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[Sabachka]

I'm rusty on trademark law and may not be current on domain name law. I would appreciate feedback on my analysis below.

xyz is an LLC in the business of manufacturing widgets. xyz has two federally registered trademarks. First trademark is to a design (graphic) plus words (xyz). This registration includes a disclaimer "no claim to use xyz apart from mark shown." This first registration was registered in 2007. Second trademark is to "xyz corporation" and includes words in two different font sizes, a non-linear arrangement of the words, and an underlined word. This registration includes disclaimer "no claim to use of corporation apart from mark as shown." Second mark registered in 2003. xyz is located in state A. xyz has been doing business using that name since 1990. Apparently, no affidavit of incontestable status has been filed for the second mark. xyz has domain name xyz.com.

xyz, LLC is apparently engaged in selling products manufactured by others. The products manufactured by xyz and those retailed by xyz, LLC are related in a general way, but don't appear to be the same. xyz, LLC is located in state B. xyz, LLC appears not to have any federally registered trademarks.  xyz, LLC was founded under a different name in 1994. xyz, LLC has domain name xyz - LLC.com.

xyz is not an arbitrary mark or a suggestive mark, nor is it a generic term. It seems to include both discriptive and geographic elements.

xyz would like to stop xyz, LLC from using its domain name.

1) first mark of xyz is probably not relevant (unless there is a similar graphic on the xyz - LLC.com website).

2) second mark is relevant.

3) UDRP is not applicable because xyz, LLC does not appear to acting in bad faith.

4) In order to stop xyz, LLC from using xyz, LLC.com, xyz would need to bring trademark infringement action and prove priority, secondary meaning, and liklihood of confusion.

5) Unless xyz, LLC is doing business in state A, xyz would need to sue xyz, LLC in state B.

6) A lawsuit would be expensive and difficult to win (based on know facts). I am assuming that it would be difficult to prove secondary meaning. So xyz is probably going to have to live with the other party's website.

Does this analysis make sense? It seems like this fact pattern or similar fact patterns would be coming up a lot in the last 10 years or so - any cases or good resources I might want to consult? Have I overlooked something?

[JSonnabend]

Ok, I admit it.  That hypothetical made my head spin. 

Let me see if answering your question with a question does the trick: who should have rights to "delta.com", Delta Airlines, Delta Power Tools, or Delta Faucets?  How about "champion.com", Champion Spark Plugs or Champion Sweatshirts?

I think that answers the general question, except for your point 4.  If there is likelihood of confusion between the two marks (a conclusion that is absolutely impossible to analyze based on your hypothetical), then to the extent that one party has clear senior rights over the other, that party might be able to wrest the domain from the other.  I'm not sure if that's the case here, as I don't really want to spend the time untangling the time line you present.

Finally, in analyzing priority, make sure you are aware of the "intermediate junior user" issue of senior common law rights holders.

- Jeff

[Sabachka]

Thanks for your response and sorry if the hypothetical made your head spin. That was not my intent. I have read a lot of posts where the OP doesn't mention all relevant facts. I guess I was trying to avoid that situation, and also trying to avoid doing any real work on my fist day back after a holiday weekend.

The hypo does not really seem like Delta Airlines versus Delta Faucets; rather, it's more like Delta versus Delta. As I mentioned, the mark is descriptive and geographic. So perhaps it is even more like Atlantic Information Technology versus Atlantic Information Technology, where the former manufacutures special purpose IT hardware components for sale to other IT manufacturers and the latter sells IT hardware and software manufactured by others to end users.

Assume for sake of argument that there is a decent argument for liklihood of confusion, here is what troubles me (if I understand things correclty): To wrest the domain name from the other party, one needs to litigate in a foreign jurisdiction, something that would likely cost $100k+. Seems like a remedy only available to big business.

The other thing that I don't understand is how the rights of an "intermediate junior user" work in the age of the internet.  The "intermediate junior user" can use the mark in the territory it had used the mark prior to federal registration, but does putting up a website that can be accessed anywhere in the world constitute use within that territory?

[JSonnabend]

If the mark is geographically descriptive and hasn't acquired distinctiveness, then you don't have any trademark rights to assert.

If the other party began use before you did, then your rights are junior, at least in to the geographic extent of the other side's senior use.  Generally, that's enough for the other side to hold on to the domain.

You mentioned that one party makes widgets and the other party sells "goods manufactured by others" that are "related in a general way" with the first party's product.  That's vague to say the least.  Depending on what "related in a general way" means might mean you have a good case for confusion or a bad case.

I've re-read the original post, and it's never clear which "XYZ" you are discussing form one sentence to the next.  Most of the time, you refer to each of the parties as simply "XYZ".  I'm not sure anyone can follow that.

- Jeff