In a case decided on June 30th, by Carolyn M. Johnson (Ret.), Diane Thilly Cabell and Paul M. DeCicco at the National Arbitration Forum entitled Point Grey Research, Inc. v. Administrator Domain / Vertical Axis, Inc. and found here: <a href=’http://domains.adrforum.com/domains/decisions/1388025.htm’ target=’_blank’>, the Respondent was represented by my good friend Ari Goldberger. The panel Denied the Complaint under the following circumstances.
POINT GREY is a geographical location. Complainant currently has trademark rights in POINT GREY by virtue of its registration of such mark with the United States Patent and Trademark Office. Complainant did not have trademark rights in POINT GREY at the time the at-issue domain name was registered, for the purpose of this proceeding.
Complainant fails to show that Respondent lacks rights and interests in respect of the domain name. Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. In that the Domain Name PointGrey.com is identicaL to the Complainant’s trademark, Complainant satisfies its slight initial burden regarding Respondent’s lack of rights and interests in the disputed domain name.
Respondent asserts that the terms of the PointGrey.com domain name are common and geographically descriptive terms and therefore Complainant does not have an exclusive monopoly on such terms on the Internet. Respondent contends that the domain name relates to a region in Canada, which in fact is close to where Complainant’s business is located, as well as region of Australia. The Panel agrees and since, as discussed below with regard to bad faith registration and use, Complainant makes no showing that the otherwise geographically descriptive POINT GREY mark has acquired secondary meaning at the time of the at-issue domain name’s registration, Complainant fails to meet its ultimate burden regarding Respondent’s lack of rights and interests pursuant to Policy ¶ 4(a)(ii). Complainant must show that the consuming public, at the time the domain name was registered, primarily associated the mark with a particular producer, rather than the underlying product. The perspective is from that of the consumer rather than the claimant/producer.
This is an important decision if you have any GEO domains.
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