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.…
