BB Online UK Limitedv.101domain, Inc.

Trademark Trial and Appeal Board

Feb 14, 2014

No. 91193054 (T.T.A.B. Feb. 14, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

BB Online UK Limited

v.

101domain, Inc.
___

Opposition No. 91193054 to Application Serial No. 77684786
Opposition No. 91193815 to Application Serial No. 77684789
___

Christopher Shiplett of Randolph Law, PLLC for BB Online UK Limited.

Thomas M. Williams of Ulmer & Berne LLP and Marc H. Trachtenberg of Winston
& Strawn LLP for 101domain, Inc.
______

Before Seeherman, Kuhlke and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

101domain, Inc. (“applicant”) seeks registration of 101DOMAIN, in both
standard characters1 and the form shown below

1 Application Serial No. 77684786, the subject of Opposition No. 91193054, filed
March 5, 2009, alleging first use dates of May 1999.
Opposition Nos. 91193054 and 91193815

2

2
(with “domain” and “.com” disclaimed), for “designing, developing and hosting web
sites for others on a global computer network; providing e-mail and spam filtering
services; blocking pop-up messages and protecting the privacy of users during the
course of interacting with a global computer network” in International Class 42 and
“computer services, namely, managing and registering domain names for use on a
global computer network” in International Class 45.
In its notices of opposition in these consolidated proceedings, BB Online UK
Limited (“opposer”), a United Kingdom corporation, alleges that since 1997 it “has
been in the business of providing computer and internet related services including
internet domain name registration services, designing, developing and hosting
websites, providing and managing email services,” and that it has provided most of
these services in the United States under the names 101DOMAINS and
101DOMAINS.COM “since at least as early as the beginning of 1997.” Notices of
Opposition at ¶¶ 2, 4.3 As grounds for opposition, opposer alleges that use of
applicant’s marks would be likely to cause confusion with opposer’s marks and

2 Application Serial No. 77684789, the subject of Opposition No. 91193815, filed
March 5, 2009 and amended to allege first use dates of October 11, 2004. See Board’s Order
of September 10, 2012 (TTABVue Dkt. # 43). The application includes a color claim and the
following description: “The mark consists of the numbers ‘101’ in gold with beige shadowing
with the letters ‘DOMAIN’ in black with beige shadowing to the right, with gold bars placed
horizontally under ‘DOMAIN’ and the letters ‘.COM’ in black underneath the ‘N’. The mark
is against a white background which is not part of the mark.”
3 Opposer also pleads ownership of an application to register the mark 101 DOMAINS
& Design but failed to make the application of record.
Opposition Nos. 91193054 and 91193815

3

trade name and falsely suggest a connection with opposer. However, opposer did
not pursue its false suggestion of a connection claim which is therefore waived and
will be given no further consideration. Viacom International Inc. v. Komm, 46
USPQ2d 1233, 1235 n.3 (TTAB 1998); Krause v. Krause Publications, Inc., 76
USPQ2d 1904, 1906 n.2 (TTAB 2005).4
In its answers, applicant denies the salient allegations in the notices of
oppositions and asserts, as affirmative defenses, that opposer’s mark 101DOMAINS
“is confusingly similar” to applicant’s involved marks and that the oppositions are
barred by the doctrine of “unclean hands.” However, applicant did not pursue the
“unclean hands” defense, which is therefore waived and will also be given no further
consideration. Miller v. Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness
Small Estates Inc. v. American Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB
2012).
I. The Record
The record for these consolidated proceedings consists of the pleadings, the
files of the involved applications and the following:
• opposer’s Notice of Reliance (“NOR”) No. 1
(TTABVue Dkt. # 39) on applicant’s responses to opposer’s
requests for admission;

4 Opposer does not plead, or argue, that it has priority as a result of “use analogous to
service mark use,” and we have not considered any such claim. It is settled that use
analogous to service mark use must generally be pleaded. Cent. Garden & Pet Co. v.
Doskocil Mfg. Co., 108 USPQ2d 1134, 1142 (TTAB 2013). Moreover, the issue was not tried
by implied consent, and applicant clearly objected in its brief to consideration of any claim
of use analogous to service mark use. See TBMP § 507.03(b) (3d ed. rev. 2013) and
Applicant’s Trial Brief at 22 n. 14.
Opposition Nos. 91193054 and 91193815

4

• applicant’s NOR (TTABVue Dkt. # 45) on opposer’s
responses to applicant’s interrogatories and portions of
the discovery deposition of Robert Fox, opposer’s
Managing Director (“Fox Disc. Tr.”);

• opposer’s testimonial deposition of Mr. Fox (“Fox
Test. Tr.,” TTABVue Dkt. # 79);

• applicant’s testimonial deposition of Anthony
Beltran (“Beltran Tr.”), Chief Financial Officer and Chief
Operating Officer of both applicant and Rightway Gate,
Inc. (TTABVue Dkt. #’s 46-54); and

• opposer’s rebuttal testimonial deposition of Michael
Maschke (“Maschke Tr.”), its expert witness (TTABVue
Dkt. #’s 78).5

Opposer failed to timely file its trial brief and because the Board denied opposer’s
motion to reopen its time to do so in its order of September 13, 2013, opposer’s late-
filed trial brief has been given no consideration. We have considered applicant’s
trial brief and opposer’s rebuttal brief.
II. The Nature of the Evidence
Priority is the crux of the parties’ dispute but neither party can establish its
claimed date of first use through standard business records. For example, while
opposer claims that it used 101 DOMAINS in 1998, it does not have “reliable”
records of this alleged use, with Mr. Fox stating: “Back in 1998 this operation was
running from the back room of a house, our old PCs, whatever could be kept held
together. A lot of the documentation has been lost. We have no statutory

5 Opposer also filed rebuttal NOR No. 2 (TTABVue Dkt. # 68), on an undated
e-mail forwarded by Mr. Fox to opposer’s attorney on January 29, 2013. However,
this document has been given no consideration for the reason set forth infra at n. 16.

