Does registering a domain name give Trademark Rights over the terms involved in the domain name. UDRP is clear about the ownership of the domain name in such cases. The domain name belongs to the preceding party, i.e., whichever is registered first the Trademark or the domain name, the said name belongs to them. However, it does not talk about the ownership of the Trademark Rights. It does say so that if the domain name has been continuously used, it qualifies for Common Law Rights.
Federal Circuit Court witnessed an ongoing dispute between Philanthropist.com and General Conference Corp. of Seventh-Day Adventists (Seventh-Day Adventists Church, SDAC). Philanthropist.com’s owner had registered the domain Adventist.com in 2016. However the trademark ADVENTIST belonged to SDAC through a USPTO mark registered in 1986. The website used by SDAC itself was Adventist.org, which is very similar to the disputed domain name. The difference being only of the Top-Level domain.
The disputed domain name was up for sale at Philanthropist.com for the price $1,200,000. The SDAC thus approached the Forum for dispute resolution. The panel found that the domain name was similar to the registered mark. But again domain name purchase and selling is a legitimate business and thus the clause of ‘no legitimate use’ couldn’t be established and neither could be that of ‘bad faith in registration’. Thus, the Complaint was denied.
However, during this dispute resolution, Philanthropist.com approached the Trademark Trial and Appeal Board (TTAB) to cancel the trademark rights of SDAC. The TTAB decided that merely registering a domain name did not establish trademark rights over it.
Both the parties reached the Federal Circuit Court. Philanthropist.com’s argument was that the ownership of domain name Adventist.org and legal threat by SDAC over the said name gave it the ‘Statutory cause of action’. While the SDAC argued that giving trademark rights to a mere registration of a domain name that wasn’t even being used would have serious negative consequences.
The Court stated that after the litigation of the UDRP decision, there wasn’t an appropriate Statutory cause of action and thus the whole case stands void. The Court also stated that had the statutory cause of action not been eroded, the trademark rights would have been cancelled whatever may have been its implications.
Thus the Court’s judgement maintained the Status Quo as it was. Read the decision here.