In a case involving the domain name, Bachoco.com, a one person WIPO panel held in favor of the trademark holder.
The term Bachoco is the subject of a trademark registered in Mexico in 1989 and a US trademark registered in July 2003.
The domain name was created in 2002.
The panel found that although Bachoco is a mountain region in Mexico that the Mexico trademark coupled with the use of the domain going to a parking page was enough to give the doman to the trademark holder.
“””There is no persuasive reason why Respondent should not be equally held to knowledge of existing well-known and registered trademarks in Mexico as it is to knowledge of trademarks in the United States””
The panel also felt compelled to point out the domain name registrant was located in the Cayman Islands.
Finally if trademark holders do not have enough rights currently, this panel also stated:
“””An intent to use application establishes a presumption of trademark rights in favor of the applicant dating back to the date of filing of the application contingent on registration of the trademark. Filing of the application is treated as constructive use of the mark. Complainant filed an ITU application with the USPTO on December 14, 1999, well before Respondent registered the disputed domain name, and was subsequently granted registration with respect to the subject trademark. While Complainant’s application asserted a date of first use in 2003, that assertion does not affect its rights based on constructive use of the mark based on its trademark application.“
So trademark owners rights go back to the date of application, not just the date of the registration of the mark according to this panelist, even if the date of the application is dated well before the date of first use.
There appears to be something very wrong in the Panelist’s logic.
Regardless of the panelist’s logic, this kind of reasoning will soon become a strong trend from a trickle to a torrent.
Soon the penny will drop among domain holders of “generics” with a parking page that “if you don’t use it, lose it” (ie. no parking)
No longer will domainers build crappy mini-sites to earn income – soon they will build mini-sites (with no PPC ads) to protect their “generic” domains from being UDRP’d 😉
It appears that this particular panelist rules in favor of the complainant 87.5% of the time, according to Professor Geist’s statistics, which have become somewhat dated.