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Register.com Loses Register.cc Battle

Battle of the registrars goes to “the little guy”.

In terms of size, Register.com is Goliath and Domain-It is David. According to RegistrarStats.com, Register.com controls 2,635,000 domains compared to Domain-It’s 25,000.

But David prevailed in an arbitration filed under UDRP by Register.com for the domain Register.cc (first covered on Domain Name Wire here.) The three person panel found that, while the domain is identical to Register.com’s trademark, Domain-It has been using it for a legitimate business use.

The panel also criticized Register.com for waiting over 10 years after Register.cc was registered to file a complaint and questioned Register.com’s claim of common law trademark prior to 1999:

For the purposes of Paragraph 4(a)(i) of the Policy, it does not matter that a trademark was registered after the disputed domain name. However, the fact that the disputed domain name was registered long before the trademark was finally registered, and certainly before the application for trademark had been filed in the USPTO, does not assist the Complainant.

In the extensive, and often repetitive, pleadings of both parties, there is no explanation from the Complainant as to why it has taken almost 10 years for it to bring a Complaint under the UDRP in respect of the disputed domain name.

The Panel cannot find it proved that the Complainant has proved a common law trademark prior to the date of its application for a trademark in 1999.

John Berryhill, who represented Domain-It, wrote this comment on Domain Name Wire following the decision:

Nod to cdunn on this one. The “first use” date claimed in a TM application is not relied upon for any substantive examination purpose. As also pointed out, the “REGISTER” applications were issued on a 2(f) - acquired distinctiveness - basis. Hence, one thing that is certain from the face of the registrations is that the claimed term was not distinctive when first used.

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