Opposition Nos. 91193054 and 91193815

5

right/obligation to keep it and with the best will in the world it’s such a long time
ago we never thought we would need it.” Applicant’s NOR Ex. 4 (Fox Disc. Tr. at
32). Similarly, when asked whether the “101domains.com” website bore a “title” in
1999, Mr. Fox stated “Best will in the world, no bloody idea. Domain name
registry? I have absolutely no idea.” Id. (Fox Disc. Tr. at 16). In fact, Mr. Fox’s
testimony about opposer’s “101domains.com” website is based in large part on “a
backup on a disk drive on an old machine that I dragged out of the attic because I
save all this old kit.” Id. at 19. Mr. Fox’s testimony about opposer’s use of 101
DOMAINS is also based in part on the “archive.org” website, specifically printouts
from the Internet Archive’s “Wayback Machine,” even though Mr. Fox testified that
the Wayback Machine’s depiction of how opposer’s website appeared in April 1999 is
“corrupted,” and displays “what appears to be a broken page.” Fox Test. Tr. at 26-
27. Some of Mr. Fox’s testimony is based on his memory in 2012 of domain name
registrations he and opposer handled in 1999. Id. at 40.
Similarly, applicant is not able to document from standard business records
how its “101domain.com” website appeared in 1999. Instead, applicant relies on “a
few pages of screen shots that were taken from a machine that we had dug out of
our storage.” Beltran Tr. at 35. More specifically, applicant “fired the machine up,
turned it on, it still worked, surprisingly, and essentially opened and republished
certain pages of the site to the machine locally, and we took screen shots by hitting
the Windows button and Print Screen on the keyboard and pasted them into a
document for printing.” Id. at 36. Applicant claims that the “date modified”
Opposition Nos. 91193054 and 91193815

6

information for the .gif images and other files on the stored computer corresponds
with the date those images were published on applicant’s “101domain.com” website.
Id. at 36-50 and Ex. 7. Like opposer, applicant also relies on printouts from the
Wayback Machine to support its claim to have first used the 101 DOMAIN mark in
1999. Id. at 42-44 and Ex. 8.
While much of the parties’ evidence is atypical, where its reliability has not
been challenged or it is supported by uncontradicted and otherwise reliable
testimony, we have considered it for whatever probative value it may have. In fact,
while the parties raise a number of evidentiary objections, which we address
contemporaneously with our discussion of the evidence itself, neither party will be
heard to object to evidence similar in character to evidence it relies on itself.
III. The Parties
Opposer, which originated in Denmark in 1995 before incorporating in the
U.K. in 1997, “sells domain names.” Fox Test. Tr. at 7. Opposer has six employees,
and its domain name registration and related services are primarily rendered
online. Id. at 9, 12-13. Opposer offers its domain name registration services
through multiple websites, including “bb-online.co.uk” and “101domains.com.”
Opposer registered the “101domains.com” domain name in 1997 “with the sole aim
of getting a set website together which would be – have a broader – a broader
appeal” than “bb-online.co.uk.” Id. at 13-16.
Rightway Gate, which created applicant before applicant was “spun off” as a
separate corporation, “created the 101DOMAIN brand back in 1999.” Beltran Tr. at
Opposition Nos. 91193054 and 91193815

7

12. Applicant provides “domain name registration, domain name management,
renewal. We do web hosting, e-mail hosting. We do some brand monitoring, brand
protection consulting services. Basically any ancillary service around domain
names.” Id. at 16. Applicant has “16 to 18” employees in its U.S. office. Id. at 17.
Applicant registered the “101domain.com” domain name on May 4, 1999. Id. at 31-
33 and Ex. 5.
IV. Standing
Opposer has established that at the time it filed its notices of opposition, it
was using the trade names and service marks 101 DOMAINS and
101DOMAINS.COM for domain name registration and related services in the
United States. Fox Test. Tr. at 6-12, 66-67; see also Opposer’s NOR No. 1
(Applicant’s Responses to Opposer’s RFA Nos. 14-15). Accordingly, opposer has
standing. Automedx, Inc. v. Artivent Corp., 95 USPQ2d 1976, 1978 (TTAB 2010);
Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner
has established his common-law rights in the mark DESIGNED2SELL, and has
thereby established his standing to bring this proceeding.”); Syngenta Crop Prot.
Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer
uses its mark “is sufficient to support opposer’s allegations of a reasonable belief
that it would be damaged …” where opposer alleged likelihood of confusion).
V. Likelihood of Confusion
This case is in essence a priority dispute. Indeed, there is no serious dispute
that there is a likelihood of confusion.
Opposition Nos. 91193054 and 91193815

