Business Magazine Wins Rights To In UDRP Based On Common Law Trademark Rights

Posted on the 21 May 2015 by Worldwide @thedomains

FPK Services, LLC d/b/a (“Complainant”), represented by Brett E. Lewis of Lewis & Lin LLC, New York, USA.  just won the rights to the domain name in a UDRP based on a finding of common law trademark rights

The domain name was registered on April 11, 2014

The Domain name was registered in August 2012.

The one member panel of  John J. Upchurch found that since the domain holder was a former affiliate of the Complainant they had knowledge of the common law mark of and registered the domain to gain traffic from the Complainant despite the generic nature of the domain

Here are the highlights:

“”Complainant argues that although it has not registered the STDCHECK mark with any governmental authority, it has established common law rights in the STDCHECK mark dating back to first use in commerce in August 2012.

Complainant states that it has continuously used the STDCHECK mark since that date in affiliation with its website, its software, and website services. The Panel finds

Complainant’s contentions to be sufficient, and the Panel concludes that Complainant has established common law rights by showing the STDCHECK mark has taken on a secondary meaning in association with Complainant’s business.

Complainant includes an Affidavit of Fiyyaz Pirani attached as Annex 4, in which it is affirmed that Complainant has used the STDCHECK mark associated with its website continuously and extensively in connection with the provision of online testing services.

Further, it is affirmed that Complainant has promoted its mark in commerce, spending $150,000.00 on advertising and marketing its services every month.

The Panel therefore concludes that Complainant has established a secondary meaning in the STDCHECK mark.

While Respondent contends that the domain name is composed of common and generic terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.

Complainant contends that Respondent is a former affiliate of complainant, who operated under an entity named “Rummex LLC.”

On January 8, 2014 Respondent executed an affiliate agreement with Complainant.

In July 2014, Respondent was terminated from Complainant’s affiliate program.

Complainant argues that Respondent has attempted to divert Internet users to its own website, and away from Complainant’s website subsequent to the affiliate agreement being terminated, constituting bad faith disruption under Policy ¶ 4(b)(iii).

In light of the available evidence, the Panel concludes that Respondent is operating a confusingly similar website which offers identical services to Complainant to disrupt Complainant’s business practices pursuant to Policy ¶ 4(b)(iii).

Additionally, Complainant contends that Respondent has used the confusingly similar domain name in an attempt to attract Internet users to its site for commercial gain, trading off the goodwill associated with the STDCHECK mark and the confusion as to the source, sponsorship, or affiliation with Complainant under Policy ¶ 4(b)(iv).

Complainant argues that Respondent registered the domain name with actual or constructive knowledge of the STDCHECK mark and Complainant’s rights in the mark. Complainant asserts that, due to Respondent’s involvement with Complainant’s well-known affiliate program, Respondent must have had constructive knowledge of Complainant’s rights in the STDCHECK mark when Respondent registered the disputed domain name.

Complainant further argues that the advertisements for sexually transmitted disease testing services, which are the same types of services offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights.

The Panel disregards Complainant’s arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith.””

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