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Having Trademark Rights, Not Failing to Assert Them Is the Threshold Issue

The respondent’s sole contribution under paragraph 4(a)(i) of the Policy should be to confute the complainant’s assertion of jurisdiction: that the complainant either has no trademark or if it does the domain name is neither identical or confusingly similar to it. The term “has rights” means that the complainant has them at the time of filing the complaint rather than its having had them prior to the registration of the disputed domain name. The general rule is that acquisition of a trademark post-dating the registration of the domain name does not affect jurisdiction or the complainant’s standing to maintain the proceeding, even though it may foretell the result of the proceedings.

Set against the consensus that 4(a)(i) does not require that the trade mark be registered prior to the domain name is another line of cases that holds the opposite view. This is illustrated in The New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010). Against the backdrop of the ascendant view it is surprising to find a Panel rendering its declaratory ruling at the threshold on the grounds that the Complainant has no senior right to the term “deal book.” Terminating the proceeding at the threshold may have the merit of speed (on the theory that the Complainant would have lost anyway) but the demerit of sloppy reasoning. The New York Times registered DEAL BOOK as a trademark five years after the Respondent registered the domain name, although it allegedly began using the mark three years prior to that date. .

In some early cases later acquired trademark rights were thought to be jurisdictionally preclusive. It was assumed that standing depended on the timing of the complainant’s trademark. According to the Panel in Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO March 30, 2001) the Policy “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name.” Because “the respondent’s registration of the domain name … predated the complainant’s alleged rights the complainant did not have standing to bring a claim under the UDRP,” Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (<razorbox.com>).

It necessarily follows from the view espoused in the foregoing decisions and in The New York Times that it is unnecessary to make any findings under paragraphs 4(a)(ii or iii) when a complainant’s rights in the mark post-date domain name registration. Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum February 19, 2003) (no enforceable interest under paragraph 4(a)(i) of the Policy therefore no right). The view continues to exercise a hold over some panelists and not a few complaints are dismissed on this ground. In EDREAMS, Inc. v Arise Company Ltd., D2006-0725 (WIPO July 24,2006)., for example, the Panel held that “[h]aving considered [cited] authorities and the submissions of the parties, the Panel finds that the Complainant is unable to satisfy the test in paragraph 4(a)(i) of the Policy because it has no trademark rights which pre-date the date of creation of the disputed domain name.”

Like the earlier line of cases, Panel in The New York Times considers timing determinative. It was “unpersuaded” that the Complainant used “deal book” in a trademark sense earlier than the Respondent’s registration of the disputed domain name. “In its most favorable light Complainant’s evidence supports that it began using DealBook in 2001 on a limited basis through its own newspaper and website to address deals in the financial industry.” However, “While Complainant has provided some information on the nature and extent of advertising, no other factors have been shown to indicate that the general public, including the Respondent, knew or should have known of Complainant’s alleged rights in the DEALBOOK mark from 2001-2004.” The different approaches do not necessarily change the outcome of the proceedings, but the consensus view gives the complainant the opportunity to demonstrate that its right preceded the respondent’s right and the domain name was registered opportunistically.

The uncertainty of which approach is correct is illustrated in Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001): “However, in case we are wrong on this issue [that is, skipping the threshold finding], we find that the Complaint fails to meet any of the requirements of paragraph 4b of the Policy.” Which is essentially what The New York Times Panel is saying in early terminating the proceedings. The Panel unnecessarily latches on laches as an affirmative defense to the Complainant’s threshold burden where more aptly the record appears to support a right or legitimate interest in what, after all, is a generic adjectival phrase. Having standing confers no advantage in supporting an actionable claim for abusive registration.

Levine Samuel, LLP <researchtheworld.com>

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