Battle of the registrars goes to “the little guy”.
In terms of size, Register.com is Goliath and Domain-It is David. According to RegistrarStats.com, Register.com controls 2,635,000 domains compared to Domain-It’s 25,000.
But David prevailed in an arbitration filed under UDRP by Register.com for the domain Register.cc (first covered on Domain Name Wire here.) The three person panel found that, while the domain is identical to Register.com’s trademark, Domain-It has been using it for a legitimate business use.
The panel also criticized Register.com for waiting over 10 years after Register.cc was registered to file a complaint and questioned Register.com’s claim of common law trademark prior to 1999:
For the purposes of Paragraph 4(a)(i) of the Policy, it does not matter that a trademark was registered after the disputed domain name. However, the fact that the disputed domain name was registered long before the trademark was finally registered, and certainly before the application for trademark had been filed in the USPTO, does not assist the Complainant.
In the extensive, and often repetitive, pleadings of both parties, there is no explanation from the Complainant as to why it has taken almost 10 years for it to bring a Complaint under the UDRP in respect of the disputed domain name.
The Panel cannot find it proved that the Complainant has proved a common law trademark prior to the date of its application for a trademark in 1999.
John Berryhill, who represented Domain-It, wrote this comment on Domain Name Wire following the decision:
Nod to cdunn on this one. The “first useâ€ date claimed in a TM application is not relied upon for any substantive examination purpose. As also pointed out, the “REGISTERâ€ 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.
Paul Goldstone, CEO of DomainIt, released this statement to Domain Name Wire:
Based on the history, facts, and evidence we felt confident that the panel would rule in our favor and we’re very pleased with their decision.
While we were obviously interested in preserving our own domain name, we were also concerned with the precedence a negative decision in this case could have had for other generic domain name holders.
We were surprised by the dispute to begin with, but we now hope to move forward in the friendly-competitive relationship that registrars generally have with each other. Such a relationship is rare in many industries, but has become a standard in the domain business… and that’s something we wish to preserve.
Updated 11:40PM CDT: Register.com spokesperson Wendy Kennedy has provided the following statement:
Although we respect the ruling, we are obviously not satisfied with the outcome of this UDRP action. We maintain our position that the disputed domain name is identical to our registered trademark for REGISTER, and confusingly similar to our registered trademark for REGISTER.COM, therefore we view this as an infringement on these trademarks.
When a company files a UDRP arbitration, it needs to weigh the risks if it doesn’t prevail. In this case, it seems that Register.com’s trademark has been cheapened. There are a number of questions as to the legitimacy of its “first used in commerce” claims, which could jeopardize the trademarks. It is surprising that it would bear this risk for a .cc domain name.
Full text of the decision can be found here.