Houston We Have A Problem: 2 URS Examiners Can’t Agree If The Same Company Owns A Trademark

by

My man Raymond Hackney who writes posts for thedomains.com, as well as his own blog at tldinvestors.com, pointed out two diametrically opposed URS decisions filed by the same complainant Aeropostale Procurement Company, Inc. of New York, one of which concludes they own the trademark to the clothing line of Aeropostale and the other examiner finding they do not.

In the Uniform Rapid Suspension (URS) proceeding on the domain name Aeropostale.Uno, decided on April 10th, 2014, the examiner Alan L. Limbury found that the  “copies of the certificates of registration of seven United States AEROPOSTALE trademarks, four of which are in the name R. H. Macy & Co., Inc., two of which are in the name Aeropostale West, Inc., and one of which is in the name Aeropostale, Inc.” was not sufficient to establish that the Complainant, Aeropostale Procurement Company, Inc. owned the trademark.

“The Complainant  submitted no evidence of any relationship between any of those companies and the Complainant, Aeropostale Procurement Company, Inc” and denied the URS Complaint.

However that was the second URS filed by Aeropostale Procurement Company, Inc.

Five weeks before, another URS examiner suspended the domain name  Aeropostale.Clothing finding that the same Complainant, Aeropostale Procurement Company, Inc., did in fact own the trademark on the term.

In the first case examiner Darryl C. Wilson, found the same Complainant owed a trademark on the term “Aeropostale” in suspending the domain name Aeropostale.Clothing saying:

“The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant

Complainant has met its burden by providing evidence of registration per URS 1.2.6.1 (i).”
The rest of facts presented in the case are not important.
What is important is that the URS which was set up as a quick, simple and low cost procedure to suspend new gTLD domain names that were clearly infringed on trademark holders,  produced two completely different result as to whether the Complainant held trademark rights.
That is very troubling.
If different examiners cannot agree on whether the same Complainant has proved they own a trademark on the same term, how can we hope for any consistency in decisions?
For the record Aeropostale Procurement Company, Inc. also won 4 UDRP prior to either of the URS decisions and won one UDRP  after the decision finding against the company .
The company has also won two UDRP filed by Aeropostale, Inc.

 

About Michael Berkens

Michael Berkens, Esq. is the founder and Editor-in-Chief of TheDomains.com. Michael is also the co-founder of Worldwide Media Inc. which sold around 70K domain to Godaddy.com in December 2015 and now owns around 8K domain names . Michael was also one of the 5 Judges selected for the the Verisign 30th Anniversary .Com contest.