Wow, that sure proves the value of making sure that your defensive domain registrations are in good order, as one of your first orders of business.
- original owner of company (and creator of AD-AWARE software) registered a domain name <adaware.com> on February 24, 2000
- The disputed domain name <ad-aware.com> was created on March 24, 2001.
- The Office of Harmonization for the Internal Market (“OHIM”) records for CTM registration No. 003094356 show that the application for the trademark AD-AWARE was filed on March 13, 2003, by “Nicolas Stark Computing, AB” a corporation located in Sweden. The application for the trademark AD-AWARE proceeded to registration on September 7, 2004.
- The United States application for the trademark AD-AWARE was filed by Nickolas Stark Computing AB on January 28, 2003 and proceeded to registration on May 24, 2005.
To complicate matters, it seems that when the company was sold the trademark information was not updated everyplace it should have been to reflect the new ownership. It definitely weakens any claims about trademark rights arising from prior usage when the trademark itself is still registered to someone else!
Do everything you reasonably can to register obvious variants of your important domain names. Singulars, plurals, with or without hyphens, TLD variants, predictable spelling errors, etc. ... everything that's available.
Make sure all your trademarks are in good order, with accurate and up-to-date ownership information.
In some cases it would be a better use of resources to hold your nose and make the squatter an offer they can't refuse, rather than go to court and lose.
Don't expect to win if you're suing about a domain that was registered before your trademark was registered.
Actually, the way I read it, the Ad-Aware people did not register the "adaware.com" domain until 2005, after their trademark was approved. The ad-aware.com domain (with hyphen) was owned by a completely different company for years before they registered their mark and so was the adaware.com domain. When they registered the trademark in 2005/2005, the ad-aware.com domain and the adaware.com were taken for 3 or 8 years. They registered a trademark years *after* the domains that would go with the mark were already taken, so the only thing to protect their mark would have been to pick one that actually has a domain name available to go with... They ended up buying the adaware.com domain from the owner in 2005, then, 6 years later, they decided to go after the ad-aware.com domain via WIPO.
It might be a bit more compelling decision if it was the unanimous decision of a 3 arbitrator panel versus a single arbitrator.
Interesting that you show up here, as a new member, to post about this decision. You have some skin in the game?
Sometimes it's the better course of action to remain low key about "winning". Knock a man down and he might just let you walk away. Knock a man down and trumpet the fact and the same man might feel compelled to rise up to fight again.
Translated: WIPO decisions aren't final decisions when it comes to TM rights.