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October 28, 2010 / Nate Harris

Myskiv v. Worhol

Summary of Ostap Myskiv v. Peter Worhol
(Nat. Arb. Forum Claim No. 1343260)

Filed: August 25, 2010; Decided: October 20, 2010 (Panelist: Prof. Darryl C. Wilson, Esq.)

Disputed domain name: <keysrecover.com>

keysrecover.com

The Parties

Since 2007, Complainant Mr. Ostap Myskiv has sold a Windows application that safeguards software activation keys under the mark RECOVER-KEYS. Mr. Myskiv sells the software through his website at <recover-keys.com>, and in June 2010 filed for federal trademark protection for the mark.

Respondent Peter Worhol sells software that is similar to that sold by Mr. Myskiv.  He claims that he registered and began using the disputed domain long before Mr. Myskiv applied to register the mark RECOVER-KEYS.

Identity or Confusing Similarity

Though Mr. Myskiv does not (yet) own a trademark registration, he may still demonstrate common law rights in the mark. Mr. Myskiv attempts to do so by proving secondary meaning, which the Panel considers to be an admission that the mark is descriptive. However, the only evidence of secondary meaning offered by Mr. Myskiv is the fact that his site was established in October 2007. In the Panel’s view, this is not enough:

In addition to the length of time a common law mark has been in existence, other relevant evidence normally supporting such a claim includes the amount of sales under the mark, the nature and extent of advertising, the level of media recognition, and survey data on consumer awareness. None of that relevant evidence has been provided by the Complainant and the time of use alone is insufficient to indicate that secondary meaning is associated with the mark

The Panel does agree, however, that the disputed domain is similar to the RECOVER-KEYS mark. [Wait, I thought it wasn’t a mark?] It quotes Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum May 5, 2003) for the rule that “[i]nverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning.”

However, Mr. Myskiv’s “interspers[ing of] jurisprudence from the U.S. Federal Anti-Cybersquatting Protection Act” appears to irk the Panel:

[T]he inquiry does not extend to implementation of the U.S. Federal Circuit courts use of their 13 factor test for confusing similarity. While those decisions are helpful the UDRP arbitrations are international administrative proceedings that are not bound by the court decisions of any particular jurisdiction. Past UDRP rulings, while not binding precedent, generally offer much instructive guidance in questions of UDRP policy interpretation as the matters in dispute are more similar than those that make up the bulk of U.S. federal jurisprudence on confusing similarity.

As for Mr. Worhol’s arguments, the Panel dispenses with the idea that RECOVER-KEYS is generic. Mr. Worhol’s argument that the words “recover” and “key(s)” are each generic violates the anti-dissection rule. However, the Panel agrees that RECOVER-KEYS is descriptive, as both parties sell software allowing users to recover keys. Furthermore, as discussed above, Mr. Myskiv has failed to offer evidence of secondary meaning. In a well-punned parting shot to both parties, the Panel observes that “someone needs to unlock the secret of distinctive labeling in the parties [sic] field of endeavor.”

Thus, Mr. Myskiv has failed to prove that he has rights in the mark RECOVER-KEYS. Accordingly, the Panel declines to consider the other two prongs.

Decision

The relief requested shall be DENIED.

Commentary

This was a pretty good decision, I thought. However, I don’t agree with the blanket rule, quoted from Reed Elsevier Props. Inc., that reversing the order of the words cannot overcome confusion because “the two words create the same commercial impression and meaning.” I think the order makes a huge difference. For example:

FOOD LION

LION FOOD

Epilogue

<keysrecover.com>still points to Mr. Worhol’s business site.

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