8

The parties’ services are identical, at least in part, as opposer offers domain
name registration and web hosting services and applicant seeks registration for
“managing and registering domain names” and “hosting web sites for others.”
Compare, Fox Test. Tr. Ex. 16 with Beltran Tr. Exs. 1 and 2. This not only weighs
heavily in favor of a finding of likelihood of confusion, but also reduces the degree of
similarity of the marks necessary to find a likelihood of confusion. In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
The parties’ marks are highly similar in any event, with the only difference
between opposer’s mark on the one hand and applicant’s standard character mark
and the literal portion of applicant’s design mark on the other being that opposer’s
mark includes an “s” at the end of the word “domain.” This minor distinction is
insignificant. The marks look and sound almost identical and convey almost
identical meanings, and to the extent consumers notice a difference between the
parties’ marks they are likely to view applicant’s mark as a variation of opposer’s or
vice versa. The design features of applicant’s design mark merely highlight its
literal component, which is virtually identical to opposer’s mark, and in cases such
as this it is a mark’s literal elements, rather than design, which is ordinarily
accorded greater weight. M.C.I. Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551

6 Applicant’s objection to Exhibit 1 is overruled. Mr. Fox’s testimony sufficiently
authenticates the document by explaining its origin and his knowledge of it.
Opposition Nos. 91193054 and 91193815

9

(TTAB 2010); see also, CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200
(Fed. Cir. 1983).
Applicant does not seriously dispute that there is a likelihood of confusion.
To the contrary, it asserts as an affirmative defense that the parties’ marks are
confusingly similar. Answers ¶ 17. Furthermore, the likelihood of confusion section
of applicant’s trial brief does not argue that the marks are not confusingly similar,
but instead merely argues that opposer failed to establish rights in its pleaded
mark. And in its discovery responses, applicant essentially conceded that the
parties’ marks are confusingly similar. Opposer’s NOR No. 1 (Applicant’s
Responses to Opposer’s RFA Nos. 1-6, 10-11).
We therefore find, with respect to the likelihood of confusion element of
opposer’s Section 2(d) claim, that there is a likelihood of confusion.7 The question in
this case is which party can establish priority.
VI. Priority
“To establish priority, [opposer] must show proprietary rights in the mark
that produce a likelihood of confusion…. These proprietary rights may arise from a
prior registration, prior trademark or service mark use, prior use as a trade name,
prior use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights.” Herbko International, Inc. v. Kappa Books, Inc., 308
F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [internal citations omitted]; Otto

7 Our finding of likelihood of confusion is not based on any evidence of actual
confusion, and we have not considered Exhibit 7 to the Fox deposition, consisting of e-mails
alleged to establish actual confusion. Accordingly, applicant’s objection to Exhibit 7 is
moot.
Opposition Nos. 91193054 and 91193815

10

Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA
1981).8 “While oral testimony, if sufficiently probative, is normally satisfactory to
establish priority of use in a trademark proceeding,” where oral testimony is
characterized “by inconsistencies, contradictions and uncertainties,” it is not
sufficient, standing alone, to establish priority. Powermatics, Inc. v. Globe Roofing
Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965); National Blank Book
Co., Inc. v. Leather Crafted Products, Inc., 218 USPQ 827, 828 (TTAB 1983). We
further recognize, however, that we must weigh the evidence as a whole, rather
than considering each piece of evidence in isolation. West Florida Seafood Inc. v. Jet
Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (“However,
whether a particular piece of evidence by itself establishes prior use is not
necessarily dispositive as to whether a party has established prior use by a
preponderance. Rather one should look at the evidence as a whole, as if each piece
of evidence were part of a puzzle which, when fitted together, establishes prior
use.”).
Here, applicant may rely, without more, on the filing date of its involved
applications, March 5, 2009. Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108

8 There is no evidence, and applicant does not argue, that 101DOMAINS is anything
other than inherently distinctive. See, e.g., Giersch, 90 USPQ2d at 1023 (“Respondent has
not raised an issue as to the distinctiveness of petitioner's mark or otherwise put petitioner
on notice of this defense, and therefore we find that the mark is distinctive.”) (citing Wet
Seal Inc v. FD Mgmt., Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (absent argument or
evidence from applicant, opposer's mark deemed distinctive)); Chicago Corp. v. N. Am.
Chicago Corp., 20 USPQ2d 1715, 1717 n. 5 (TTAB 1991)(rejecting applicant's argument
that opposer failed to prove that its mark was distinctive where applicant failed to plead
the issue or introduce evidence of non-distinctiveness).

Opposition Nos. 91193054 and 91193815

11

USPQ2d 1134, 1140 (TTAB 2013) (“for when an application or registration is of
record, the party may rely on the filing date of the application for registration, i.e.,
its constructive use date”); Syngenta, 90 USPQ2d at 1119 (“applicant may rely
without further proof upon the filing date of its application as a ‘constructive use’
date for purposes of priority”). However, applicant may also attempt to prove, by
testimony and other evidence, use earlier than its filing date. Thus, we must
determine whether opposer has established common law use earlier than the filing
date of each of applicant’s applications or any common law use applicant may
establish as to each mark. Dating DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d
1889, 1893 (TTAB 2010) (despite consolidation each proceeding retains its separate
character and the decision on the consolidated case shall take into account any
differences in the issues raised by the respective pleadings).
While both parties rely in part on the registration of their respective domain
names, the mere registration of a domain name is insufficient to establish
proprietary rights. See Brookfield Communications Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036 50 USPQ2d 1545, 1555 (9th Cir. 1999).
Accordingly, we must consider the parties’ other evidence.
A. Opposer’s Evidence
1998 Registration of “lawbright.com”
The earliest evidence upon which opposer relies relates to its May 25, 1998
registration of the domain name “lawbright.com” on behalf of Lawrence Brightman,
Opposition Nos. 91193054 and 91193815

