“Intent To Use” trademark application used to win a UDRP complaint at WIPO

Is an ITU (intent to use) trademark application enough to win a UDRP complaint? According to this freak decision, yes. Panelist Dr. Clive N.A. Trotman has a very good track record of fair decisions (with a few exceptions apparently) under the UDRP but this time he went too far in order to find in favor of the Complainant Citrix Online LLC of California. I have never before seen a similar decision. If anyone has seen one please contact me.

Here is the time line of the events:

The Complainant Citrix Online LLC filed an “Intent To Use” application for the mark “GOTOTRAINING” at the United States Patent and Trademark Office (USPTO) on March 10, 2008.

Respondent Ramalinga Reddy Sanikommu Venkata registered the domain name gototraining.net on August 5, 2009.

The Complainant first used the mark  “GOTOTRAINING” on February 16, 2010. This is according to their statement filed at the United States Patent and Trademark Office (USPTO).

The trade mark “GOTOTRAINING” was registered with USPTO on  June 22, 2010. (registration No. 3,807,572)

The Complaint for the domain name gototraining.net was filed with the WIPO Arbitration and Mediation Center on June 29, 2012.

The Complainant states that it has a pending Indian trademark application for GOTOTRAINING, application No. 2091680.

The complainant registered the domain name gototraining.com on December 2007 and also has many other registered trademark at USPTO such as “GOTOMYPC” that was registered on October 14, 2003 but unfortunately these facts should have been irrelevant to these proceedings.

What is an “intent to use” trademark?

If you have not yet used the trademark, but plan to do so in the future, you may file an application with the United States Patent and Trademark Office (USPTO) based on a good faith or bona fide intention to use the trademark in interstate commerce. You do not have to use the trademark before you file your federal trademark application. Later on in the application process, you will need to file proof of using your trademark in interstate commerce. A total of five extensions, each lasting six months in duration, may be granted by the USPTO before proof of use in interstate commerce is required. Each extension incurs additional filing fees.

Filing of the Intent To Use trademark application does not itself automatically give an applicant trademark rights that can be enforced against third parties. Rather, it provides the applicant the ability to obtain trademark rights that have a priority date as of the application filing date even though the applicant did not start using the mark until a later date. In this case first use date is after the registration of the disputed domain name. In other words, the applicant would not be able to enforce any trademark rights against third parties until after the applicant had actually used the mark as a trademark.

The Panelist went fact though the first elements of the UDRP, “Identical or Confusingly Similar” and “Rights or Legitimate Interests”, finding in favor of the Complainant. Then Panelist went on to the 3rd element (Registered and Used in Bad Faith). He said that there was no evidence of any intended use of the disputed domain name, or of the Respondent having any business related to the website content. The Respondent’s immediate reply to the Complainant’s cease and desist letter, by inviting an offer to buy, largely negated any possible implication by the Respondent of having a bona fide commitment to the disputed domain name.

This comment would have been suitable for the 2nd element of the UDRP  “Rights or Legitimate Interests” and I don’t understand why Panelist put it in the 3rd section.

Then the Panel went very far to conclude on the balance of probabilities that the Respondent, having registered the disputed domain name, then dressed it with a token but inactive website content in order to create a visible presence on the Internet, that action did not convert a passive holding of a disputed domain name into an active holding. Panel said that Respondent’s avoidance of any direct placement of the disputed domain name for sale at a nominated price, and the avoidance of naming a price in reply to a cease and desist letter, do not circumvent the spirit and intent of paragraph 4(b)(i) of the Policy, so the Panel found that the cumulative evidence was sufficient to conclude that the disputed domain name has been used in bad faith.

Then the Panel tried to prove the “registration in bad faith” part of the 3rd element which was actually impossible to prove as the registration of the domain name predated the first use AND the registration of the mark “GOTOTRAINING”. The Panelist improperly used an intent to use trademark application to twist the facts and find in favor of the Complainant. 

Here is what the Panelist said and in the end ordered that the disputed domain name gototraining.net be transferred to the Complainant:

In terms of registration, the Respondent acquired the disputed domain name on August 5, 2009. The Complainant’s trademark GOTOTRAINING was granted registration at the USPTO on June 22, 2010, with first use claimed for February 16, 2010 and the application having been filed on March 10, 2008. Thus, the Complainant’s trademark was granted registration after the disputed domain name was registered, but application for the trademark pre-dated the Respondent’s acquisition of the disputed domain name.

The simple dates are not definitive, however. Registration in bad faith may be found where, on the balance of probabilities, it is reasonable to conclude that a Respondent knew or ought to have known that the proposed domain name would conflict with the intellectual properties of another party.

Paragraph 2 of the Policy imposes upon a registrant the requirement, inter alia, that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” and further states “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”.

The Respondent could have searched the relevant USPTO trademark application registry and should have found the Complainant’s application in respect of GOTOTRAINING. More pertinently, it is noted that the Complainant held trademarks registered between 2001 and 2006 for constructs commencing in the style GOTO, although contrary to its reference to “the GOTO trademarks”, the Complainant has not produced any evidence of any rights in a trademark GOTO standing alone.

In reaching a decision in terms of bad faith registration, the Panel has reviewed the totality of the evidence, including the long previous existence of the Complainant’s related trademarks GOTOMEETING, GOTOWEBINAR, GOTOMYPC and GOTOASSIST. The Complainant’s application for the trademark GOTOTRAINING was a matter of public record more than 16 months before the Respondent acquired the disputed domain name. The Complainant’s businesses of facilitating web-based assistance, and the training facilitation projected by the Respondent’s holding page, have broad similarities. It may reasonably be expected that the Respondent, in selecting a domain name for a business, would have conducted elementary searches and would have noted the pre-existence and unavailability of <gototraining.com> and the fact that it had been registered by the Complainant in December 2007.

Having regard to all the evidence the Panel finds the disputed domain name to have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.