SoccerMall.com UDRP
Another one for the proverbial UDRP books.
The domain name SoccerMall.com was hit with a UDRP, after the Complainant, Hassan Shams, alleged that the 16 year old domain infringes on their mark.
Indeed, the Complainant filed for a trademark for SOCCER MALL in 2014, and it received registration status on June 28, 2016.
That’s more than 16 years after the .com domain was registered!
In that sense, the trademark is virtually months old; however, the Complainant alleged that first use was made in 2000:
“Complainant owns and has continuously used the mark SOCCER MALL from the date of its first use in commerce on October 10, 2000, in connection with the marketing of retail and online store services, including selling soccer uniforms, footwear, socks, shin-guards, jerseys, gloves, pants, shorts, knee protectors, t-shirts, sweatshirts, sweat pants, soccer balls, backpacks, travel bags, duffel bags, baseball hats, caps, equipment accessories and related sporting goods and sportswear. “
It’s interesting to point out that a sample of use provided during the USPTO application for SOCCER MALL, displays the URL SoccerCart.com below the words “SOCCER MALL”.
If that’s the sample from 2000 that the Complainant provided for the trademark application, then how is the domain SoccerCart.com registered in 2008?
The Respondent, an individual from China, did not submit a response, but the sole panelist, Terry F. Peppard, saw that in this case there was no “bad faith” involved.
“Although a trademark can form a basis for a UDRP action under the first element irrespective of its date …, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
The National Arbitration Forum panelist thus ordered the domain, SoccerMall.com, to remain with its Registrant.
For the full text of this UDRP decision, click here.
For the record, SoccerMall.com was last sold at NameJet in 2014, for $685 dollars – according to NameBio.
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