12

then of Miami, Florida. Fox Test. Tr. at 48, 60, 71-73 and Exs. 2, 3, 5, 6.9 This
evidence is insufficient to establish that opposer acquired proprietary rights in
101DOMAINS in 1998 because of opposer’s close relationship to Mr. Brightman.
Indeed, sales or promotional activities under a mark which are “between and
within” a party’s organization, or otherwise not public, “cannot be relied upon” to
establish proprietary rights. McQuay-Norris Manufacturing Co. v. H-P Tool Mfg.
Corp., 141 USPQ 405, 406 (TTAB 1964). Similarly, sales to affiliated individuals
are insufficient. Jaffe v. Simon & Schuster Inc., 3 USPQ2d 1047, 1050 (S.D.N.Y.
1987) (“Jaffe’s early transactions consisted solely of nominal or token sales to
personal friends and relatives. Such transactions do not constitute ‘such a bona fide
commercial operation as would entitle him to claim ownership of the mark.’”)
(citations omitted).
Here, opposer’s domain name registration for Mr. Brightman was not an
“arms-length” transaction. Specifically, Mr. Brightman and Mr. Fox were friends
who worked together in the 1980’s, Mr. Brightman later served “as a director of a
computer consulting company owned by Mr. Fox,” and “Mr. Brightman filled in for
Robert Fox as hardware technician whilst Mr. Fox was on holiday [from opposer]
abroad.” Applicant’s NOR Ex. 3 (Supplemental Response to Applicant’s Second Set
of Interrogatories No. 9) and Ex. 4 (Fox Disc. Tr. at 62-63). Opposer does not
introduce evidence that it rendered any other domain name registration services
under the 101DOMAINS mark until approximately one year after the registration

9 Applicant’s objection to Exhibit 6 is sustained, to the extent opposer relies on it to
prove the truth of the matters asserted therein. Fed. R. Evid. 801(c).
Opposition Nos. 91193054 and 91193815

13

of “lawbright.com,” and the evidence regarding the 1998 registration for Mr.
Brightman is unaccompanied by any evidence that opposer used or displayed
101DOMAINS publicly in 1998. We find, after considering the registration for Mr.
Brightman and all other pieces of the “puzzle,” that opposer’s single registration in
all of 1998 to Mr. Brightman, who has a close enough relationship to opposer that
he filled in for its Managing Director, “did not constitute a public use of the mark.”
1999 Registrations of Various Domain Names for U.S. Customers
The “lawbright.com” domain name registration is included in Exhibit 2 to Mr.
Fox’s testimonial deposition, entitled “BB Online UK Ltd Domain Name Sales to US
Based Clients 1st January 1998 to 5th July 1999,” along with nine additional
domain name registrations from 1999. We find that neither this exhibit nor Mr.
Fox’s related testimony is sufficient to establish opposer’s prior use of
101DOMAINS.
The document is a “collation” prepared by one of opposer’s employees from
opposer’s “internal database” and an Excel spreadsheet which opposer maintained
for accounting purposes. We overrule applicant’s objection to this exhibit under
Fed. R. Evid. 901 as not properly authenticated, because Mr. Fox adequately
explained its origin and his familiarity with it, and as violating the best evidence
rule under Fed. R. Evid. 1002, because its purpose is not necessarily to prove the
content of the original documents on which it is based. However, we do not find it
persuasive. In fact, even assuming that the document and Mr. Fox’s testimony
establish that opposer registered the domain names listed on the dates indicated,
Opposition Nos. 91193054 and 91193815

14

that is not sufficient to establish that opposer registered the names or offered
registration services under the mark 101DOMAINS, as opposed to BB ONLINE UK
or another mark. We accept Mr. Fox’s explanation of why the document itself
indicates that it comes from and reflects domain name services by “BB Online UK
Ltd,” rather than 101DOMAINS. Fox Disc. Tr. at 14 (“because it was and still is
practically impossible to get multiple merchant facilities for different accounts. So
we still process under BB Online to this date all credit card statements.”).
Nevertheless, opposer’s invoices for domain name registrations allegedly rendered
under the 101DOMAINS mark come from, and request payment to, “BB Online UK
Limited” not “101DOMAINS” or “101domains.com,” nor do they reference
101DOMAINS or “101domains.com” in any manner, and therefore considering the
record as a whole they do not establish that the names were registered under the
101DOMAINS mark. See Applicant’s NOR (Fox Disc. Tr. at 44-45 and Ex. 1-L).
Website Use and Advertising in 1998
After testifying that he selected the mark 101DOMAINS for opposer, Mr. Fox
was asked “[a]nd then what happened?,” and he testified that “We put up some sort
of website in early 1998.” Fox Test. Tr. at 16-18. Mr. Fox further explained: “We
put up a website in 1998 basically so we could try and get some sales. We tried to
market the website in a variety of ways, all of them not particularly good, by
sticking up the domain name on the website on link farms,10 search engines, and we
even did some spamming.” Id. at 29. While Mr. Fox stated that “[w]e tried to

10 Link farms provide links to websites in an effort to increase the linked sites’ search
engine rankings.
Opposition Nos. 91193054 and 91193815

