Early trademark registration is significant for protecting trademarks in domain names according to a UDRP decision denying transfer of musicmaker.com

Early trademark registration is significant for protecting trademarks in domain names according to a UDRP decision denying transfer of musicmaker.com. The respondent in the UDRP (Uniform Domain Name Dispute Resolution Policy) proceeding, The Music Connection, located in Reston, VA, offers custom music CDs and digital downloads. The company registered the domain name musicmaker.com on November 11, 1996.

The complainant in this case, MAGIX Software, a German company, offers software, mobile apps, and online services for music and video hobbyists. The most successful product of the company is MUSIC MAKER, a digital audio stream workstation. The product is now internationally known and used. The complainant registered the trademark MUSIC MAKER in Germany in 1994, and in the United States in 1997, with a date of first use in the United States of June 4, 1995. However, the mark was not published for opposition, and therefore made a matter of public record, until July 15, 1997, after musicmaker.com was registered.

The panelist in its decision to deny the complaint to transfer the domain name said that because the trademark MUSIC MAKER was not published in the United States until after musicmaker.com was registered, he was unable to infer that The Music Connection should have been on notice of any rights that would have prevented the registration of musicmaker.com.

The complainant likely could have prevailed on the complaint if its mark had been distinctive and federally registered prior to the registration of the domain name. Although the panelist ultimately made his decision based on the lack of bad faith registration and use, early trademark registration may have been sufficient to overcome that part of the decision as well. (MAGIX Software GmgH v The Music Connection, D2015-1216).

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