16:53, September 13 446 0 law.com

2017-09-13 16:53:04
Squire Patton Boggs Loses Claim to Domain Name

Squire Patton Boggs offices in Washington, D.C.

Mike Scarcella

Squire Patton Boggs has lost its bid to claim the domain name squirepattonboggs.net, which is registered to a Chinese company.

A single-member panel at the ICANN-accredited Asian Domain Name Dispute Resolution Center (ADNDRC) has ruled that the law firm is not entitled to the domain, and that China-based Qinhuangdao Hongshun Technology Development Co. Ltd. is its rightful owner. In a decision issued on Aug. 31 Xue Hong , a Beijing-based domain name legal scholar appointed by the ADNDRC, also ruled that Squire Patton Boggs’ claim of prior use lacked sufficient evidence.

The dispute centered largely on the U.S. firm’s trademark and domain name registration timeline following the 2014 merger between Squire Sanders and Patton Boggs . The firm tried to prove to the panel that Squire Patton Boggs was a well-known brand before the domain name squirepattonboggs.net was registered on May 24, 2014, and that Qinhuangdao Hongshun registered the name in bad faith.

The U.S. firm cited the registration date of its own homepage, squirepattonboggs.com, on March 26, 2014, as evidence. But Qinhuangdao Hongshun argued that the U.S. firm didn’t own any legal right to the text “Squire Patton Boggs” anywhere in the world until May 31, 2014, when the firm officially changed its name. That was one week after squirepattonboggs.net’s registration, the company said.

Xue agreed with Qinhuangdao Hongshun and pointed out that Squire Patton Boggs’ U.S. trademark filing also took place after Qinhuangdao Hongshun’s filing in China. This, she said, made it difficult for the firm to argue Qinhuangdao Hongshun acted in bad faith.

According to records of the U.S. Patent and Trademark Office , Squire Patton Boggs filed a trademark for the combined name on May 30, 2014, and the mark was registered on Nov. 10, 2015. In China, Qinhuangdao Hongshun filed a trademark application four days earlier—on May 26, 2014—and was granted the registration on July 21, 2015, despite the U.S. firm’s opposition. Squire Patton Boggs didn’t file its own China trademark until December 2014.

Xue acknowledged that the U.S. firm’s March 2014 domain name registration preceded the Chinese company’s registration, but said the firm needed more evidence to support its prior use claim. Citing the U.S. trademark registration record, she said Squire Patton Boggs’ first use and first use in commerce date was June 1, 2014, so the firm failed to prove commercial use on or before March 26, 2014.

The decision also revealed details on the parties’ attempts to settle the dispute. Squire Patton Boggs said in its complaint that Qinhuangdao Hongshun had asked for $450,000 in exchange for all relevant domains and trademarks being transferred to the U.S. law firm. Qinhuangdao Hongshun disputed that, saying it offered to license all marks and domains to Squire Patton Boggs for free if the U.S. firm withdrew its trademark invalidation proceedings, which have been filed separately. It also said Squire Patton responded by offering to pay $54,000 to purchase all of the intellectual property in dispute.

A New York-based spokesperson for Squire Patton Boggs declined to comment on details of the attempts to settle. He also said the ADNDRC decision simply means the domain dispute would not be resolved until the currently pending trademark invalidation proceedings conclude. “We fully expect to prevail [in the invalidation proceedings,]” he said.

The ADNDRC ruling is not final, and both parties are free to pursue other litigation or arbitration to resolve the dispute.

In China, trademark invalidation proceedings are the last resort for companies that want to recover their stolen brands. The country’s current trademark law, amended in 2014, allows the Trademark Office’s decision on an opposition to be final and rules out the possibility of an appeal.

Squire Patton Boggs lost its opposition to Qinhuangdao Hongshun’s mark in April 2017. It started the invalidation proceedings the same month, according to registration records.

The invalidation proceedings will take place before the Trademark Review and Adjudication Board, a separate enforcement body from the Trademark Office. The TRAB has fewer examiners and the proceedings take longer than other proceedings.

This means that for the time being, at least, Squire Patton Boggs will not be able to use its trademark in China. Any mark in question remains registered until it is invalidated.