Traverse Legal, PLC Successfully Defends UDRP Filed by Non-Profit: No Established Trademark Rights in Phrase "Organizing for Action"

Attorney Brian A. Hall has successfully defended a UDRP filed against its client concerning the domain names organizingforaction.com and organizingforaction.org.  The UDRP Decision to deny the claim matches another earlier, although recent, decision that reached the same result concerning the domain name organizingforaction.net.  While the two UDRPs were separate, involving separate Respondents, separate facts and allegations, and separate representation, the decisions to deny the Complainant's Complaint were both based upon Complainant's failure to establish trademark rights in the phrase "Organizing for Action."  Complainant is a non-profit organization associated with the Democratic Party and supported by President Obama.  Complainant currently operates from President Obama's primary website, barackobama.com, There has already been significant press concerning the background related to the Complainant and these domain name disputes.  See here, here, and here.

Both panels found that Complainant failed to establish common law trademark rights in the phrase that it first used on or around January 18, 2013, which coincided with the domain registrations.  Moreover, both panels did not comment upon the remaining two factors of the UDRP, namely whether Respondent had legitimate rights and interests in the disputed domains and whether Respondent registered and used the disputed domains in bad faith.  Nevertheless, both Complaints were denied, although one was "denied without prejudice," which is something rarely seen in UDRP decisions and unclear as to its meaning given that a finding of lack of trademark rights at the time of Respondent's registration effectively means that Respondent could not have registered the domain in bad faith, a prerequisite for a successful UDRP.  Even if common law trademark rights were not ultimately disclosed, if Complainant were at a later time able to establish secondary meaning, it would still have to prove bad faith cybersquatting.    

These decisions confirm the importance of, and sometimes difficulty with, establishing common law trademark rights so quickly following first use, especially if the domain name registration coincides with such first use.  They also confirm the different styles of panelists in rendering decisions, even when such decision is based upon the same conclusion.  Nonetheless, two separate panels have spoken, and they agreed that none of the domains should be transferred to the "District of Columbia non-profit organization formed January 18, 2013 with the object of advocating for certain public and political policy issues."