As I pointed out in last week’s essay, having trademark rights that come into existence later than registrations of corresponding domain names only gets complainants to first base; they have standing but no actionable claim. I also noted a nuance (not a difference in substance) in standing requirements between the Uniform Dispute Resolution Policy (UDRP) and the Anti-Cybersquatting Consumer Protection Act (ACPA). However, standing depends upon the specific facts of the case, so that for example, if the domain name is registered between the time of an in use trademark application and the issuance of the certificate, the critical date is the date of the application. Standing can also be established on the basis of unregistered rights but requires substantive proof, and even assuming proof is persuasive weak marks are likely to favor registrants if their use is consistent with the semantic meaning of the characters, and unlikely to support forfeiture.

An example of a weak mark with an alleged common law priority—alternatively, the plural of “micro” or pronounced “mi-cros”—is examined in Micros Systems, Inc. v. SFR Funding, FA1602001659618 (Forum March 11, 2016). MICROS was registered in 2005 but the Complainant claimed 1977 as a first use in commerce. Respondent registered <microsretail.com> in 1997. While the Panel agreed that Complainant had common law rights and thus priority in the string, it failed to establish a prima facie case that Respondent lacked rights and legitimate interests (paragraph 4(a)(ii)). The Panel also found (which should be appreciated by entrepreneurs in the domain name business) against Complainant under paragraph 4(a)(iii):

Under the logic of Complainant, Complainant has rights to seize the domain names of Microsoft, Micro Instruments, Micro Instructional, and other NASDAQ companies making use of the formative expression micro.

In an ACPA context, where standing hinges on proving distinctiveness, the question is whether an unregistered mark with priority in commerce that postdates the registration of the domain name can be distinctive before applying for registration. If distinctiveness is a quality a mark acquires upon registration, then the answer would have to be “no.” However, in an analysis on a motion for summary judgment, a district court reasoned that distinctiveness can adhere to a common law mark when subsequently blessed by the PTO as being inherently distinctiveness. Zinner v. Olenych, 108 F. Supp. 3rd 369, 383-84 (E.D. Va, Northern Division June 4, 2015):

[I]f the PTO issues a certificate of registration after requiring a showing of secondary meaning, the certificate is prima facie evidence that the mark has acquired distinctiveness only as of the time of its registration . . . . [However,] [i]n this case, the PTO’s decision to issue a certificate of registration for the ED ZINNER mark without a showing of secondary meaning requires the Court to reject Defendants’ contention that such registration is not probative of the distinctiveness of Plaintiff’s mark.

Thus,

the PTO’s decision to register Plaintiff’s mark without requiring proof of secondary meaning is prima facie evidence that Plaintiff’s mark was distinctive at the time Defendants registered the domain name because the PTO necessarily determined that Plaintiff’s mark is suggestive . . . and, therefore, inherently distinctive. . . . Accordingly, the certificate of registration is strong evidence from which a trier of fact could reasonably conclude that Plaintiff’s mark is distinctive.

Assuming the facts align in the right way, the reasoning in Zinner could equally apply in a UDRP context where there is a short period of time between the domain name registration and the application for trademark registration. Interestingly, this reasoning has never been applied to a UDRP case although there are a couple of recent decisions for which it could have been applied as an alternative reasoning for bad faith.

Arguably, Zinner is a special instance, but Micros is not. A cybersquatter is a registrant who acquires a domain name with knowledge that it infringes third-party rights. The greater the distance in time between a domain name registration and first use of a trademark in commence the more likely the complainant is abusing the UDRP process. The point is illustrated in four recent UDRP cases, DEGANI DESIGNS, LLC v. Chris Morling / Dot Zinc Limited, FA1603001664293 (Forum April 13, 2016) (<chooze.com>), Master Call Connections, LLC v. Richard Seay / MasterCall, Inc., FA1602001662809 (Forum April 12, 2016) (<mastercall.com>), Fiberstar, Inc. v. Merlin Kauffman, FA1602001663188 (Forum April 11, 2016) (<fibertar.com>), and NORDVPN DISCOUNT - CircleID x NordVPN
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