Despite protective notice of expiration trademark holders continue to see their non renewed domain names registered by innocent purchasers as well as opportunists. Registrars have a contractual duty arising out of the Registrar Accreditation Agreement (RAA) to alert domain name holders that their registrations are nearing expiration. Not surprisingly some domain name holders miss the notices. The pertinent provisions of the RAA read as follows:
3.7.5 At the conclusion of the registration period, failure by or on behalf of the Registered Name Holder to consent that the registration be renewed within the time specified in a second notice or reminder shall, in the absence of extenuating circumstances, result in cancellation of the registration by the end of the auto-renew grace period (although Registrar may choose to cancel the name earlier).
18.104.22.168 Registrar shall provide notice to each new registrant describing the details of their deletion and auto-renewal policy including the expected time at which a non-renewed domain name would be deleted relative to the domain’s expiration date, or a date range not to exceed ten (10) days in length.
I have previously written about inadvertent failure to renew registration. Consequences of domain name cancellation can be severe and reclaiming uncertain. It depends on a number of factors, including the relative strength of the trademark, proximity of goods/services and geographic location of the parties and website content of the new domain name registrant. While registered and common law rights are equally protected against cybersquatting there naturally arises a question whether a party whose right is based on common law can satisfy all of the Policy requirements to prove abusive registration.
In Capital Matrix, Inc. v. G Repetto, D2012-2534 (WIPO March 1, 2013) the Panel held that Complainant satisfied the standing requirement, giving it (I think) the benefit of the doubt because there appeared to be no solid evidence of distinctiveness for “Capital Matrix,” but ultimately denying the complaint for lack of evidence of bad faith. Complainant is located in the United States; Respondent in Brazil. Respondent stated that in looking into the domain name she learned that it was not available for registration, but “ascertained that it was listed on the SnapNames website as ‘available soon’, i.e. it would become available within a short period of time if the owner did not renew it.” In fact,
a few days later, the disputed domain name was made available by SnapNames, but registration was not granted immediately as other users had made the same reservation. The procedure in these cases is to submit the domain name to auction. The Respondent concluded the purchase of the domain name on December 7, 2012 for the final amount of USD 925, which is a sum that is perfectly within the price range used on domain name auction websites.
For a complainant to succeed whose right is based on a generic phrase the demand for proof that respondent acquired the domain name with knowledge of its previous holder and for the purpose of taking advantage of the complainant’s good will in the marketplace is great indeed. In Capital Matrix, the Panel found the geographic factor significant:
Although the Complainant has provided some evidence of the repute of its CAPITAL MATRIX mark, the Panel notes that the evidence suggests that such repute is limited to a small part of the North American territory.
Complainant also offered proof that Respondent attempted to sell the domain name to it, but the Panel gave little weight to it because there was no evidence that Respondent acquired the non-renewed domain name for “primary purpose” of selling it to Complainant or a competitor for valuable consideration. “In light of this … the Panel is unable to find that Respondent was more likely than not aware, or had knowledge, of the Complainant at the time of registering the disputed domain name.”