Trademark Trial and Appeal Board Dismisses Automattic’s Trademark Dispute Against Chris Pearson

In July 2015, Automattic won its Uniform Domain-Name Dispute-Resolution Policy (UDRP) case against Chris Pearson regarding Thesis.com after the panel determined that he failed to establish all three elements required under the ICANN Policy.

A party must satisfy all three of the burdens imposed under the Policy in order for the Panel to order transfer of a domain name from the entity registering it. Here, Complainant failed to establish that Respondent registered and used the disputed domain name in bad faith.

See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Complainant failed to support its allegations under Policy ¶ 4(a)(iii) and finds for Respondent.

This allowed Automattic to maintain ownership of Thesis.com. Automattic retaliated by filing a petition for cancellation with the United States Patent and Trademark Office. In the petition, Automattic argued that the three trademarks owned by Pearson, DIYTHEMES, THESIS THEME, and THESIS, should be cancelled.

For the past two years, legal teams for both parties have gone back and forth filing briefs, requests for extensions, and other documents. Earlier this year on April 20th, the Trademark Trial and Appeal Board dismissed the case citing a lack of evidence and testimony from Automattic that establishes real interest and a reasonable belief in damages.

The record is devoid of any evidence concerning the nature of Petitioner’s (Automattic) commercial activities and its interest in Respondent’s (Chris Pearson) registered marks. Proof of standing in a Board proceeding is a low threshold.

For example, Petitioner could have submitted testimony or competent documentary evidence as to its asserted need to use the terms comprising the marks and nature of its business activities to establish its standing.

Petitioner neglected to do so. Thus, on the record before us, Petitioner has failed to establish a ‘real interest’ and ‘reasonable belief in damage.’ Accordingly, the cancellation proceeding is dismissed for Petitioner’s lack of standing.

On May 22nd, Automattic filed a motion for the board to reconsider its decision. On June 1st, the board denied the request making its decision final.

Petitioner has failed to establish any error in the Final Decision. Rather, Petitioner expresses disagreement with the result reached and argues, for the first time on reconsideration, positions it should have alleged in its petition to cancel, supported with testimony and/or competent evidence, and raised in its trial brief.

We will not infer from Petitioner’s scant allegations and evidence, and silence in its brief, proof of its standing to bring this cancellation proceeding. Petitioner’s motion for reconsideration is denied.

The decision allows Pearson to retain ownership of the DIYTHEMES, THESIS THEME, and THESIS trademarks. It’s unclear if this outcome will lead to more legal actions from either party. At the time of publishing, Pearson did not return a request for comment regarding the outcome and what his plans are for the Trademarks.