Snap Inc. has lost a bid to take control of the geofilters.com domain name from a small mobile app developer that Snap accused of cybersquatting.
A World Intellectual Property Association arbitration panel ruled that “geofilters” is a descriptive term for software that adds a filter or graphic to a photo based on location. Therefore, Paul and Tracy Grand of Santa Monica can keep the domain, which they say they’ve reserved for their own forthcoming geofiltering app.
“This is what we’ve said all along,” said one of the Grands’ attorney, David Miclean of San Mateo’s Miclean Gleason. “This is a term that’s been used in the industry a long time to describe a tool. It’s not a word Snap invented.”
Miclean, who worked on the case with senior associate Carmen Aviles, says the WIPO decision means competitors such as Instagram, Facebook, WhatsApp and Twitter also can refer to their location-based filters as geofilters.
Snap, which was represented by John Kim of IPLA, is pursuing trademark registration at the U.S. Patent and Trademark Office, which could ultimately give it stronger rights in the mark.
The Grands registered geofilters.com in November 2014, a few months after Snap introduced its “Geofilter” photo-editing software. The bare-bones website says only “geofilters/Location-based Filters” and provides an email address for people who want to be notified of an upcoming launch.
Snap argued the Grands aren’t using the site for a bona fide offering of goods and services, and are instead trying to deceive consumers into associating it with Snapchat. The company alleged that the Grands own 95 domain names that don’t involve an active website, and that they had asked for “mid-six figures” to sell geofilters.com.
Miclean said his clients are husband-and-wife entrepreneurs who got the idea for building an iPhone geofiltering app three years ago after a discussion with their teenage daughters. On the same day last October, they received three unsolicited offers for the domain name, one of whom turned out to be a Snap agent. The Grands threw out the vague “mid-six figures range” just to see what their project might be worth, Miclean said. Snap then argued to the WIPO panel that the Grands’ pursuit of a “massive sum” belied their claim to be working on a software app.
“That’s their MO,” Miclean said. “If you don’t capitulate, they threaten to litigate you to death.”
In its June 2 decision, the WIPO panel noted that Snap has not trademarked “Geofilter,” though it is in the process of trying to. The panel found scant evidence that Snap has used the word as a mark or that the public associates it with Snapchat. “In the final analysis, [Snap] has failed to show that the consuming public has come to recognize ‘Geofilter’ as an indicator of the source of the product rather than the product itself,” the panel concluded.
Miclean said the PTO previously turned away another company’s registration application based on the same reasoning as the WIPO panel. This time the PTO has published the mark for public comment, and the Grands intend to file an opposition.
Scott Graham writes about intellectual property and the U.S. Court of Appeals for the Federal Circuit. Contact him firstname.lastname@example.org. On Twitter: @scottkgraham.