I found a few things about the case interesting. First, it is hard to believe that a company like Microsoft chose a name for (what seems to be) a major software product and forgot to file a trademark application before starting to use it publicly. I am sure that someone at Microsoft did a trademark search and cleared the mark before they launched the beta (maybe?), but I could only imagine that if there had been a third-party out there using the mark for software that Microsoft would have ended up arguing that it had merely launched a beta test of the software to a limited number of customers and therefore there were no damages as a result.
Next, the traditional test for secondary meaning of a mark requires that there is prima facie evidence that the mark is known to the public. The test looks to factors such as sales of the product/service, consumer recognition, and publicity and media coverage.
Camco Manufacturing, Inc. v. CheapYellowPages.com and Brian Wick (Nat. Arb. Forum, March 18, 2011)
All of this said, I don’t disagree with the decision. The Registrant was seemingly up to no good as he simultaneously registered a number of other domains which included Microsoft trademarks and it seems beyond coincidence that the Registrant just happened to register the OFFICE365FORCE.COM domain after Microsoft started publicizing the OFFICE365 mark.
For the non-Microsoft small businesses and start-up companies, the decision here has a couple of important lessons:
- Once you decide on a name, file a federal trademark application before you start revealing or testing the product or service in public; and
- Don’t assume that testing your product (software or otherwise) will be sufficient to establish secondary meaning for UDRP purposes – in this case the Complainant was Microsoft, they don’t do things on a small scale so even a beta test passed muster, and the Registrant was a serial saboteur.