In what maybe the worst decisions of 2013, Urban Home of Oxnard, California was just awarded the domain name UrbanHome.com in a UDRP decision.
The complainant just got its trademark in 2012 and didn’t form his company in the state of California until 2001.
The company didn’t registered the domain it operates its business at until 2006 (shopurbanhome.com).
The domain UrbanHome.com was registered in 1999.
The domain holder lost despite showing that the principal of the complainant has been the subject of several trademark infringement lawsuits resulting in judgments adverse to him.
The panel didn’t deal with this issue which is especially unfortunate because the trademark granted by the USPTO was originally rejected as being too generic and granted only upon the affidavit of the principal of the company.
Instead, the one member panel put a lot of emphasis on the registrar the domain name was registered with, Fabulous.com and its parking program that is advertised on their site.
In all a bad decision but the domain holder bears a lot of responsibility by not getting a three member panel and by not providing proof of when and how it obtained the domain name.
Here are the relevant facts and findings by the one member panel:
“Complainant is the owner of registration of the word trademark and service mark URBAN HOME on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 4160123, dated June 19, 2012, in international class (IC) 20, covering “Home furnishings, namely, furniture”, and IC 35, covering “Retail and on-line store services featuring home furnishings and furniture”.
Complainant’s application for trademark registration was dated May 12, 2011.
Such application asserted first use and first use in commerce of December 1, 2000. Complainant disclaimed the exclusive right to use “HOME” apart from the mark as shown.
Complainant’s application for registration of the URBAN HOME trademark and service mark (hereinafter “trademark”) was initially refused pursuant to a USPTO office action on grounds, inter alia, that the trademark was merely descriptive of the goods and services which it referenced.
“To overcome this refusal Complainant submitted a signed declaration under Section 2(f) of the Lanham Act (15 USC §1052(f)) from its president, Constantino Papanicolaou, asserting personal knowledge that the trademark had become distinctive of the goods and services stated in the application through Complainant’s substantially exclusive and continuous use in commerce for at least the five years before the date of the declaration. Complainant’s other evidence of use consisted of a website printout dated May 12, 2011.”
“Complainant operates a commercial website at “www.shopurbanhome.com”. ”
“According to a Domain Tools WhoIs report submitted by Respondent, the record of registration of the domain name <shopurbanhome.com> was created on September 19, 2006, and the Administrative contact was listed as Constantino Papanicolaou.”
“Respondent has submitted a record from the California Secretary of State showing a business entity named “Urban Home” with filing date of February 20, 2001, and its agent for service of process “Constantino A Papanicolaou”.”
“Complainant’s commercial URBAN HOME website refers to seven storefront locations in the State of California, including in Rancho Cucamonga, West L.A., Sherman Oaks, Oxnard, Valencia, Westlake Village and Simi Valley.March 30, 1998. ”
“The Registrar’s verification indicates “unsure as to the exact date” in response to the Center’s routine query to indicate, if possible “the date on which the current registrant registered (or acquired the registration of) the [disputed] domain name(s).” Respondent does not expressly state that it was the initial registrant of the disputed domain name. It has not provided direct documentary evidence regarding the date on which it registered or acquired the disputed domain name.
“Respondent has provided evidence of use of the disputed domain name in connection with an active commercial website dating from as early as October 1999, and identifying a furniture store in Dallas, Texas from as early as October 2000. (Results from “web.archive.org”).
An archive result from May 21, 2008 shows the disputed domain name being used in connection with a standard parking page with links, to free credit reports and home furnishings.
The earliest website screen capture showing content substantially similar to that presently at the address identified by the disputed domain name is from July 17, 2011.
“As of the initiation of this administrative proceeding, Respondent was using the disputed domain name to direct Internet users to a website identified by the heading “urbanhome” and containing content relating to the furnishing of home interiors. Subpages of the website covered subject matter such as the use of vibrant color schemes, and home decorating ideas such as blending old with new. In addition to the substantive content, the website included a limited number of links to home furnishing suppliers, including Pottery Barn, San Clemente Furniture and AMFurnitureOnline.com. The overall appearance of Respondent’s website was not that of a standard format link farm parking page. The content was well written. There are only a few links to third-party home furnishing vendors. As of February 17, 2013, there were no sponsored links appearing on Respondent’s “www.urbanhome.com” website.
