IP agent fails trademark test in cybersquatting case

A British trademark agent has lost a cybersquatting case after providing “wholly inadequate” evidence that it owns a registered trademark.

Trademark Direct, which calls itself the UK’s “leading trademark service”, complained to the World Intellectual Property Organization (WIPO) over the domain name ‘trademarkdirect.com.au’.

The respondent in the case, children’s clothes-maker Bbhinds Pty, based in Australia, registered the domain in 2011. Trademark Direct said the domain was identical to its Australian trademark for ‘TRADEMARKDIRECT’, apparently granted in October 2012.

But the case’s panellist, Michael Spence, ruled on May 21 that while the domain clearly matched the trademark listed by Trademark Direct, “the complainant (remarkably for a complaint purporting to offer advisory services in relation to intellectual property) contains only an extract of the wording of the relevant trademark with no further evidence of the claimed registration”.

The company’s evidence was “wholly inadequate” to support its case, the panellist said, adding that he did not “exclude the possibility” that Trademark Direct owned an Australian trademark, “but the evidence of that is lacking on the record”.

Spence noted that the domain was registered before the trademark was allegedly granted, meaning that Trademark Direct should have also shown that it had an unregistered trademark.

“No evidence at all is provided by the complainant of goodwill in a preceding unregistered trademark,” Spence said. “Such evidence is particularly relevant because of the potentially descriptive nature of the mark.”

The panellist said he could allow the complainant to have “another bite at the cherry” by filing more evidence, but that he wasn’t prepared to do so.

In a similar case, in February this year, Dutch trademark agent Merk-Echt failed to transfer merkecht.com – which matched one of its trademarks – after failing to show that it had been registered in bad faith.