15

concentrate this spamming on the U.S. market by getting hold of U.S. mailing lists,”
his testimony does not establish how or to what extent opposer’s spamming (or
other) efforts promoted 101DOMAINS as a mark (as opposed to simply a domain
name address) to U.S. consumers, nor does the record include any documentary
evidence which does so. Furthermore, Mr. Fox’s testimony, id. at 37-38, that the e-
mail addresses to which opposer directed its spamming efforts were U.S. addresses
is speculative and vague. The mere assumption that some type of advertisement or
promotion was directed to U.S. consumers is not enough to establish prior rights,
where we cannot be sure how many, if any, U.S. consumers were specifically
exposed to the 101DOMAINS mark through these efforts.
Mr. Fox’s testimony about advertising in 1998 through “link farms” suffers
from similar infirmities, as do the documents opposer apparently received from link
farms and other Internet marketing companies. Id. at 30, 38-39, 82-88 and Ex. 9.11
That is, there is no evidence regarding how or to what extent, if any, opposer used
101DOMAINS in the United States or how many U.S. consumers may have been
exposed to the mark. In fact, while opposer received e-mails from link farms
addressed to the info@101domains.com e-mail address in 1998 which appear to
confirm opposer’s purchase of some type of advertising through the link farms, Mr.

11 Exhibits 3 and 4 to the Fox testimonial deposition are unhelpful for the same reason.
That is, they merely list the amount of opposer’s sales and advertising expenses per year,
without indicating that they relate in any manner to the 101DOMAINS mark. In fact, the
documents present the sales and advertising expenses for “BB Online,” which as indicated
maintains its own website which also registers domain names. And Exhibit 4 does not
identify the portion, if any, of opposer’s advertising expenses made for U.S. advertising.
While the exhibits are unhelpful, applicant’s objection to them is overruled as Mr. Fox
sufficiently authenticated them.
Opposition Nos. 91193054 and 91193815

16

Fox’s testimony is uncertain at best regarding whether or to what extent the link
farms displayed 101DOMAINS or 101domains.com, as opposed to “bb-online.co.uk”
or another link or mark (if any). Id. at 85-88. Because Mr. Fox’s testimony is
unsupported by clear memory or documentary evidence, it is not enough when
combined with the other “pieces of the puzzle” in the record to establish priority.
There is simply no concrete basis for or explanation of Mr. Fox’s assumptions about
what the link farms might have displayed. See Powermatics, 341 F.2d at 127, 144
USPQ at 432.
Website Use in 1999
As opposed to Mr. Fox’s vague testimony about the “101domains.com” website
in 1998 (“we put up some sort of website”), the testimony about opposer’s website in
1999 is more clear and supported by at least some documentation. Specifically, Mr.
Fox testified that he found a dated “backup on a disk drive on an old machine that I
dragged out of the attic.” Id. at 19. Mr. Fox further testified that “when the files
are created or modified on a Unix file system, it puts the time and date they were
created and modified;” one file from the old machine which shows how opposer’s
website appeared is dated August 7, 1999. Id. at 100-101 and Ex. 9 (document
Bates stamped RL-SUPP-000002, file named “Bestil htm”). A printout of this
backup file from August 7, 1999 reveals use of “101DOMAINS,” as shown in the
excerpts below:
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17

Id. Ex. 1. Unlike much of opposer’s other evidence, this document reveals use of
101DOMAINS as an indicator of source, given the statements that “101Domains
recognizes that people do not like using credit cards on the Internet” and “101
Domains does not allow Adult, Chat Servers, video sites or IRC Bots.” Perhaps
more importantly, the printout states that “101Domains” offers payment options as
Opposition Nos. 91193054 and 91193815

18

well as a discount to customers placing the “www.101domains.com” URL on their
own homepages. In short, this exhibit is sufficient to establish use of 101DOMAINS
as a mark or at the very least a trade name.12 Moreover, Mr. Fox testified that the
printout in Exhibit 1 “is a copy -- this is -- this is the backup of the website,
101domains.com, from August 1999,” specifically of August 7, 1999, as reflected on a
directory of the backup files Mr. Fox located. Id. at 20, 100-101 and Ex. 9
(document Bates stamped RL-SUPP-000002, file named “Bestil htm”). Accordingly,
we find that opposer has established use of 101DOMAINS in the United States on
August 7, 1999, and according to Mr. Fox, that use has been continuous since that
time. Id. at 66-67.
Mr. Fox further testified that the version of opposer’s website displayed in
Exhibit 1
is definitely the same website that was there in April
1999 because, if you compare the front page source code of
this website to the front page source code that you can get
from the April 1999 archive.org record, they are identical.
So although the archive.org record is corrupt, you could
still see the source code, and the source code matches this
website. So it’s my contention that this is the website
that was up there in April 1999 … It is also my contention
that this is probably the website that was up in 1998, but
I have no evidence that it was. But something was there.