“Respondent has provided evidence that Constatino Papanicolaou, listed as the administrative contact of Complainant, and as the agent of the Urban Home legal entity in California, has been the subject of several trademark infringement lawsuits resulting in judgments adverse to him. These include Jerry’s Famous Deli, Inc. v. Papanicolaou, 383 F.3d 998 (9th Cir. 2004); and Tavistock Restaurants v. Constatino Papanicolaou, SACV11-00684, Cent. Dist. Cal., Stipulated entry of permanent injunction (amended), November 10, 2011 (defendant/Complainant represented by Complainant counsel in this proceeding).”
“Respondent has provided evidence that the terms “urban” and “home” are widely used in a descriptive sense in connection with commercial websites and general reporting. A Google search of “urban home” conducted by the Panel on February 17, 2013 listed Complainant’s “www.shopurbanhome.com” website as the first listing. An unrelated store in Berkeley, California, “Urban Home Consignment Furniture” was listed second. Respondent’s website identified by the disputed domain name was listed 13th.
A Google search of “urbanhome” showed Complainant’s business first, with a number of sub listings; Respondent was listed fifth, and the unrelated aforementioned Berkeley store sixth.
“Complainant has provided evidence of registration of the trademark and service mark (hereinafter “trademark”) URBAN HOME on the Principal Register of the USPTO, and evidence of use of that trademark in commerce in the United States. ”
“In this proceeding, Respondent first has alleged that the trademark term at issue, URBAN HOME, is generic for a place of residence or refuge near a city. ”
“By “generic”, Complainant means that the term refers to a genus or class of thing, and that exclusive trademark rights may not be established in respect to the genus or class of thing to which it refers. ”
“In support of this contention, Respondent has submitted independent Wikipedia entries for the terms “urban” and “home”, as well as news and information stories using “urban home” to refer to a residence or dwelling in a city, and Internet search results showing some businesses other than those of Complainant using the term “urban home” in their names.”
“The Panel concurs with Respondent’s view that the term “urban home” may be generic for a residence in a city. ”
“However, Complainant has not secured trademark registration for the term “urban home” in connection with residences located in cities. It has, instead, secured trademark registration for use of the term in connection with home furnishings, namely furniture, and services featuring home furnishings and furniture (see Factual Background, supra). URBAN HOME is not being used by Respondent to identify a city dwelling, but rather to identify furniture and related services. For this reason, the Panel does not consider Complainant’s trademark invalid or unenforceable because it is generic, and rejects Respondent’s argument that Complainant therefore lacks enforceable rights in a trademark.”
“Alternatively, Respondent argues that Complainant’s trademark is merely descriptive, by which it means that Complainant purports to own rights in a descriptive term for which it has not established the requisite consumer association or secondary meaning.”
“In response to an initial refusal by the USPTO examiner of registration for URBAN HOME on grounds of mere descriptiveness, Complainant provided two forms of evidence. The first was a declaration by its president attesting to his personal knowledge that the trademark had been in substantially exclusive and continuous use in commerce for a period of five years preceding the date of the declaration. The second was a printout of its website dated May 12, 2011.”
“The trademark examiner accepted the affidavit and printout submitted by Complainant as sufficient to establish secondary meaning for purposes of registering Complainant’s URBAN HOME trademark. The affidavit of the president is just that. It is a personal representation (subject to penalty for willful false claims). “”In the present administrative proceeding, Respondent has challenged the length of use of the URBAN HOME trademark asserted by Complainant, and has provided its own evidence suggesting that significant use by Complainant has taken place substantially more recently than asserted by Complainant. ”
“However, Respondent has conceded that Complainant in 2006 registered the domain name principally associated with its URBAN HOME online presence, “www.shopurbanhome.com”, and has provided evidence (in the form of a web archive printout) that Complainant maintained an online presence as URBAN HOME as of March 2007. Given the evidence that Complainant has established a number of URBAN HOME retail outlets in California, the Panel is inclined to accept that Complainant has used its trademark in commerce for at least several years.”
“In its application for trademark registration, Complainant asserted first use and first use in commerce of URBAN HOME in 2000, but assertions of first use do not establish any evidentiary presumption and there is little or no evidence on the record of this proceeding to suggest that Complainant used the URBAN HOME trademark in commerce to identify home furnishings and related services as early as 2000 (although it did establish a business entity with the name Urban Home in California in February 2001).”
