Trademark First Use Question

[Bob]

When an arbitration case arises, what exactly do they use as the determining date for when a mark is established?

I have an interesting situation (no URDP or C&D yet, but am just curious).

I registered the domain name DJIA.org on March 12, 2001.

When I go to NameProtect and do a search, one record shows up for DJIA. The information is as follows:

1st Use: July 30, 1998
Filing Date: October 12, 2000
Published Date: August 28, 2001
Registered Date: November 20, 2001

The "1st Use" and "Filing Date" preceeds the date of my registration, however, the "Published Date" and "Registered Date" are after I registered DJIA.org.

I realize that this one might fall under common trademark law, but the only place I ever see "DJIA" is on tickers. When you listen to the radio or to the news, they aways say "Dow Jones Industrial Average" and not "DJIA".

If pressured, would I be considered a cybersquatter? Or, would I be alright because the domain name registration occured before the final "Registered Date" for the mark?

-Bob

 

[jberryhill]

There is no "they" that uses anything as a determining date for trademark priority. What gets considered in a UDRP proceeding is whatever the parties submit.

You will note that the UDRP says absolutely nothing about who did what first. While it sometimes is difficult for the complainant to establish bad faith registration if there was no objective reason for the registrant to have been on notice of a pending or issued application for registration, you need to read the criteria for what they are.

The first condition is whether or not the domain name is confusingly similar to someone's trademark. Period. Whether there is something to be made of the dates later on in the argument is a totally distinct issue.

And, once more with feeling, information about pending and issued applications for trademark registration can provide evidence of all sorts of things. "Evidence" and "proof" are also two different things.

"If pressured, would I be considered a cybersquatter?"

The answer to whether you are or are not a cybersquatter hinges on information missing from your posting. Whether you are a cybersquatter depends in large measure on why you registered the domain name, or for what reason someone might fairly infer you registered the domain name. So, since you haven't explained that, let's take a look at what we can see....

Doing a Google search on the term "DJIA" shows that this string of letters is uniformly and universally used as an acronym for "Dow Jones Industrial Average". Based on these search results, it would be a stretch to think that someone stumbled into registering "DJIA" without knowing at least that much, but it is also entirely possible that it was picked up simply because it is a four-letter domain name. Who knows? However, regardless of what your opinion of what one hears on radio or reads in Newspapers, there is a fair amount of use of the letters "DJIA" to refer to the Dow Jones Industrial Average.

Looking at the USPTO database, since I have no idea why anyone would look at anything else for US trademark registration data, it seems that someone has a registration for "DJIA" for use in connection with providing financial information. The registration is based on use dating back to 1998.

If it wasn't for that registration, it would be difficult to show that "DJIA" was used by any party as a distinctive trademark, rather than as an acronym used by various parties to refer to a metric of stock market performance. However, with the registration, a UDRP panel would be unlikely to question the determination of the USPTO that the term "DJIA" is simply a nominative acronym, rather than a trademark.

 

[HOWARD]

Your USE of the domain is also important. I see that you're using it as an SE having no relation to financial info. That could also protect you or hurt you depending on how a UDRP panel views it.

On one hand, it cannot be confused with the Dow Jones Industrial Average, but on the other hand, there are panels that have held that the acronym DJIA bears no relation to the SE and therefore you do not have a legitimate business use for the domain.