Company files arbitration case with National Arbitration Forum.
Domain registrar Register.com has filed a UDRP against another ICANN-accredited domain registrar, DomainIt, for its use of Register.cc. DomainIt, which manages 22,354 domains according to RegistrarStats, currently forwards register.cc to its main web site.
This is an interesting case on a couple grounds. First, it’s rare to see two ICANN-accredited registrars on opposing sides of a UDRP arbitration. Second, it’s a .cc domain, which is not a popular domain and not commonly disputed under UDRP.
Is Register.com right to go after this name? Here’s what I dug up.
First, DomainIt registered the domain in 1997, two years before the earliest trademark filing I could find for either Register or Register.com. Register.com has trademarks for both Register.com and just “Register” for use related to web sites, domain registration, etc. Although the trademarks were filed after Register.cc was registered, the “first use in commerce” date on the trademark filings is 1994.
Although Network Solutions had a monopoly on registration until the late 1990s, Register.com was a reseller of its domain services starting around 1996.
As to why Register.com is going after a .cc domain, I had to go straight to the source to find out. Register.com General Counsel Roni Jacobson said, “Like any corporation with a well known brand, we have a domain name branding program where we try to get all domain names that are representative of our trademark.” She explained that the company owns many TLDs of the word “Register”, including country code domains.
Register.com owns Register.us. Register.net and Register.org are owned by other people but do not offer any type of services related to domain names. Register.biz and Register.info are owned by the registries themselves.
DomainIT founder Paul Goldstone declined to comment in detail, other than to point out that the domain was registered in 1997.
Register.com’s history with arbitration at National Arbitration Forum doesn’t make this a clear cut case. The company won a slam dunk case for wwwregister.com. It also won a case for a number of domains including 101register.com, webpage-register.com, and website-register.com. The panel decided these were confusingly similar, perhaps because the owner created web sites very similar to Register.com’s. But then it lost a case for ComRegister.com in 2006, as the panelist wrote “The addition of the term “com†to the beginning of Complainant’s mark is sufficient to distinguish Respondent’s comregister.com domain name from Complainant’s mark.”
It will be interesting to see how this one plays out. What do you think? Do you think Register.com should get the domain?
Ramiro says
The domain name extension is not going to matter. What matters is the “Register” mark. Register.com disclaimed “.com” portion of the mark.
Once an application is approved on the Principal Register, as Register.com was, it has acquired distinctiveness. Also, the date of first use in 1994 is what will govern, not the application date. Even though DomainIT acquired the domain name in 1997, a panel will look at the 1994 date as the date of first use in commerce because the Register.com was successfully registered.
Since both registrars deal in domain names, the identical/confusingly similar prong will be met. What will be interesting is whether the “bad” faith prong will be met since DomainIt had no actual or constructive notice of the Register.com mark until Register.com filed its trademark application in 2000.
I’m looking forward to the result.
M. Menius says
Register.com’s claim of “acquired distinctiveness” needs to be examined closely. This is a generic name which is self-descriptive of registration unlike GoDaddy.com or enom.com which are “fanciful” and function much better as defensible trademarks. One would certainly expect to find hotel reservations at Hotels.com and every other extension alternative. Or, information on Spain at Spain.info plus every other extension.
To “register” obviously implies registration of something, possibly many unrelated things. To narrow this broad interpretation, one could look at Register.com’s specialty in registration of domain names as the important distinction. Since “register” does not necessarily imply domain registration, one can see how they might meaningfully distinguish themselves within this narrow class of goods/services, and acquire a level of distinctiveness that could support a claim of trademark protection.
Personally, I feel it’s a stretch and a gamble on their part to try and brand themsleves with such a generic term. I would not be surprised to learn that there are other Register.xxx that are functioning as domain registrars.
Andrew says
@ Ramiro – nice analysis. We’ll see how the panel rules on bad faith.
Andrew says
@ M. Menius – great points. Interestingly, Register.net is a parked page that links to a number of different types of registration, including vehicle registration.
fnord says
IANAL but how did register.com get a trademark on that term? First, as near as I can tell, register.com wasn’t doing any registering in 1994 so how can they claim use in commerce? Second, isn’t the rule of thumb that a computer maker can register ‘apple’ as a trademark but an apple grower or seller can’t?
What I find most interesting is that VeriSign chose the UDRP for .cc. See near end of page:
http://www.verisign.com/information-services/naming-services/othertlds/page_042130.html
Was that just laziness? Many ccTLDs have their own DRP, many less restrictive than ICANN’s UDRP. So is the moral of the story that VeriSign’s .cc simply make up their own DRP? I haven’t bothered to check whether .cc has signed ICANN’s pay and obey contract, but even that hasn’t precluded other ccTLDs from initiating their own DRPs. As DomainITs home page compares various registrars’ prices with register.com coming out the highest, perhaps that is what this is about. -g
Bryan says
some $#%* ing lawyer is advising them to go after a generic term: just to collect on the fee’s. Corporate Lawyers want complication and conflict: thats how they get paid.
The only thing that kinda justifies this is the bad faith argument; and it could easily be argued there was none.
Attournies that only DEFEND against reverse hijackers are OK: and not included in the above classification…
I think its safe to assume we are all rooting for Domainit.
Bryan says
register.com shooting itself in the foot?
Andrew says
@ fnord – I’m not sure if the first use in commerce claim was for domain registration. It was probably for the webhosting and such. Regardless, it’s first use in commerce pre-dated DomainIt’s registration.
I really have no idea how this one will pan out.
luigi montani says
I will never register again anymore names at register.com i will move my names asap.
cdunn says
Archive.org shows register.com didn’t start registering domains until 1998 and hosting until 1999, not 1994 as they claim.
Apparently the US trademark office doesn’t validate the first use in commerce date, it’s taken on trust. I wonder if this dispute will affect their trademark.
Andrew says
@ cdunn – I think Archive.org is somewhat inconclusive given when its records start. But a look at the 1996 record has nothing to do with domain names.
Dave Zan says
Two clues:
They just have to meet the USPTO’s requirements. Gotta love the wording on the first part above.
I too am looking forward to the result. 🙂
John Berryhill says
Nod to cdunn on this one. The “first use” date claimed in a TM application is not relied upon for any substantive examination purpose. As also pointed out, the “REGISTER” applications were issued on a 2(f) – acquired distinctiveness – basis. Hence, one thing that is certain from the face of the registrations is that the claimed term was not distinctive when first used.
Decision here:
http://domains.adrforum.com/domains/decisions/1126697.htm
Register.com, Inc. v. Domain-it!, Inc. c/o Domain-It Hostmaster
no-name says
shhhh domainit.com WON! woohoo for the little guy!
Dave Zan says
Yup. Decision’s finally published:
http://domains.adrforum.com/domains/decisions/1126697.htm
One other interesting bit about this is it involved 2 lawyers well-experienced in this thing. I’m sure they both gave their all, but there can only be one. 😀
Andrew says
Thanks guys…working on a story now
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