In Taxhawk, Inc. v. Silmaril ltd, a WIPO arbitration panel dealt with a case of “typo-squatting” concerning the domain names www.feetaxusa.com and www.fretaxusa.com. The case is also instructive on the issue of common law trademark rights in UDRP disputes, as it confirms that common law rights predicated upon the trademark owner’s first use in commerce can be employed in order to establish priority of use over a “typosquatter.”
Complainant, Taxhawk, Inc., had federally registered the mark FREETAXUSA in 2010 in Class 42 for temporary use of on-line non-downloadable software for tax calculation and tax return preparation. This 2010 registration was preceded by the Respondent’s registration of the domain www.feetaxusa.com, which was registered in 2004. However, Complainant argued that while its trademark rights were obtained subsequent to the Respondent’s registration of the domain name Complainant’s first use in commerce of the FREETAXUSA mark predated Respondent’s registration of the domain, which dated back at least to 2003.
The assertion of common law trademark rights requires a showing of secondary meaning, evidence of which can be shown using “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition”. Candy Direct, Inc. v. italldirect2u.com, FA 514784 (Nat. Arb. Forum August 22, 2005). Complainant sought to do exactly that in asserting priority rights, and was ultimately successful in that regard. Specifically, the Panel found under 4(a)(1) of the Policy that “[a]lthough Complainant did not register its FREETAXUSA mark before Respondent registered the disputed domain names, Complainant’s prior use of the marks can be shown by its ‘first use in commerce’ date and the registration of its primary website.” That said, it should be noted that while the Arbitration panel based its decision in part on the Complainant’s common law trademark rights, perhaps equally relevant was Respondent’s failure to respond. Indeed, Complainant notes in its complaint that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, “it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s).” A Panel might be less inclined to rely on common law trademark rights in order to establish the Complainant’s priority of use in commerce where the Respondent has asserted its rights in the domain in question.
In sum, it is clear that a Complainant’s federal trademark registration need not precede the Respondent’s domain name in order for the Complainant to prevail in a UDRP dispute as earlier common law rights – as evidenced by a Date of First Use that is established by a federal trademark registration – can win the day for a trademark holder. It remains to be seen whether this rationale will be extended further, where the illegitimacy of the Respondent’s use in commerce is less clear, and where the Respondent does not default and thereby forfeit the right to assert legitimate rights in the mark in question...