“The Panel considers that Respondent has failed to overcome the presumption that Complainant owns rights in the trademark URBAN HOME by having acquired distinctiveness or secondary meaning in that term in connection with home furnishings, in particular furniture, and services relating thereto. ”
“Pursuant to the Lanham Act (15 U.S.C. §1057(c)), the filing date of an application for registration constitutes constructive use of the mark, conferring a nationwide right of priority, contingent on registration of the mark. See Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033. Complainant submitted its application for trademark registration to the USPTO on May 12, 2011. ”
“The Panel will otherwise revert to “when” Complainant established trademark rights in its discussion of the element of bad faith.”
“The disputed domain name, <urbanhome.com>, is for purposes of the Policy identical to Complainant’s URBAN HOME trademark.”
“Complainant has established that it owns rights in the URBAN HOME trademark, and that the disputed domain name is identical to that trademark.
“Respondent consistently refers to the initial registration date of the disputed domain name in 1998 as the basis for establishing its rights or legitimate interests in the disputed domain name.”
“Nowhere in its Response does Respondent indicate when it acquired the disputed domain name, and its Registrar has not furnished that information. It appears from the evidence submitted by Respondent that other parties owned registration of the disputed domain name when it was initially registered and for some time thereafter since Respondent has not suggested any relationship to the businesses (such as a furniture store in Dallas, Texas) that were earlier identified by the disputed domain name. Had Respondent been associated with those prior registrants, Respondent presumably would have provided that information in light of the importance of such facts to this proceeding.
“Respondent furnished a website printout addressed by the disputed domain name from May 21, 2008 showing a standard format link farm parking page. ”
“The first archive printout showing a website substantially similar to that operated by Respondent as of the date this proceeding is dated July 17, 2011, with a copyright notice date of 2011. In the absence of additional evidence from Respondent concerning the date on which it acquired the disputed domain name, the Panel draws the inference that Respondent acquired the disputed domain name some time at or about July 17, 2011, and began to use the disputed domain name in connection with its commercial website at or about that time.”
“Complainant provides evidence that the professional service, Fabulous.com, through which Respondent registers the disputed domain name, has established a business model of providing content to domain name registrants intended to attract pay-per-click advertising revenues. ”
“This business model is explicitly described in the About Us and Information Center at Fabulous.com. As noted in the Factual Background, supra, the content provided on Respondent’s website is well written and consistent with providing information to consumers regarding design and furnishing of urban residences. The content pages also include links to sellers of home furnishings, including furniture, that are in direct competition with Complainant”.
“Respondent appears to be operating a new model of sophisticated link farm using “better than average” content to attract Internet users to its pay-per-click advertisers. ”
“The Panel draws this inference in light of the explicit explanation of this business model by Respondent’s professional service provider, Fabulous.com.”
“In this respect, the Panel has been tasked with deciding whether a business model using a descriptive trademark term with website content reasonably associated with that term, and directing Internet users to third-party competitors of the trademark owner, constitutes fair use of the trademark term.”
“From the standpoint of the Panel, the key element here is that the website associated with the disputed domain name is advertising and providing links to businesses directly competitive with those of Complainant, the trademark owner. As noted earlier, the trademark URBAN HOME may be generic for a residence in a city, but it is not generic for home furnishings. If Respondent had used the trademark term to advertise houses or condominiums located in cities, the Panel might well determine that Respondent had rights to use that generic term in the disputed domain name in connection with that genus or class of thing.”
“URBAN HOME does not describe furniture, or services in connection with furniture. Respondent is not using that trademark term in a directly descriptive sense. It is instead using Complainant’s unique trademark identifier to direct Internet users to third-party advertisers competitive with the home furnishing business of Complainant. In the view of the Panel, this does not constitute fair use of Complainant’s trademark term.”
“The Panel has inferred that Respondent acquired the disputed domain name on or about July 17, 2011. Complainant submitted its application for trademark registration for URBAN HOME on May 12, 2011. The USPTO electronically publishes information regarding applications for trademark registration shortly after filing. The USPTO database is easily searched. The Panel considers that Respondent had at least constructive notice of Complainant’s trademark when it acquired the disputed domain name, and should have anticipated a dispute. Moreover, the Panel determines that Complainant has not made a bona fide offering of goods and services at the website identified by the disputed domain name.”
“The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is using Complainant’s distinctive trademark term to operate a commercial website directing Internet users to third-party providers of goods and services competitive with those of Complainant.”
