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Holders of Later Acquired Trademarks Overreaching Their Rights

There is a tendency among holders of later acquired trademarks to overreach their rights and demand forfeiture of earlier registered domain names. There may be circumstances under which a claim can be made but not against the original registrant. The issue has received attention in a number of earlier Notes, October 7, 2008, July 2 and September 24, 2009. It is always surprising when the complainant is represented by counsel offering the same tired argument that his client has a better right than the Respondent, therefore, etc., etc. the domain name ought to be transferred.

The most recent of these cases is Live Earth, LLC v. Designers for Change Ltd c/o Mustafa Sami, FA0908001280449 (Nat. Arb. Forum October 15, 2009) (<liveearth.com>). The Complaint argued that the “Respondent intended to profit from the reputation of Complainant’s mark by registering a confusingly similar domain name to which consumers seeking Complainant’s services would be drawn. This confusion was designed by Respondent to result in its commercial gain.” How the Respondent could have “intended to profit from the reputation” of a trademark that would have no existence for another nine years after the domain name was registered is one of those curious mysteries. Extispicy was a common practice in ancient Greece and Mesopotamia to read the future but to attribute divination to a respondent is not generally seen as persuasive advocacy. Indeed, the Panel did not buy it:

Is Complainant asking the Panel to believe that Respondent is so prescient as to register dishonestly the disputed domain name with foresight of Complainant’s formation nearly a decade in advance (and to cover its malignant intent by cleverly founding a “phony” organization, Live Earth Trust, nearly another decade prior to such registration)?

Lawyers should be able to read the tea leaves in this kind of case before they draft the complaint. In Live Earth the arguments led to a judgment of Reverse Domain Name Hijacking. “With the benefit of counsel, Complainant initiated this proceed based upon” arguments that were only tenuous at best. The arguments were as follows: 1) Respondent “has not used the mark in any meaningful way for years. Thus Respondent has abandoned any rights he may have had in the mark”; 2) “neither Respondent nor the Trust have held any significant events concerning environmental issues for more than five years.” The essence of the argument is that a respondent’s property can be forfeited from non-use. That is not the rule under UDRP. A trademark holder’s rights are prospective; not retrospective.

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