Print PDF

Plaintiff’s predecessor filed a federal trademark application for the mark ECASH in November 1994.  The mark issued as a registration in August 1999.  Defendant registered the domain name “ecash.com” in July 1995.  In 1996, plaintiff, then known as Digicash, contacted defendant to request transfer of the domain name, but defendant refused.  Plaintiff sued defendant in March 2000, alleging trademark and unfair-competition claims.  Defendant counterclaimed that plaintiff’s trademark registration was fraudulently obtained because plaintiff failed to disclose defendant’s registration of the “ecash.com” domain name to the Patent and Trademark Office. The court rejected defendant’s argument in denying plaintiff’s motion to dismiss defendant’s counterclaim.  According to the court, a trademark applicant must disclose a third party’s rights only if they are “clearly established."  In this case, because the mere registration of a domain name does not confer any trademark rights, let alone “clearly established” rights, plaintiff had no duty to disclose defendant’s registration of the “ecash.com” domain name to the PTO.  Even if defendant were allowed to amend its counterclaim to add allegations of its use of the “ecash.com” domain name or eCASH trademark, defendant still could not show the type of “clearly established” rights plaintiff would have to disclose to the PTO.  Interestingly, plaintiff apparently did not argue that it had no duty to disclose defendant’s domain name to the PTO because plaintiff’s intent-to-use trademark application was filed months before defendant even registered its domain name.