Usually in case of domain name disputes the first registrant, either of the domain name or of the trademark, gets the priority. However things get complicated when domain name was initially started before a related trademark registration, exchanged hands later and landed with the current owner, the one whose registration date succeeds to the trademark registration date. Who should be given preference in such a scenario?
Forum recently arbitrated a case surrounding the domain name IndoorBillboard.com. The Complainant was Indoor Billboard/Northwest, Inc. The Complainant owns the trademark rights of the term ‘INDOOR BILLBOARD’. The Complainant claims that it has ‘received notoriety’ over the usage of the mark. The Complainant also claimed unawareness if anyone else was using the terms.
The Respondent acquired the domain name via an auction. The Respondent claims that both the terms of the mark as well as the whole mark is generic in nature. The Respondent also presented that several other companies were operating along with the usage of the ‘INDOOR BILLBOARD’ mark.
The panel pointed out that although the trademark of the Complainant did precede the domain name allotment to the Respondent, there is another aspect of it. The Complainant had argued that the name was associated with it and it was unaware of any third party usage. The Court however found that several other businesses were using the mark quite frequently. Thus the mark has not acquired secondary meaning. In easy words, secondary meaning means, the popularization of commonly used words by a brand has made people associate the brand with that name. The panel denied the Complaint.
The panel also found that the Complainant claimed exclusive usage over the mark even when a lot of firms were using the terms. The Complainant must have been aware of this and still brought the matter before the panel. The panel awarded a RDNH as well.
You can read the full case here.