Owner of MyCyty Mark Goes Following MyCity.com
The dates tell the story.
The owner of a trademark for “MyCyty” has failed in his attempt to get the domain name MyCity.com through UDRP.
That someone would go following the correctly spelled version of their made up trademark is a bit surprising. But the circumstances in this case are particularly egregious. It ought to be clear to anyone who visits MyCity.com that it is being used for a bona fide purpose by its owner, 411WEB Directory.
Even if it weren’t, the dates tell the story. As stated by the panelist’s decision, Denis Freiden’s trademark for MyCyty was registered on October 27, 2009, with a first use date of May 26, 2006. 411WEB Directory has owned the MyCity.com domain name since ahead of that date. (The record at the USPTO shows that the first use date for the MyCyty textual mark was actually in 2009.)
This is a classic case of reverse domain name hijacking. It’s impossible that 411WEB Directory registered the domain name to infringe on MyCyty if it was registered prior to the existence of MyCyty. But the panelist chickened out on finding reverse domain name hijacking (she did deny MyCyty’s claim though). Instead of focusing on the fact that MyCity.com was registered prior to the existence of trademark rights in MyCyty, Sandra J. Franklin focused on the fact that the respondent didn’t show evidence of being assigned the MyCity trademark from its predecessor-in-interest and let its trademark for MyCity lapse. All of these are irrelevant given the date the respondent took ownership of the domain name. (It’s unclear if the respondent pointed out these dates in its response.)
Ironically, it’s the owner of MyCyty.com that ought to be more concerned regarding losing his domain. Following all, it has bogus whois information.
