A registered trademark does not give automatic rights to a domain.
The wonderful world of new gTLDs has created some complicated arguments against domain names.
A UDRP that Madwire LLC brought against the owners of 360.Marketing, a branding company based in Dubai, was recently decided at the National Arbitration Forum.
The Complainant alleged that the Respondent’s domain was registered more than 3 years after they established rights to the mark MARKETING 360.
According to the USPTO, the mark was granted for the following classes:
IC 035. US 100 101 102. G & S: Inbound digital marketing services; search engine ad placement services; social media branding services, namely, consulting, development, management and marketing of brands for social media businesses; mobile advertising services; Advertisement management, namely, digital advertisement targeting and optimization, web-site visitor targeting and/or re-targeting marketing services; Statistical analysis for marketing purposes, namely, user conversion analysis services; Marketing analysis services, namely, user conversion optimization services; e-commerce marketing services; local digital marketing services; website analytic services, namely, tracking and analyzing website tracking for marketing purposes. FIRST USE: 20111026. FIRST USE IN COMMERCE: 20111026
IC 042. US 100 101. G & S: Website design services, search engine optimization services, search engine map location optimization services. FIRST USE: 20111026. FIRST USE IN COMMERCE: 20111026
It’s important to note that the mark disclaims the MARKETING part:
“NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “MARKETING” APART FROM THE MARK AS SHOWN”
These types of registrations are examples of non-exclusive marks and in the case of the UDRP, the sole panelist, Eleni Lappa, found that no infringement took place:
“This Panel finds that there is no clear and convincing evidence that the domain name in question was registered in bad faith. Indeed the Complainant’s rights are earlier however they relate to a commonly used term in marketing and there are no facts supporting the assertion that the Respondent knew or should have known of the Complainant’s prior relevant rights since Complainant’s trademark is not famous or particularly distinctive or fanciful but relates to a descriptive term in the marketing sector.
The Panel further finds that there is no clear and convincing evidence that the domain name was used in bad faith as there is no clear indication that it was knowingly used by Respondent in order to conduct business in a setting that resembles, without copying, that of the Complainant for the purpose of competing with Complainant directly.”
In this case, there is no way to confuse the domain 360.Marketing with the Complainant’s mark, MARKETING 360.
The request to transfer the domain to the Complainant was denied.
For the full text of this UDRP, click here.