Id. at 20-27 and Ex. 1. We are not persuaded by this testimony. Mr. Fox is not
testifying about his recollection of the website as it existed in April 1999. Rather,
he is testifying based solely on his review of a record not in evidence which he

12 In its notice of opposition, opposer alleges that it “has been trading under the name
of ‘101Domains’ and ‘101Domains.com.’”
Opposition Nos. 91193054 and 91193815

19

himself refers to as “corrupt.” Moreover, according to Mr. Fox, the “corrupted”
archive.org material, in addition to not being of record, apparently displays a
“broken page.” Id. at 26-27. This testimony provides no basis for concluding that
the allegedly matching “source code” is not itself “corrupt.” In short, the testimony
about the archive.org record is limited, unsupported and raises questions about the
accuracy of the archive.org record on which it is based. We do not find the evidence
regarding how the website appeared in April 1999 to be sufficiently reliable.
Because we find, based on our review of all the evidence, that the earliest
date of use opposer established is August 7, 1999, we consider whether applicant
has established use prior to that date.
B. Applicant’s Evidence
website use in August 1999
Applicant’s evidence of use pertains to its word mark in application Serial
No. 77684786. With respect to the design mark which is the subject of application
Serial No. 77684789, applicant relies on the filing date of this application, and does
not introduce evidence of use prior to opposer’s established first use date. We turn
therefore to the evidence of use of applicant’s word mark.
Applicant, much like opposer, relies on materials from “a machine that we
had dug out of our storage back from this period in 1999 … [because] we were
looking for records that showed what the 101domain.com website looked like at the
earliest date we could find.” Beltran Tr. at 35-36. As Mr. Beltran explained, the
machine was Wolfgang Reile’s, applicant’s president and “project manager for any
Opposition Nos. 91193054 and 91193815

20

major website updates for 101DOMAIN,” and “still had all the software all the
programs and all the files installed on it.” Id. at 25, 36. Applicant specifically relies
on a “screen shot showing a list of graphic files primarily in the form of gif files,
which is like a jpeg, from a folder stored on the computer. We unpacked this folder
with this program WinZip, and it gave us the last modified date of each file.” Id. at
36-37 and Ex. 7. Ultimately, applicant used the files on the computer to generate “a
screen shot that was republished on our local computer that we had dug out of
storage showing what the website looked like at this time,” specifically August 29,
1999, and Mr. Beltran testified that the screen shot “accurately reflects what was
shown on the 101domain.com website as of that date.” Id. at 39-40 and Ex. 7
(document Bates stamped APP 000739).13 The screen shot appears to offer domain
name registration and related services, and at the very least promotes those
services:

13 To the extent that Mr. Beltran’s testimony and the associated exhibits establish that
certain .gif or other files were modified earlier than August 29, 1999, they are unhelpful
because there is nothing which associates those particular files with how the published
version of applicant’s website appeared to visitors prior to August 29, 1999, nor is there any
indication that these files relate to the use of applicant’s mark for applicant’s services.
Opposit

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Opposition Nos. 91193054 and 91193815

22

document are insufficient to establish that applicant had proprietary rights at the
time the e-mail was sent. While the testimony and document appear to establish
that applicant had a “live” e-mail address at its primary domain (and mark)
“101domain.com,” the fact that a third party was soliciting applicant to buy the
third-party’s goods or services does not establish that applicant was using or
promoting the 101DOMAIN name and mark in connection with its applied-for
services on that date.
sales and advertising expenses in 1999
Applicant relies on summaries of its sales and advertising expenses starting
in 1999. Id. at 65-79. This evidence and the associated testimony suffer from many
of the same infirmities as the evidence regarding opposer’s sales and advertising
expenses. Suffice it to say, however, that even if the documents and testimony
established that applicant was using 101DOMAIN for its services in a particular
year, which they do not, they in any event do not establish any particular date in
1999 on which applicant was using its mark. Accordingly, they do not assist
applicant in establishing priority.
e-mail confirmations of domain name registrations from May 1999
In May 1999, applicant received e-mails from “internetnamesww.com”
confirming the registration of certain domain names. Id. at 58-60 and Exs. 14-16.
According to Mr. Beltran, the e-mails establish that applicant registered the domain
names listed for its customers on the date the e-mails were sent. Id.
Opposition Nos. 91193054 and 91193815

23

We disagree. It is clear that Mr. Beltran’s testimony regarding when
applicant offered domain name registration services is based not on his own
independent knowledge, but on the text of the e-mails themselves. Id. at 58, 59, 60
(“This tells me that we sold a domain name and registered it for a customer … on or
about May 21, 1999”). Indeed, Mr. Beltran did not begin working with applicant
until 2004. Id. at 12-15. In other words, these e-mails are being offered to prove
the truth of the matters asserted therein, i.e. that applicant registered certain
domain names on certain dates. They are accordingly hearsay, have been given no
consideration and cannot establish applicant’s priority date. Fed. R. Evid. 801(c),
802.
While it could be argued that the e-mails might fall within the exception for
“records of a regularly conducted activity” under Fed. R. Evid. 803(6), the record
does not contain sufficient evidence to establish that the exception applies. Under
Fed. R. Evid. 803(6)(A)-(C), the exception only applies where “the record was made
at or near the time by – or from information transmitted by – someone with
knowledge,” the record “was kept in the course of a regularly conducted activity of a
business …” and “making the record was a regular practice of that activity.” The
Rule is clear that “all these conditions” must be “shown by the testimony of the
custodian or another qualified witness.” Fed. R. Evid. 803(6)(D) (emphasis
supplied). Here, however, all of these conditions have not been shown, by the
custodian or another qualified witness. See City National Bank v. OPGI
Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1673 (TTAB 2013)
Opposition Nos. 91193054 and 91193815

