Company claims rights to domain because prior owner has not used it.
After Domain Name Wire posted a story about the Fired.com UDRP case and contacted World2Work Corporation, the complainant, World2Work and its attorney released a statement about the case.
The company claims that it should have rights to the domain name based on its 2004 trademark filing and the fact that the current owner of the domain hasn’t used it since it was registered in 1999:
“When we examined the available domain names for our video streams, we quickly realized that the registrant of the domain “FIRED.COM” had done nothing more than sit on that name in the eight or nine years since registering it,” notes World2Work’s president, Scott Sargis. “ICANN adopted its domain name dispute procedures specifically to eliminate this form of cybersquatting and domain name warehousing (sic). Unlike the registrant, we’ve devoted substantial resources to building a line of our business under our “FIRED” brand name. The Trademark Office obviously agreed and granted our application to register that trademark and service mark. We’re now expanding our business and we believe that our registered trademark and the substantive secondary meaning attached to that mark give us superior rights to the domain name. Moreover, we should not be forced to pay the inflated fees that domain name profiteers routinely charge for warehoused domains which they have never bothered to use or develop”.
The statement seems to confuse trademark law with domain registration rights. It continues:
World2Work’s intellectual property counsel, John Franczyk, notes that under traditional trademark law principles, the owner of a trademark who has failed to use the trademark in commerce for an extended period of time is deemed to have abandoned its rights in that mark. The registration procedures under the United States Trademark Act provide an initial ten-year term for new registrations. New registrations, however, are deemed to be abandoned if the registrant fails to submit a “Section 8 & 15 Affidavit”, which attests to the registrant’s continued use of the trademark, before the sixth anniversary of the registration. World2Work accordingly notes that use of a mark is an absolute good faith requirement to maintain a trademark registration, and that a domain name registrant’s failure to use a domain in any genuine capacity fails to satisfy that requirement.
This seems to confuse trademarks and domain names. You do not have to have a trademark in order to have a domain name.
By Sargis and Francyzk’s logic, couldn’t anyone file a trademark on a generic term, start using it, and then claim its rights trump a prior domain registrant’s rights?
World2Work currently uses Fired.tv as its domain name. Does it merely want to acquire Fired.com without paying fair market value? Would this case qualify as reverse domain name hijacking?
Odds of World2Work prevailing? I’d guess 1000:1, unless the respondent completely botches the response. Nevertheless, the filing is forcing the legitimate domain owner to pony up time and perhaps cash to file a response.