Jose Felgueroso
Abogado | Attorney
The Registration of and Access to a Ukrainian Website in the United States are not Sufficient to Create Trademark Rights in the Latter Country
info@josefelgueroso.com
2018-09-07
A federal district court has held that a Ukrainian company did not acquire trademark rights in the United States, even if that company had registered a domain name in the United States and that website was accessible to US residents.
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Background
The plaintiff in this case, Klumba.ua, LLC, is a Ukrainian company that operates a website for the sale of children's clothing and goods. The plaintiff has four members, and has trademark rights in Ukraine over Klumba, including the domain name klumba.ua. In 2012, two of the plaintiff's members purchased from a third party the domain klumba.com, which was registered in the US. In 2013, a dispute arose among the plaintiff's members over ownership in Ukraine of the plaintiff's intellectual property. The plaintiff had not registered the trademark Klumba in the United States, and it had never marketed or promoted the mark there. Klumba.com redirected to klumba.ua, whose content was in Ukrainian or Russian and whose products were offered in Ukrainian currency. The plaintiff had no customers in the United States.
Since this was an action arising from a dispute about property, klumba.com was the nominal defendant. The judge issued its decision after both parties requested summary judgment.
The plaintiff based its complaint on the Anticybersquatting Consumer Protection Act (ACPA), a United States federal law that provides a cause of action against someone who in bad faith registers, uses, or traffics in a domain name that is confusingly similar to a trademark. The question that the judge needed to decide was whether the domain name klumba.com infringed plaintiff's trademark rights, violating the ACPA. As a result, the judge needed to decide first whether the plaintiff had trademark rights over the Klumba mark in the United States.
The Plaintiff's Trademark Rights in the United States
The judge concluded that the plaintiff had no trademark rights over the Klumba mark in the United States. A party can acquire rights over a mark in the United States by registering or using it; since the plaintiff had not registered its mark, the plaintiff could have only acquired trademark rights through use, which is known as a "common law mark." To obtain a common law mark, a party must use in good faith in commerce a distinctive mark in a specific market in the United States. A party uses a mark in commerce when (1) the party sells a product or renders a service in commerce in the United States or involving commerce between non-US residents and US residents, and (2) the party uses or displays the mark in the advertising or sale of the product or service.
Although the site klumba.com was accessible to United States residents and the plaintiff planned to expand its business to that country, the judge found that the plaintiff had not rendered the service or displayed the Klumba mark in connection with sales or advertising in the United States. The plaintiff had also argued that its participation in Google Adsense advertising qualified as use in commerce in the United States; the plaintiff had sold ad space to Google, but the judge concluded that this did not constitute use of the Klumba mark in commerce, because Google advertising on the plaintiff's site involved the display of the marks of other parties, not Klumba.
In summary, because the plaintiff had not registered its Klumba mark in the United States or used it in connection with the sale or advertising of services in the United States or to US residents, the judge concluded that the plaintiff had not acquired trademark rights over Klumba in the country.
The Anticybersquatting Consumer Protection Act (ACPA)
Because an ACPA claim requires trademark rights over Klumba in the United States, and the judge found that the plaintiff had not acquired those rights, the plaintiff was not able to maintain its ACPA claim.