Cybersquatting dispute probably shouldn’t have been filed.
A National Arbitration Forum panelist has denied a cybersquatting claim against tolles.com, and I have questions.
I’m perplexed about why the Complainant filed the case and how it argued it.
Tolles Development Company LLC was formed in Nevada on August 8, 2016. Last month, it filed trademarks for Tolles, claiming first use in 2017. Those trademarks haven’t registered yet.
Tolles.com was registered in 2004, so the Complainant needed to argue that the domain had changed hands after the company had common law trademark rights in the name.
And the domain might well have changed hands. The domain was part of Marchex’s portfolio and was acquired by GoDaddy. According to DomainTools‘ historical records, the domain transferred from GoDaddy’s NameFind between July 30 and August 22, 2016.
So the Complainant could have argued that the domain was registered after it had common law trademark rights in the name. Of course, given how soon the domain was registered after the company was formed, it would have needed to show that the Respondent was somehow aware of its plans.
Yet Tolles Development Company provided no evidence of common law rights, just an assertion.
It seems that one of two things happened here. Either Tolle’s lawyer at Dickinson Wright PLLC didn’t look up the historical information, or he knew about it and the client and he decided to file the case anyway. If it didn’t look up historical information, the case shouldn’t have been filed because it shows the domain was registered in 2004. Even if it was aware, it would have needed to show almost instantaneous common law rights or that the domain owner knew about the company.
All of this wouldn’t have mattered, anyway. Once the case was filed the Complainant found out that the domain is registered to the owner of tolles.org. A look at historical Whois records for that domain shows it’s owned by someone with the last name Tolles. This means the owner has rights or legitimate interests in the domain. At that point, the Complainant should have withdrawn its dispute.