24

(“the Board has held that a witness may not offer testimony regarding company
history unless said witness has personal knowledge thereof”); see also, Dan Foam
ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1943 (TTAB 2013); Olin Corp. v.
Hydrotreat, Inc., 210 USPQ 63, 67 (TTAB 1981). In short, the e-mails are hearsay
and the record is not sufficient to establish that they should be admitted under an
exception to the hearsay rule. Finally, even if we were to consider them, the e-mails
and accompanying testimony do not reference use of the involved marks in a service
mark manner as of those dates.
pre-registration of domain names in July 1999
Applicant introduced a series of what appear to be e-mails dated between
July 9-12, 1999, all of which are to, and from, webmaster@101domain.com. Id. at
62-64 and Ex. 18. The e-mails all state “Below is the result of your feedback form,”
which Mr. Beltran testified is in fact an order form:
Exhibit 18 is a group of orders from a single customer by
the name of [redacted] placing orders on 101domain.com
from July 9, 1999, it appears, for a few days through July
12, 1999. So it’s starting on Friday, ending on Monday.
This particular customer placed orders for a domain name
we were offering on the website for pre-registration, .info
top-level domain. It was common practice back then to
offer pre-registration services to customers who wanted to
– wanted a priority reservation for when a new domain
extension would be available to the public in anticipation
of registering premium or more sought-after domain
names.

Id. at 62-63. According to Mr. Beltran, applicant offered these services “[t]hrough
the website,” and “would actually charge the customer for the pre-reservation. If
the pre-reservation turned into an actual registration, the fees would be earned. If
Opposition Nos. 91193054 and 91193815

25

they did not, the fees would be refunded or credited to the customer’s account with
the company.” Id. at 63-64.
These documents, in contrast to the e-mails from “internetnamesww.com,”
are sufficient to establish applicant’s priority date. The evidence establishes that
they are applicant’s own business records, and are maintained “in the ordinary
course of business.” Id. at 64. To the extent they are hearsay, they fall within the
business records exception of Fed. R. Evid. 803(6). They make clear that on or
before July 9, 1999, applicant was offering and selling domain name pre-
registration services on its 101domain.com website, and that customers purchased
these services through the “101 domain Orderform,” and accordingly establish that
applicant made common law use of 101DOMAIN on July 9, 1999.
search engine submission of May 18, 1999
Mr. Beltran testified about “a receipt stored on one of our archived machines
of a search engine submission submitted by Rightway Gate,” through which
applicant submitted “the domain name and website 101domain.com to a number of
search engines. This was the common form of marketing a new website on the
Internet” in 1999. Id. at 109-113 and Ex. 37. According to Mr. Beltran,
So what this tells you, if you look at the top right corner
[of Ex. 37], you have a last submission date of May 18th,
1999. This particular record was a result of that
submission. So you look at the body here on page 1. You
have our URL title, 101DOMAIN register. So that was
the page title. That was submitted. You have the URL
http://www.101domain.com. Category: Internet/general
domain. Language was English. We have a bunch of
keywords here. Domain register, register domains,
register – different variations of domain registration. The
Opposition Nos. 91193054 and 91193815

26

final keyword you have is 101DOMAIN, which is our
mark ….

Id. at 110. Mr. Beltran specifically testified based on this document that
“101DOMAIN register was visible” on the screens of any users who located
applicant’s website as a result of this submission. Id. at 111. The document
includes “lists of the search engines and directories that this particular submission
was submitted to. So you have at the bottom of page 1 where it says successful
submissions, numbering starting at number 1 and continuing to the last page to
number 1,857” meaning that applicant’s “101domain.com” site was submitted to
1,857 other sites, including Google. Id. at 112 and Ex. 37.
While Mr. Beltran testified that applicant’s mark would have been visible on
the screens of any potential customers who located applicant’s site through the
submission, this evidence, like opposer’s evidence of “link farm” submissions, is not
sufficient, considering the “puzzle” as a whole, to establish applicant’s prior use. As
with opposer’s evidence, there is no indication how many, if any, U.S. consumers
were exposed to applicant’s mark as a result of this submission.
C. Mr. Maschke’s Testimony and Opposer’s Other Efforts to Discredit
Applicant’s Evidence

Opposer retained Michael Maschke as an expert to examine the credibility of
some of applicant’s priority evidence. According to Mr. Maschke’s “Analysis
Report,” he was tasked with
looking for any signs of inconsistency within the provided
information that would affect the integrity of the data
included within the document. Specifically, we were
looking for any signs of fraudulent information, including
Opposition Nos. 91193054 and 91193815

27

the analysis of the format as presented, date and time
stamp alterations, or the inclusion of falsified information
that at the represented time period, could not have yet
existed based on our knowledge and expertise in the field.

