It is undoubtedly true that a respondent who holds inactive for many years a domain name identical to a trademark and is unresponsive to a Rule 12 Procedural Order to dislcose its use will fall short of rebutting a complainant’s allegation that it lacks rights or legitimate interests in the disputed domain name. However, a complainant does not prevail on proving 2/3rds of the Policy requirements. It also has to prove that the domain name was registered in bad faith. While there are factual circumstances under which a passively held domain name can support a finding of bad faith registration, it is not for a dictionary word. The analysis of passive use is traceable to Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). Even assuming that a disputed domain name were identical to a so-so known trademark and registered after the complainant’s acquisition of it, if it is possible “to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate” then it should be left with the respondent. The trademark in Telstra is not a dictionary word and was well known.
However, a domain name registered prior to the existence of a complainant’s business is not generally vulnerable to forfeiture, so that when forfeiture is ordered it is noteworthy. Forfeiture was ordered in Monsterops, LLC v. Testosterone LLIC, FA1007001333475 (Nat Arb. Forum September 8, 2010) and the question is, Why? The Panel clearly prided himself on his analysis of paragraph 4(b) of the Policy – “therefore, due to the study made by this Panel” – but the analysis is so utterly wrong-headed, ill reasoned and contrary to law that but for the WIPO imprimatur it could be taken for a parody.
It is useful at the beginning of this counter analysis to get a firm grasp of the facts, then proceed to a proper conclusion. The Respondent registered <testosterone.com> in 1995 and has held it inactive since that date. The Complainant filed an application for TESTOSTERONE in 1997 as an intent to use trademark. A certificate of registration was granted in 2004. There is no evidence that the Respondent who apparently resides in New York had any foreknowledge of the Complainant who apparently resides in Colorado. It might be noted that Complainant’s predecessor who made the 1(b) trademark application to the USPTO also resided in Colorado. Since an intent to use application is an admission that there are no goods or services currently marketed to which the trademark can attach it stands to reason that the Complainant’s right could not have preceded the Respondent’s.
There is no principle of law that allows a complainant whose trademark mark post-dates the registration of a domain name to acquire a domain name by forfeiture. Neither inactivity of a domain name registered prior to the acquisition of a trademark nor the respondent’s failure to come forward with evidence of a right or legitimate interest to it are grounds for taking from the respondent and giving to the complainant. Bad faith use can be found if the domain name is used in violation of the Policy at any time after registration. However, bad faith registration is different; it is an intentional act that precedes use and must be found to have taken place at a particular moment in past time.
The Panel in Monsterops erred in conflatings paragraphs 4(a)(ii) with 4(a)(iii). He took as a given that the failure to prove a right or legitimate interest supports an inference of bad faith registration. It may be true that the Complainant presented sufficient evidence to prove that it “is identifiable in the market by its distinctive sign,” but (and this is the point that has to be made) it was not so identifiable when the domain name was registered. The Panel stated “[t]his circumstance [the distinctive sign] when analyzed, especially with Respondent’s failure to prove that he has a legal interest in the domain, is enough to conclude that the Respondent had registered and used the domain in bad faith according to the Policy.”
The Panel’s legal conclusion has no basis in UDRP jurisprudence absent facts from which an inference could be drawn that the registration was abusive. Unless there are facts not apparent from the record the Panel discloses, such as the Respondent having acquired the domain name from a predecessor after the registration of the trademark, the Respondent should be gnashing his teeth at this injustice of having its domain name forfeited.