Unless a respondent has occult powers domain names registered prior to trademark acquisition cannot have been registered in bad faith. Use alone in bad faith is insufficient for forfeiture. Paragraph 4(a)(i) of the Policy is written in the present tense. The complainant must demonstrate that it has a present “right” in a lexical string that a respondent has registered in whole or in part as a domain name. In contrast paragraph 4(a)(iii) demands proof of past conduct. “[T]he domain name has been registered and is being used in bad faith.” The phrase “is being used in bad faith” is construed to mean co-incident or close in time following the registration. In contrast, a domain name registered before a trademark right has been established is not an abusive registration under the Policy even if the respondent lacks rights or legitimate interests in the domain name. See Sai Maa v. Domain Finance Inc. / Minakumari Periasamy, FA1105001390126 (Nat. Arb. Forum June 30, 2011) on this issue. Present infringing use coupled with good faith registration that is not actionable under UDRP is actionable under the Trademark Act. See Note of June 28.
For domain names registered after the trademark the use to which the domain name is put either implicates [Cisco Technology, Inc. v. Nicholas Strecha, E-Careers LTD, D2010-0391 (WIPO May 7, 2010)] or exonerates [Dr. Ing. h.c. F. Porsche AG v. The Eight Black Group, Simon Chen and Denise Marble, D2009-0989 (WIPO September 12, 2009)] the respondent. In Point Grey Research, Inc. v. Administrator Domain / Vertical Axis, Inc., FA1105001388025 (Nat. Arb. Forum June 30, 2011) (<pointgrey.com>) Respondent’s domain name acquisition – it is not the original registrant of the domain name – pre-dates Complainant’s trademark for POINT GREY but post dates POINT GREY RESEARCH. The domain name is therefore confusingly similar rather than identical.
As a general rule, a successor domain name holder is construed as a new registrant, answerable to the complainant for bad faith registration and use. The fact that Respondent’s predecessor may have “improperly” demanded $50,000 for the domain name in 2001 is not proof against a later acquiring domain name holder. “Had Complainant believed that it had a legitimate UDRP claim it could have filed its Complaint in 2001 when the alleged offer to purchase was made. Complainant does not explain why it waited so long to assert this claim.”
In order for the Complainant to state an actionable claim for the domain name based on its present statutory right it would have to demonstrate that in 2007 (prior to its trademark registration for POINT GREY) it had a common law right. However, here the lexical string is descriptive of a geographic area in Vancouver, British Colombia and in Western Australia; is therefore on the lower end of trademark protection. To prove a common law right “with regard to a geographically descriptive mark such as POINT GREY Complainant must demonstrate to the Panel that the mark had secondary meaning even though it is apparent from the fact of the U.S. registration of POINT GREY on the principal register that the mark has since acquired distinctiveness.” The measure of “acquired distinctiveness” prior to registration is “the consuming public … rather than the claimant/producer.” This, the Panel did not find. Rather,
in its papers Complainant only offers bald statements that its marks were used in 2007 by way of its representative’s declaration attached to its Additional Submission, and nothing more. Use in commerce is a necessary, but insufficient to demonstrate common law trademark rights in a mark. In determining whether or not a descriptive mark has acquired secondary meaning, Courts (and Panels) will often consider the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term’s use; and (4) results of consumer surveys.
Denial of knowledge absent proof of secondary meaning or infringing content such as to support an inference of targeting there is no legal basis for removing the domain name from a respondent.