RK Netmedia, Inc. represented by Randazza Legal Group, brought an UDRP for the domain name MilfHunters.com

The domain holder beat back the challenge despite a trademark and use of the domain in a competitive manner to the trademark holder.

More importantly there is some very good langage in the opinion for domain holders in general.

Here are the facts:

The Complainant has a United States trademark for MILFHUNTER in international class 41 for entertainment services in the nature of photographic images, pictures, slide shows, live and pre-recorded video and audio recordings, articles and information involving adult-oriented subject matter transmitted through a global computer network.

The Complainant filed its application for that mark on September 26, 2003. The mark was published for opposition on January 4, 2005, and having received no opposition to registration, the United States Patent and Trademark Office issued protection for the United States Trademark number 2,936,139 on March 29, 2005.

The Complainant provided evidence of the registration of that mark. The Complainant also claims to have common law rights in that mark established by continuous use of its mark on the Internet since 2002.

The disputed domain name was registered on March 14, 2002, and the Registrar (in communications to the Center) replied (to a query of when the current registrant registered or acquired the registration of the disputed domain name) referencing the aforementioned date of registration.

“In this case, the Complainant had no registered mark when the disputed domain name was created in 2002.”

“Therefore in the circumstances of this case, the Complainant would inevitably fail, unless the Complainant can demonstrate rights in a common law mark when the disputed domain name was registered or demonstrate that the disputed domain name was registered with the Complainant’s (then) future rights in mind.”

“The Complainant claims that it had rights subsisting at the time the disputed domain name was registered, established by the Complainant’s continuous use of its mark on the Internet since 2002.”

“However, the Panel notes that the Complainant’s certificate of its United States registered mark indicates a first use in commerce in 2001 – not 2002.”

The Complainant’s evidence also suggests that it first registered its own domain name correspondent to its mark on October 27, 2001. As such, the evidence suggests that the Complainant’s use of the term “milfhunter” may have began in 2001.”

“The Complainant also provides evidence of its website “from the Internet Archive at its first available date in March 20, 2002” and reviews of its website as at 2011.”

“Taken together, this is not strong evidence, in the Panel’s view, that the Complainant had established sufficient reputation in a common law mark in early 2002, when the disputed domain name was registered.”

“As noted in the WIPO Overview 2.0, to establish rights in a common law mark, “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition”.

“The Complainant provides little such evidence to establish that its mark had obtained secondary meaning in 2002. Even if the Complainant’s relevant “use” can be taken to have immediately commenced in October 2001 (immediately after the registration of its own domain name), this would have left only around 5 months between its first use and the registration of the disputed domain name.”

“Establishing a reputation in a mark is not something that occurs overnight.”

“In the absence of any substantial marketing or Internet presence prior to the registration of the disputed domain name, there is little evidence in this case from which an inference of such a reputation in early 2002”.

“There are other factors that go against the Complainant’s case. The Complainant’s mark is comprised of what appear to be two descriptive terms (the terms “hunter” and “milf” – the latter which has a particular pornographic connotation).”

“While those terms, taken together, have obviously been sufficient for a registered mark to be granted in 2005, the use of them would require at least some material evidence of secondary meaning in March 2002, when the disputed domain name was registered. ”

“Separately, it is also notable that the Complainant has taken a substantially long period – almost 10 years – to bring a Complaint.”

“While such a delay does not, by itself, prevent the Complaint from succeeding, such a factor does make the Complainant’s case more difficult. ”

“The Complainant’s delay does not suggest that the registration of the disputed domain name significantly disrupted its business.”

“The Panel acknowledges that the disputed domain name, as evidenced by the Complainant, resolves to a website competing with the services offered by the Complainant.

This is evidence that supports a finding of bad faith use. However, under paragraph 4(a)(iii) of the Policy, there must additionally be evidence of bad faith registration. For the reasons set out above, the Panel considers there insufficient such evidence in this case.”