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 “comâ€ 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?