Don’t forget to prove earlier rights if you claim them.
Publisher Hidden Values has lost a dispute over the domain name TriangleKidsDirectory.com.
Hidden Values publishes the Kids’ Directory. It also has a registered trademark for KID’S DIRECTORY.
It’s an admittedly weak mark. It’s even a concurrent use registration that is limited in geographic scope.
But, the registrant of the domain name was a former licensee of Kids Directory and published the directory in the North Carolina “triangle”. And he didn’t respond to the dispute. So the odds were tipped in Hidden Values’ favor.
Regardless of what you think of the merits of this case and if UDRP is the proper venue for it, the case seems to have come down to when Hidden Values got trademark rights in “Kid’s Directory”. And this is where the company screwed up.
Hidden Values’ complaint mentions that it started using the mark in 1990. That’s the first-use-in-commerce date on its trademark application. But the trademark application wasn’t filed until 2005, after the respondent registered the TriangleKidsDirectory.com domain name. It should have been easy for the lawyer to show some common law rights previous to 2005 that would have been acceptable to the panel, but he dropped the ball:
“In the instant proceeding, Complainant has provided no documentary or other evidence to support the date of first use in Commerce referenced in its trademark application. This Panel therefore finds there to be a lack of evidentiary basis by which it might reasonably conclude that Complainant held rights in the KID’S DIRECTORY trademark prior to the May 12, 1995 [sic] date on which Respondent registered the disputed domain name.”
Had the company’s lawyer provided what should have been easy proof, I bet the company wins this case.
domain guy says
this is flat out negliance by the ip attorney.the next step is to assess the lost value and be able to monetize and document the lost.
now you can move forward and attack the e and o insurance of this negilent attorney.
there is no excuss for this mistake. especially when you are on the receiving end of a 300 an hour ip bill.
another reason domain guy has taught himself tm law it all started with domains.
Andrew Allemann says
@ Richard, Steve, Alan, Seb –
See JP’s comment. It’s clear this guy didn’t do any sort of checking on the domain. In addition to JP’s comment about DNW.com being a blog, the person even wrote “I decided to contact you after finding out that your domain is not one which is highly active at the moment.”
That is what makes this funny.