Having a registered trademark does not entitle you to the .com automatically.
Citing first use of the mark “InfoTrax” in 1999, InfoTrax Systems waited 13 years to pursuit a trademark.
When the mark was registered with the USPTO in 2013, the company decided to go after InfoTrax.com – a domain registered in 1995 – by filing a UDRP at the WIPO.
Despite having a registered trademark for “InfoTrax”, the Respondent allowed it to lapse in 2009. Regardless, the Respondent, exclaimed that his first use of the mark was established in 1986, and has continued to retain common law rights to the lapsed trademark.
The Complainant attempted to devalue the Respondent’s use of the domain, stating that the web site at InfoTrax.com isn’t something elaborate:
“Respondent only uses the domain name to host a website containing an image with various business terms and a promotion for “InfoTrax Full Range Marketing & Business Technology Solutions” with a notice of “New Website – Coming Soon.”
To that statement, the Respondent quipped thus:
“Respondent has not acted in bad faith. The domain name was registered four years before Complainant first used its trademark. During this time, Complainant engaged in litigation with Respondent that ended in a 2001 agreement entitled a “Mutual Consent and Coexistence Agreement.” Complainant’s asserts that this is a clear case of bad faith reverse domain name hijacking.
Respondent does not believe that all users of Internet domain names be required to host elaborate or costly websites in order to maintain legitimate interests in those domain names, when as here Respondent is using the domain name in a way it chooses to promote its independent business.”
Daniel B. Banks, Jr., panelist for the WIPO, found that the Respondent did not act in bad faith and he has used the domain having legitimate interest, and despite refusing a finding of Reverse Domain Name Hijacking, ordered the domain InfoTrax.com to remain with the Respondent.
For the full text of this UDRP, click here.
