Paint.biz - the other shoe drops

[jberryhilljberryhill is verified member.]

You remember the awful paint.biz STOP decision:

http://www.arbforum.com/domains/decisions/112596.htm
Complainant also owns a pending U.S. trademark application for the mark PAINT.BIZ.
[...]
Respondent’s business license was obtained in August 2001. This was after Complainant’s IP Claim to the name PAINT.BIZ was submitted (on or about June 26, 2001) and after Complainant’s U.S. Trademark Application was filed (May 23, 2001).

U.S. trademark law provides that registration of a mark shall be constructive notice of the registrant’s claim of ownership.
[...]
Therefore, it is ordered that the domain name <paint.biz>, be transferred to Complainant.

Anyone check the status of that trademark application lately?

Serial Number: 78065184

Mark (words only): PAINT.BIZ

Current Status: Abandoned: Applicant failed to respond to an Office action.

Date of Status: 2003-01-07

 

[fizz]

What a sneaky ruse. Does the respondent have any recourse in such a situation through the National Arbitration Forum?

 

[pljones]

Nice catch John.

While this can't be challenged through the NAF, the decision could be challenged in federal court.

 

[think]

Thanks for the information JBerry. I first ran into this kind of action few years ago. I call it Trademark squatting. It is perfectly legal and the trademark is given priority, as this case shows, over actual ownership. There are many more cases that will come to light in the years ahead.