Domain Dispute procedure or any legal process in general is something that a common person on the streets might not be able to comprehend easily. However, law firms and especially Intellectual Property law firms should not be naive about the dispute resolution procedures.
WIPO witnessed a contention over the domain name Bartko.com by two parties. The Complainant here is Bartko Zankel Bunzel & Miller, USA.
The Complainant is a well staffed law firm that has been in operation for decades. The Complainant claims common law trademarks over BARTKO since December 1994. The Complainant has applied for trademarks over this mark as well, which hasn’t been registered to them yet. The trademark applications also include the BARTKO.COM mark.
The Complainant claims that the Respondent had infringed upon its common law rights over BARTKO. The domain name in question was used by the Respondent to offer PPC links. The Complainant claims that by registering the domain name, the Respondent has ‘unlawfully prevented the Complainant from using their preferred domain name.
The Respondent is a man named Jan Bartko. The domain name Bartko corresponds to his family name.
The panel found that although the Complainant claimed a long history of usage enabling them the common law rights, evidence supporting the same fell short of the ground. The documents submitted by the are from 2020 or after. Moreover the Complainant has used different marks such as BZ, BZBM, BartkoZankel and Bartko Zankel Bunzel. Hence it is difficult to state that the Complainant has common law rights in the first place let alone be for such a long duration.
The Complaint was denied.
However the panel also noticed that the Complainant was a legal firm providing IP related services as well. In such a situation, the Complaint is highly misleading. The Complainant failed to demonstrate any evidence of Common law rights and even if they did, they should have known that they wouldn’t succeed in establishing Bad Faith at the Respondent’s part.
The Complaint was doomed from the beginning yet the Complainant pursued the case. Hence, a RDNH was also awarded to the Complainant.
You can read the full case here.
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