word or term is bull crap.

The panelist decision is seriously bull crap. The respondent should file a counter-suit in federal court. I think it happened before and was also reported here. About a domainer who lost a UDRP or almost lost (cannot really remember) but he counter-sued in Federal court