In this guest post, Attorney Paul Keating writs that the recent UDRP decision for SteveJobs.com was flawed.
The SteveJobs.com decision troubles me deeply. In terms of trademark, I see it as attempting to shove a round peg into a square hole and ignoring the many gap. Although the outcome is perhaps the result of an inexperienced foreign Respondent, I would have expected more.
By way of background, my search for the Claimant dug up several addresses in Palo Alto. These appeared to be a registered address and not active business locations. I did not find any website that was related to the Claimant. A reverse WHOIS search at DomainTools did not show that Claimant had any registered domain names. In short, I found no evidence that Claimant really existed, let alone that it had used the asserted trademark in any manner whatsoever.
The WIPO TMDM trademark site shows 66 registered trademarks for “Steve Jobs”, 19 of which are registered by third parties unrelated to Mr. Jobs. Indeed, the 1st registration listed was filed in France on September 2011 by Yohann Uzan. There was one US registration but it included “Steve Jobs” in a laundry list of famous names.
Claimant’s earliest trademark registration was in 2018 (it has since filed numerous registrations in different jurisdictions), all of which are outside of the US. I could not see any registration documentation that made a “first-use” claim that predated the 2018 application.
The panel concludes that a common law right had been established as of 1999, thus pre-dating the domain registration. The conclusion is based on the following: Click here to continue reading…