Quote:
Generally, where a domain name incorporates a complainant’s mark in its entirety, the domain name is confusingly similar to the complainant’s mark, despite the addition of other words in the domain name and despite the fact that common words may be appended or common words inserted therein. This is the so-called “objective test” adopted by the majority of WIPO panelists. See Wal-Mart Stores, Inc. v. MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Therefore the Panel finds that the disputed domain names, both of which incorporate Complainant’s CLASSMATES mark in its plural or singular form, are confusingly similar to Complainant’s mark.
It is not for the Panel to second guess the expert regulators who determine whether or not an applicant is entitled to register a particular term as a trademark. Complainant submitted that question to the United States Patent and Trademark Office on many occasions. That body has issued several registrations of marks to Complainants. The Panel must respect that august body’s determination, absent clear and convincing evidence in an extraordinary circumstance that the issuance was in error. That is clearly not the case here.
Accordingly, the Panel finds that Complainant has met the first element of the Policy.
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For good or bad, the UDRP does not really contemplate that arbitrators will question registered trademarks. They filed affirmation with the trademark office saying they had used the mark since 1995 and thus established secondary meaning:
Quote:
| SECTION 2(f)The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). 2584325.
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This is why domainers must continue to educate themselves on
trademark law as an essential part of their business knowledge. And I ditto the comments above about 'use.' Typically, cybersquatters are pretty transparent about leveraging someone elses' brand and trademark rights.
Enrico Schaefer, Attorney
Domain Name, Trademark & Cybersquatting Attorney
enrico.schaefer [@] traverselegal.com