Lil’ Drug Store Products, Inc. just won control of the domain name pre-seed.com in a one member panel UDRP.
The domain holder did not respond.
The factual findings pertinent to the decision in this case are that:
1. Complainant has since 2003 sold fertility enhancement preparations including non-spermicidal personal lubricants and moisturizers by reference to the trademark PRE-SEED;
2. Complainant owns United States Trademark Reg. No. 2,972,756 registered July 19, 2005 for the word mark PRE-SEED;
3. The disputed domain name was registered on January 9, 2003;
4. The domain name resolves to a website that features products similar to those offered by Complainant, as well as unrelated goods and services.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations
There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.
Complainant provides evidence that the disputed domain name resolved to a website located at <babymed.com> which featured “Early Detection Pregnancy Tests,” “Ovulation Tests,” “Pre-Seed,” “Digital Basal,” “FertilAid for Women,” “FertilTea,” and “Pregnancy Plus Prenatal.”
This is not bona fide
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that case is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Panel accepts Complainant’s submissions with respect to paragraph 4(b)(iii) of the Policy since it is not implausible to infer that Respondent is a competitor to Complainant.
Prior panels have found bad faith under paragraph 4(b)(iii) when a respondent uses a disputed domain name to resolve to a website offering products and services that compete with complainant and as a result disrupts complainant’s legitimate business.
Panel finds registration and use in bad faith and so the third element of the Policy is established.
While the trademark registration date was two years after the domain name registration, the ITU trademark application was filed on 8/6/02, with statement of use date of 1/1/03- just prior to the 1/9/03 domain name registration. Coincidence in date of use or domain registration? Trolling of USPTO website, pre-publicity, or mere coincidence in picking the domain name? Probably more facts than meet the eye, but the domain name registration was after the trademark application.
@Gary Saposnik Yes agreed with what you say, but what galls me is they allow Complainants to use Trade Mark law as an argument (i.e protection from date of filing of TM application when the TM is granted ) BUT they then do NOT allow a Respondent to use trade mark laws or principles to answer/defend against a UDRP complaint .THAT is the inequality of the UDRP as it stands. If “a” complainant can make a complaint based on trade mark laws, then surely a Respondent should be able to answer such a “charge” with a response based on trade mark laws ?.
The Respondent did not file an answer. If there was a claim of good-faith registration or use, or based on prior or concurrent TM rights, then they should have filed a response with the valid defense(s).
I was’nt speaking entirely about this particular UDRP decision ,but yes if he wanted to enhance his chances of a defence then he should have replied at least, but then the Complainant has to prove their case, not vice versa and maybe Respondent thought they could’nt. As for “prior or concurrent TM rights” , how about later TM rights (later than Complainants TM) ?. Are we saying that only 1 party in the World has trade mark rights to “a” particular name ?. What if say the Complainant in USA has a TM granted on 1st january 2000 and has the .net domain .Can a party in say UK not have a later UK trade mark and legitimately own the .com , or is the .net owner entitled to that .com as well even though the UK owner has a trade mark ?.
@johnuk- if you have valid TM rights in UK, then you also could have the .com- it wouldn’t be bad faith registration. Since TM rights are territorial and class based, it is possible for a number of different TM registrants to be entitled to the .COM in good faith.