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Appearance Not Required for a Finding in Respondent’s Favor

Paragraph 4 of the Policy “sets forth the type of disputes for which [the respondent is] required to submit to a mandatory administrative proceeding.” “Mandatory” does not mean that the respondent itself must appear or lose control of the domain name. It is “obliged by virtue of the [registration] agreement to recognize the validity of a proceeding initiated by a third-party claimant” whether or not it responds to the complaint, Storey v. Cello Holdings, L.L.C., 347 F.3d 370, 381 (2nd Cir. 2003). A complainant does not prevail merely by having a trademark; a respondent does not lose merely because it fails to respond. Unlike a civil action, default does not constitute an admission of any material elements of the complaint. DNA (Housemarks) Limited v. Tucows.com Co, D2009-0367 (WIPO May 5, 2009).

While the respondent’s intention in registering the domain name and its conduct in using it are in issue whether or not it appears, there are certain circumstances that are clear cut in the respondent’s favor. Two recent decisions illustrate the point: 1) registering domain names composed of generic elements and using them for their association with the name, not the trademark, Dependable Staffing Services, LLC v. Ramesh Prasad, D2009-1206 (WIPO November 12, 2009) (<dependablestaffingagency.com> and <dependablestaffingagency.net>); and 2) registering domain names prior to the complainant acquiring its trademark, Nebraska Machinery Company d/b/a NMC Group v. Domain Names Inc., FA0910001288075 (Nat. Arb. Forum November 20, 2009) (<nmc.com>).

In both Dependable Staffing and Nebraska Machinery the Panels held that the Complainants had satisfied their low burden of proving a prima facie case that Respondents lacked rights or legitimate interests in the domain name. The record did not support any other conclusion. However, being two thirds right does not support a finding of bad faith registration or use. The parties in Dependable Staffing were located in different states (Arizona and California). The Complainant offered no “compelling evidence to the Panel regarding the scope of recognition pertaining to its service mark” or that a California public would associate the generic phrase DEPENDABLE STAFFING with it. After all, “most temporary staffing agencies are local in operation.” Since the Respondent is a resident of the state of California it is “thus likely outside of the Complainant’s orbit,” therefore “not reasonable … to conclude that the Respondent was actually or necessarily aware of the Complainant or its business operations when he registered the disputed domain name.” In any event, the Complainant even conceded that the Respondent may not have known about the trademark, which by itself is fatal to proof of bad faith.

Nebraska Machinery raises once again the issue of trademarks acquired after registration of the domain name sought to be captured by the Complainant. There is no requirement for a respondent to actively use a domain name. Non use of a domain name registered in good faith does not extinguish a right any more than long use of a domain name registered in bad faith creates one. A respondent cannot adversely possess a trademark. Conversely, there “is nothing in the Policy that suggests a registrant may be divested of a domain name simply because he failed to use it actively online,” National Football League v. Thomas Trainer, D2006-1440 (WIPO December 29, 2006) (<nflnetwork.com>). Nor is there any equivalent in domain name jurisprudence to the concept of abandonment under U.S. trademark law. Novatia LLC v. Matt Hite, D2007-0728 (WIPO July 11, 2007).

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