Author: Andrew Allemann Comments: 2 Comments October 7, 2024

The company did not demonstrate prior rights to the term before registering the trademark.

The operator of an adult live cam site has been discovered to have attempted to engage in reverse hijacking of a domain name.

Viking Exchange & Marketing Inc. operates a website at voyeurhouse.com and initiated a cybersquatting lawsuit against the owner of voyeur-house.tv.

The Respondent in the matter contended that its website holds greater popularity than that of the Complainant.

The disputed domain name has been in use since 2015, while the Complainant recently acquired a trademark for VoyeurHouse, claiming an initial usage date of 2000.

In determining the issue of reverse domain name hijacking, panelist Alan L. Limbury commented:

As previously mentioned, the Complaint asserts that the domain name should be deemed registered and utilized in bad faith, arguing that the Respondent intentionally selected a domain name that is identical or similar enough to the Complainant’s trademark VOYEURHOUSE to exploit the Complainant’s established reputation. However, it is evident that the Complainant lacked any established reputation regarding its then non-existent mark at the time the Respondent registered the domain name. The Panel believes that the Complainant must have been aware that its claim was untrue, leading to the conclusion that the Complaint should not succeed. Thus, the Panel finds that the Complaint was initiated in bad faith and represents an abuse of the administrative process.

I believe there is a flaw in this reasoning. Viking’s trademark mentions a first use from 2000, which implies that the Respondent might have registered the domain due to the established recognition of Viking’s website. However, the issue lies in the fact that Viking did not adequately demonstrate that it was utilizing the domain prior to 2015, nor did it establish rights that were in place before its trademark application. Consequently, the case was destined to fail.

Categories: Policy & Law Tags: reverse domain name hijacking

October 7, 2024 at 1:50 pm

“Viking’s trademark mentions a first use from 2000, which indicates that the Respondent could have registered the domain due to the recognized reputation of Viking’s website.”

The claim of first use in a US trademark registration application is made to meet a jurisdictional requirement. The Lanham Act, which is rooted in Congressional authority to oversee interstate commerce, necessitates that the applicant declare the mark has been utilized in such commerce by a specific date.

Nevertheless, the USPTO does not mandate any proof to substantiate the claimed date of first use. Moreover, the USPTO itself does not depend on the alleged date of first use when resolving priority disputes between an applicant and an opponent contesting the application based on priority.

Your suggestion that a UDRP panel should depend on an alleged first use date from a US trademark registration has been categorically dismissed by UDRP panelists on several occasions. Indeed, there are RDNH cases where a Complainant submitted a trademark registration application after the domain name had already been registered and fabricated a false date of first use to support the kind of argument you are advocating for the trademark registrant in this situation.

October 7, 2024 at 1:57 pm

It’s possible that I interpreted your words more deeply than intended. Nevertheless, the key aspect here is that if a complainant under the UDRP wishes to base their claim on a date that is before they registered the trademark, they must provide evidence of the mark’s use as of that specific date. They cannot solely depend on the assertion of first use stated in their application.

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