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December 13, 2010 / Nate Harris

Notice of Allowance Not Enough To Prove Trademark Rights In SHAREABLES.COM

Summary of Buddy Treats LLC v. Skylabs Corporation, David Morton

(WIPO Case No. D2010-1744)

Filed: October 13, 2010; Decided: November 28, 2010 (Panelist: W. Scott Blackmer)

Disputed domain name: <shareables.com>

shareables.com (redirects to searchblaster.com)

The Parties

Complainant Buddy Treats LLC (“Buddy Treats”) is a Missouri-based company headed by Sheryl Rhodes. Buddy Treats does not currently offer goods for sale, but it submitted evidence to the Panel detailing its plan to sell “bite-sized meat products that can be consumed by both dogs and their owners (‘One for you and one for the dog you love’).” Ms. Rhodes’ LinkedIn page indicates that the goods will be sold online through Amazon.com and eBay initially, with launch scheduled for early 2011.

On February 16, 2010, Buddy Treats filed a trademark application for SHAREABLES, and a Notice of Allowance issued on October 5, 2010. However, “[i]t appears from the USPTO database that the Complainant has not yet filed a statement of use, and there is no evidence in the record of this proceeding that the Complainant has in fact commenced using the mark in commerce.” Thus, a registration has not yet issued.

The Respondents Skylabs Corporation and its principal David Morton (“Skylabs”) have registered, by their own count, nearly 2000 generic words and phrases as domain names, occasionally developing websites at them but typically just parking them with a pay-per-click landing page. Skylab registered the disputed domain in 2002, and has always pointed it to a pay-per-click site.

Identical or Confusingly Similar

While a complainant may have rights in an unregistered-but-applied-for mark where a Notice of Allowance has issued, the Panel notes that this is typically limited to situations where there is an uncontroverted showing that the complainant is actually using the mark.

Here, by contrast, “[i]n the absence of either trademark registration or proof of use, the Panel strongly doubts that the Complainant has established rights in a mark sufficient to establish standing to pursue a UDRP complaint. However, given the Panel’s conclusions on the third element of the Complaint, it is unnecessary to give further consideration to this first element of the Complaint.”

Rights or Legitimate Interest

Skylabs asserts that its pay-per-click site gives it rights or legitimate interests in the disputed domain. It is unnecessary to decide that question, however, in light of Buddy Treat’s failure to satisfy the first and third prongs.

Bad Faith

In the current proceeding, the Complainant has not established that it has registered or commenced using a SHAREABLES mark, much less that the Respondent must have been aware of the mark in choosing the Domain Name. In any event, the timing is all wrong for such an inference. The Complainant applied for registration of the mark on the basis of intent to use only in February 2010, eight years after the Domain Name was registered. The Complainant has not explained how the Respondent could have had the Complainant’s later-conceived mark in contemplation when the Respondent acquired the Domain Name in 2002. Thus, there is no plausible ground for concluding that the Domain Name was both registered and used in bad faith.

Decision

The Complaint is denied.

Commentary

The Panelist’s discussion (and distinguishing) of prior decisions dealing with notices of allowance and intent-to-use applications is worth noting. As for the idea of dog treats that can be shared with the owner: no comment.

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