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Inattention to the Timing of Rights

Default in appearance is not an admission of any material facts under the UDRP, although letting the complainant make the record increases the likelihood that its facts will support its complaint. But even with that advantage there continue to be decisions that illustrate inattention by complainants to the timing of rights. The date of registration is significant in determining whether a respondent is guilty as charged. That a complainant has a trademark and the domain name is identical or confusingly similar to it does not by itself make a case for abusive registration. Standing is the simplest burden, yet in focusing on its own right a complainant can lose sight of the respondent’s right or legitimate interest in the disputed domain name. Jeremy Wiles v. Nadeem Qadir, FA0912001297673 (Nat. Arb. Forum January 25, 2010) is essentially a cookie cutter case but it is useful for instructional purposes.

It is not unusual for complainants of unregistered and later registered marks to locate their right prior to the domain name registration. Claiming a preexisting right, however, is only as good as the evidence that supports it. An owner of an unregistered mark has the heavy burden of marshaling evidence sufficient to prove that its mark was recognized by the consuming public as an indicator of its goods or services when the domain name was registered. This is equally true of registered marks that presently have great market penetration, but did not when the domain name was registered. Discussed in Note for January 22nd, eDreams, Inc. v. CK Ventures Inc., D2009-1508 (WIPO January 8, 2010).

Inattentiveness can be fatal to a claim. Except under unusual circumstances, later acquired trademark rights do not support a claim for relief. In Jeremy Wiles, the Complainant offered ample evidence of numerous clients and market activity sufficient to support its contention that its trademark CREATIVE LAB had acquired secondary meaning. However, it began its business four years after the Respondent registered the domain name and made no attempt to prove a prior existence. The Panel held that even “assuming that Complainant had enough evidence to support a finding that [it] had acquired common law rights in the CREATIVE LAB mark through a finding of secondary meaning, [its] rights would date back only as far as 2004.”

If a complainant is going to allege bad faith it must, first of all, place its trademark right prior to the respondent’s registration of the domain name and offer sufficient evidence that the domain name was registered with the trademark in mind. In Jeremy Wiles, the Complainant is in Florida and the Respondent in Bangladesh. Even if the Complainant had offered evidence to support an earlier common law trademark, geographic distance would not have supported actual knowledge. To leave a lacuna in the record, as did the Complainant in Jeremy Wiles, is tantamount to admitting that there is no evidence of bad faith registration and therefore a meritless case.

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