“There is little or no evidence to support a finding in this proceeding that Respondent registered the disputed domain name for the purpose of selling, renting or otherwise transferring it to Complainant or a third party for valuable consideration in excess of its out-of-pocket expenses in connection therewith. ”
“There is similarly little or no evidence that Respondent registered or used the disputed domain name for the purpose of disrupting Complainant’s business.”
“Complainant has argued that Respondent has engaged in a pattern of registering the trademarks of third parties to prevent those third parties from registering their trademarks in corresponding domain names. But, aside from noting that Fabulous.com operates a business model which encourages ownership of registration of substantial quantities of domain names, Complainant has provided no evidence that Respondent has registered any domain name other than the disputed domain name incorporating the trademark of a third party.”
“Respondent appears, however, to be using the disputed domain name for commercial gain by attempting to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website. Respondent appears to be using the URBAN HOME trademark of Complainant in the disputed domain name in the expectation that Internet users will visit Respondent’s website, and thereupon links on Respondent’s website will divert those Internet users to third-party competitors of Complainant.”
“This brings the Panel to the jurisprudential crux of this proceeding. Namely, whether Respondent registered the disputed domain name at a time when Complainant owned rights in its URBAN HOME trademark? Further to substantial precedent of panels rendering decisions under the Policy, including this Panel, a respondent may not be found to act in bad faith to register a domain name prior to the complaining party having established rights in its trademark (with some potential narrow exceptions not relevant here). ”
“Respondent is represented by sophisticated counsel. In its Response, Respondent consistently relies on the initial registration of the disputed domain name on March 30, 1998. ”
“By any of Complainant’s own accounts, that 1998 initial registration took place prior to Complainant’s establishment of rights in the URBAN HOME trademark. And, if that initial registration had been undertaken by Respondent (or a party affiliated by ownership with Respondent), it would be exceedingly problematic for Complainant to succeed on its claim that Respondent registered and is using the disputed domain name in bad faith.”
“In its Response, Respondent studiously avoided any explicit statement regarding the date on which it acquired the disputed domain name, even though it presented substantial evidence from which it may be inferred that Respondent was not the initial registrant.”
“It is the view of this Panel that if Respondent was in a position to have established that it acquired the disputed domain name prior to Complainant having establishing trademark rights, Respondent would have done that.”
“The best information available to the Panel suggests that the disputed domain name was acquired by Respondent on or about July 17, 2011. ”
“That date is subsequent to the priority of Complainant’s rights in its trademark, which date back at least to the filing date of its application for registration, May 12, 2011. ”
“Even if that sequencing is imperfect in terms of the date on which Respondent acquired the disputed domain name, Complainant has submitted evidence of use in commerce of what would have been an unregistered or common law trademark dating back at least several years prior to its application for trademark registration. The Panel does not consider it necessary to establish a precise date on which Complainant may have established common law trademark rights.”
“The Panel considered going back to Respondent for additional evidence regarding the date at which Respondent acquired the disputed domain name. However, it appears to the Panel that Respondent (as represented by counsel) should have been well aware of the importance of establishing that date for purposes of this proceeding, and the fact that it did not do that implies that it acquired the disputed domain name relatively recently.”
“As noted by this Panel in Diet Center Worldwide, Inc. v. Jason Akatiff, WIPO Case No. D2012-1609, there is recent precedent in the Ninth Circuit Court of Appeals of the USA (see GoPets v. Hise, 657 F.3d 1024 (9th Cir. 2011)), suggesting that, at least under the Anticybersquatting Consumer Protection Act (ACPA), a domain name which is initially registered prior to the existence of trademark rights may be transferred between unrelated parties without considering the circumstances under which it has been acquired by the transferee. The Panel refers to its decision in Diet Center Worldwide, supra, for discussion and analysis of this jurisprudence. As explained in that decision, this Panel, however, considers that the transferee of a domain name unrelated to the initial registrant engages in a new registration upon the transfer. The new registration incorporates the terms of the Policy and the contract representations of the registrant. This does not mean that a transferee may not under appropriate circumstances legitimately acquire a domain name which incorporates terms in which a third party holds trademark rights. It does mean that the new registration is tested under the terms of the Policy.”
“The Panel determines that Respondent acquired and registered the disputed domain name after Complainant acquired trademark rights in URBAN HOME, and that Respondent is using the disputed domain name for commercial gain to attract Internet users to its website location by creating confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy. Respondent registered and is using the disputed domain name in bad faith.”