Second domain arbitration loss for financial media company today.
Earlier today Domain Name Wire wrote about financial media company Bloomberg losing a domain name arbitration case for BloombergRealty.com. Apparently today isn’t a good day for financial media companies and domain names: Dow Jones just found itself on the losing end of a case for Marketwatch.net.
Dow Jones runs the popular Marketwatch.com web site, which it launched in 1997. About a month after it launched the site, Marketwatch.net was registered by the respondent in this case. The site has never really been developed, although it did include a news story feed.
The panel ruled that the domain name was not registered in bad faith because Marketwatch would have to show a “substantial degree of prescience in December 1999” of the Marketwatch.com web site to have trademark rights at that time. When Marketwatch tried to get a trademark on the term in 2002, the U.S. Patent and Trademark Office originally rejected the application on the grounds that it was descriptive and did not have secondary meaning. It was later approved with a first use date in 1997, but the panel inferred that the USPTO’s initial doubt makes it unlikely the web site was very popular in December of 1999.
However, the panel did note that the domain could still be used in a way that infringes Dow Jones trademark. It just wouldn’t be a matter under UDRP:
Decisions under the Policy are directed to the issue of abusive domain name registration and use. They are not directed to issues of trademark or service mark infringement. Without prejudice to the legal character of Respondent’s future conduct, that the Panel decides Respondent did not register the disputed domain name in bad faith in 1997 does not provide instruction regarding whether Respondent may now or in the future infringe on a service mark owned by Complainant. These are distinct legal issues. It is possible to register a domain name in the absence of bad faith, yet subsequently infringe a third party trademark or service mark.