Maschke Tr. Ex. 14 (Analysis Report at 4). Similarly, opposer’s cross-examination
of Mr. Beltran focused in large part on the apparent discrepancy between the dates
of certain e-mails from “internetnamesww.com” confirming applicant’s registration
of certain domain names in May 1999 and the dates, several months later, of
applicant’s invoices related to those domain names. See Beltran Tr. 140-181 and
Exs. 55-59.14
Applicant has objected to Mr. Maschke’s testimony and report on a number of
grounds, including that he is not a qualified expert and based his testimony and
report on an unreliable database. Neither Mr. Maschke’s testimony and Report nor
opposer’s cross-examination of Mr. Beltran call into question applicant’s evidence of
use at least as early as July 9, 1999, however. In other words, even if we accepted
Mr. Maschke’s testimony and discredited Mr. Beltran’s testimony regarding the
evidence about which he was cross-examined, this would have nothing to do with
the evidence based upon which we have found that applicant successfully
established its priority date of July 9, 1999.15

14 Applicant’s objection to Exhibit 59 is sustained, because Mr. Beltran did not
authenticate it. The document itself has been given no consideration. However, to the
extent that invoice dates on the document are consistent with applicant’s records, and Mr.
Beltran explained the significance of those dates during his testimony, we have considered
that information.
15 Furthermore, Mr. Maschke’s review of materials produced during discovery but not
introduced at trial is not proper rebuttal testimony.
Opposition Nos. 91193054 and 91193815

28

In any event, we would not find Mr. Maschke’s testimony or Report helpful,
even assuming it was admissible as expert testimony16 and that it related to the
priority evidence upon which we rely, which it does not. Mr. Maschke’s testimony is
based on his review of Verisign’s “whowas” database which, according to Mr.
Maschke, establishes inter alia that certain domain names were not yet in existence
on the date on which e-mails confirming their registration were sent to applicant.
However, Mr. Maschke did not: (1) inspect applicant’s computer system or
information related thereto; (2) retain the “whowas” searches he conducted or even
note the date on which he conducted them; (3) follow standard forensics procedures
in conducting his analysis; (4) have prior experience with or knowledge of the
“whowas” database; or (5) have any explanation for why some of the domain names
he reviewed had two “create” transactions in a row according to the “whowas”
database, which according to Mr. Maschke himself should not be “possible.”
Furthermore, there are alternative explanations for the “discrepancies” Mr.
Maschke found, and Mr. Maschke conceded that “some information is missing” from
the “whowas” database and that it might be “inaccurate.” Id. at 85-86, 88, 97-102,
107-128, 131-132, 138-140.17

16 Mr. Maschke did not conduct the type of review in which he is alleged to have
“knowledge, skill, experience, training, or education,” and there is no basis upon which to
find that his experience, knowledge or education led to the conclusions he reached.
Compare Maschke Tr. at 8-9 and 19-26 with Maschke Tr. at 28-33, 52-75; see Fed. R. Evid.
702; Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1755-57
(TTAB 2013); Corporacion Habanos S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085,
1093-96 (TTAB 2012).
17 Neither Exhibit 13 to the Maschke deposition, an e-mail concerning unidentified and
unexplained “bugs” in the “whowas” database, nor the e-mail submitted via opposer’s
rebuttal NOR are admissible, and neither has been given any consideration. The e-mail
Opposition Nos. 91193054 and 91193815

29

Similarly, we do not find opposer’s cross-examination of Mr. Beltran
particularly helpful. It does not relate to the evidence upon which we rely herein.
Furthermore, to the extent the testimony on cross-examination suggests that there
may be some discrepancies in some of applicant’s evidence upon which we do not
rely, applicant has explained at least some of those discrepancies. In fact, Mr.
Beltran satisfactorily explained the apparent discrepancy between the dates of
certain e-mails from “internetnamesww.com” confirming applicant’s registration of
certain domain names in May 1999 and the dates, several months later, of
applicant’s invoices related to those domain names. Beltran Tr. at 183 (“The dates
necessarily did not have to match the date of the order, so long as they were
recorded in the correct year and period for IRS tax reporting purposes.”).
We therefore find that applicant has established use of 101DOMAIN as of
July 9, 1999, while opposer’s use of 101DOMAINS was not until August 7, 1999.
Accordingly, opposer has not established use of its mark prior to applicant’s first
use of its standard character mark.
D. Applicant’s Design Mark
As noted, applicant has not submitted evidence of use of its design mark
earlier than opposer’s priority date. We note that the application to register
applicant’s design mark originally claimed dates of first use in 1999, but during the
course of this proceeding, applicant moved to amend the claimed first use dates to

attached as Exhibit 13 to the Maschke deposition is hearsay (and in fact at least double
hearsay), and the e-mail submitted via opposer’s rebuttal NOR is not admissible via notice
of reliance under Trademark Rule 2.122(e) (and accordingly applicant’s motion to strike the
rebuttal notice of reliance on that ground, filed February 12, 2013, is granted).
Opposition Nos. 91193054 and 91193815

30

October 11, 2004, and the Board granted the motion in its order of September 10,
2012. In any event, applicant concedes in its trial brief that its date of first use of
its design mark was October 11, 2004. Applicant’s Trial Brief at 8, 16. Because this
is later than opposer’s first use of 101DOMAINS on August 7, 1999, opposer has
established its claim of priority and likelihood of confusion with respect to
applicant’s 101DOMAIN & Design mark.
VII. Conclusion
Applicant has established that it made common law use of 101DOMAIN at
least as early as July 9, 1999, which is earlier than August 7, 1999, the earliest date
on which opposer established its use of 101DOMAINS. Accordingly, opposer has
failed to meet its burden of proving priority of use, and its claim of likelihood of
confusion accordingly fails with respect to this application.
However, because applicant’s first use of 101DOMAIN & Design was
subsequent to opposer’s first use of 101DOMAINS, the opposition to registration of
application Serial No. 77684789 is sustained. Dating DNA, 94 USPQ2d at 1893.

Decision: Opposition No. 91193054 is dismissed with prejudice.
Opposition No. 91193815 is sustained.