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October 21, 2010 / Nate Harris

Business Filings Inc. v. Thalacker

Summary of Business Filings Inc. v. John Thalacker d/b/a Traffico
(WIPO Case No. D2010-1332)

Filed: August 5, 2010; Decided: October 1, 2010 (Panelists: John R. Keys, Jr., Michelle Brownlee, and Alan L. Limbury)

Disputed domain name: <bizfiling.com>

bizfiling.com

The Parties

Since 1996, Complainant Business Filings Inc. (“BFI”) has offered online business forms and related products and services on its website at <bizfilings.com>, earning total revenues of roughly $100 million. In 2000, BFI filed an application to federally register the mark BIZFILINGS.COM on an intent-to-use basis. The application was finally refused in 2002 on the ground that the applied-for mark was merely descriptive. BFI did not appeal the refusal, and the application went abandoned in 2003.  In 2008, BFI filed another intent-to-use application for the mark BIZFILINGS. After an initial refusal on the ground of mere descriptiveness, the USPTO registered the mark in 2009 based on acquired distinctiveness.

The Respondent John Thalacker d/b/a Traffico registered the disputed domain in 2002. Mr. Thalacker has always used the disputed domain name in connection with a “paid advertising search system,” which includes links to competitors of BFI.

Identity or Confusing Similarity

Mr. Thalacker does not contest the similarity of the disputed domain name to BFI’s BIZFILINGS mark, nor does he challenge the validity of BFI’s mark. Though the first prong only requires that BFI have current rights in the mark, the Panel notes that the evidence raises doubts as to when, if ever, BFI’s BIZFILINGS mark acquired distinctiveness. Nonetheless, “[t]he scope of the Policy does not enable this Panel, in its view, to ‘go behind’ a trademark granted by a national authority, to find that Complainant’s 2009 United States federal trademark registration is invalid.”

Accordingly, the Panel finds that BFI has “present rights” (foreshadowing emphasis added) in the BIZFILINGS mark.

Rights or Legitimate Interests

The Panel does not believe there is enough evidence of record to to determine Mr. Thalacker’s rights or legitimate interests in the disputed domain. Such a determination is unnecessary though, because “the bad faith issue is case determinative.”

Bad Faith

To prove bad faith registration, BFI must demonstrate that it had common law rights in the BIZFILINGS mark at the time Mr. Thalacker registered the disputed domain in 2002. Attempting to prove such common law rights, BFI submitted traffic statistics for <bizfilings.com> for the relevant time period. But traffic to the disputed domain does not prove trademark rights in the disputed domain name. “An internet address and a trademark are not per se the same thing.” To the contrary, the Panel notes that BFI’s then-pending application for BIZFILINGS.COM was filed on an intent-to-use basis, implying that BFI did not believe it was using the mark in commerce at the time.

Therefore, at the time he registered the disputed domain, Mr. Thalacker was entitled to the belief that BFI did not have rights in BIZFILINGS or BIZFILINGS.COM. “Even if Respondent was aware of Complainant’s website, which is possible although not proved on the record, the Policy does not protect one domain name from another’s use of a similar domain name. The essence of the Policy is protection of trademark rights, not domain names.”

Decision

The Complaint is denied.

Commentary

I thought this was a pretty good decision. However, the idea that an intent-to-use application would only be filed by an applicant that didn’t believe it was using the mark in commerce doesn’t fit with the reality of trademark prosecution practice. A use-based application requires the applicant to submit a valid specimen showing use as of the filing date. However, at least in the field of software/online services, what constitutes a valid specimen is somewhat dependent on the Examining Attorney. Filing a use-based application with a specimen that turns out to be invalid requires you to amend the application to an intent-to-use basis. Standard practice for many attorneys is to file an intent-to-use application until you have a specimen you’re almost certain will be accepted, then amend the application to allege use.  You get the benefit of the earlier filing date, but you have time to get your ducks in a row, specimen-wise.

In other words, an applicant may file an intent-to-use application not because it doubts it is using the mark in commerce, but rather because it is uncertain whether the Examining Attorney will accept the specimen available on the date of filing.

Epilogue

<bizfiling.com> still points to a “paid advertising search system,” a.k.a. a page of sponsored links.

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