In yet another shoot from the hip WIPO decision this one involving the domain SkyWaterSystems.com, the sole panelist found that even though the Complaint and the Domain Holder were in the same type of business, there is not necessarily any confusion.
“””As far as the record here reveals, however, the water-related systems offered by the parties here are not strictly, as Complainant asserts, in direct competition with one another. As the Panel understands it, Complainant produces water from the atmosphere and Respondent purifies existing water.””
Wow
When domainers are involved panels give the domain to the trademark holder if there is any close proximity of the domain to the trademark in question.
Yet when domainers are out of the picture panelist all of a sudden, can make a distinction between companies products that “produces water from the atmosphere and purifies existing water.””
This is despite that fact that the panel found that the complainant did have a right to the term in question:
“””Complainant holds rights in the mark SKYWATER through registration and use. The Domain Name incorporates the mark and adds the word “systems.” In the Panel’s view, the addition of the word “systems” does not diminish the confusing similarity between the mark and the Domain Name. This is because the word “systems” actually partly describes what Complainant sells under the mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.””
The panel even found:
“”The Panel believes it conceivable that there could well be consumer confusion as between the source of goods offered via the Domain Name.”
Yet the panel held in favor of the domain holder finding that the very unique term Skywater was NOT distinctive:
“””On the spectrum of inherent distinctiveness, the trademark SKYWATER to identify a system that produces water from the atmosphere in this Panel’s view can hardly be regarded as fanciful or even arbitrary. It is, for this Panel rather, suggestive at best and even arguably descriptive.”””
“””It is not implausible under the circumstances for Respondent to have adopted the term “sky water” as a DBA or a domain name without having any awareness of Complainant or its goods.””
How can a panel find a domain like Sky Water is not distinctive when they found LH to be distinctive?
Here is the kicker.
Remember all the decisions where domainers are held to be on constructive notice of not just every trademark in the United States but even of those of other countries?
Here the panel said:
“””In the Panel’s view, constructive notice by itself does not form the basis for a bad faith finding under the Policy.”
This fly’s in the face of a ton of decisions that puts the burden of constructive notice squarely on the shoulders of domainers.
Finally the panelist recognizing he was way over his head just threw up his hands and said:
“”The issues raised in the Complaint and Response are best left to a court of law.”
“This is not a clear case of cybersquatting, which is the type of case the Policy is intended to address.”
“”A court of law is the proper forum to sort out this clash of alleged trademark rights.”
The problem is this case doesn’t involve a “clash of trademarks” as the domain holder doesn’t have one.
To have a “clash of trademarks” wouldn’t both parties have to have one?
The respondent does have a trademark – a common law trademark – which began its existence immediately upon use. This is of course different from determining how strong a mark it is and whether any secondary meaning can be established if required.
I do agree with the rest of your comments, however. The UDRP is a strange world for domainers.
Paul
Can’t you argue that someone who has a domain for say 5+ years has a common law right based on use on that domain?