Common law trademark rights are not 'all bark and no bite'

In Jack Russell Terrier Club of America Inc v McKinney, a National Arbitration Forum (NAF) panel has granted the transfer of the domain name '' despite the fact that the complainant had not registered the JRTCA mark at the time the domain name was registered.

Liz McKinney registered the domain name in October 2001. A former member of the Jack Russell Terrier Club of America, McKinney used the domain name for a website to publish information regarding a lawsuit between the club and another California-based Jack Russell Terrier entity. The club did not register the JRTCA mark until August 2002, approximately one year after McKinney had registered ''. The club sent two cease-and-desist letters to McKinney demanding that she stop using its mark, and then filed this complaint with NAF earlier this year.

The panel directed the transfer of the domain name after determining that (among other things):

  • the club is the exclusive owner of the JRTCA mark, and the mark and McKinney's domain name were identical;

  • the club had used its mark in the United States for more than 20 years prior to McKinney's registration of the domain name; and

  • McKinney, as a former member of the club, was well aware of its exclusive rights in the JRTCA mark.

In issuing its decision, the panel acknowledged a line of decisions that supports the premise that trademark registration must precede domain name registration. However, it held that these cases are distinguishable from the present case because (i) McKinney's registration of '', despite her prior knowledge of the club's common law rights in the JRTCA mark, constituted abusive registration, and (ii) ICANN's Uniform Domain Name Dispute Resolution Policy "'does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names'" (citing British Broadcasting Corp v Renteria).

Olivia Maria Baratta, Kilpatrick Stockton LLP, Atlanta

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