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Lapsed and Abandoned Domain Names Returned to General Pool

Unlike trademarks that are owned (even if not registered) domain names are leased for renewable periods without end, but can be lost by unintentionally failing to renew registrations or intentionally abandoning them. The stronger the mark the greater the likelihood the domain name can be recovered. Culture and Sport Glasgow t/a Glasgow Life v. Yemliha Toker, D2015-2191 (WIPO January 21, 2016) (<trongate103.com>) and Wendy Sue Ansel, Owner- Rocks and Runes v. Jerome Lacharite, D2015-2362 (WIPO February 4, 2016) (<rocksandrunes>). However, whether lapsed or abandoned domain names return to the general pool, making them available to opportunists as in Culture and Sport Glasgow and Wendy Sue Ansel or innocent purchasers as in Diamond Trust Consultancy (UK) Limited v. Kim, James, D2015-2051 (WIPO January 27, 2016).

The Panel in Diamond Trust points out that “[p]revious UDRP panels have gone so far as to suggest that where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, then ordinarily the trade mark holder should be denied relief, whether the mark is a common law or a registered mark, whether the mark is ‘strong’ or ‘weak’” citing CB Publishing, LLC v. Akway Int’l et al., No. 926506 (Forum April 18, 2007) (<cbpublishing.com>) but actually relying on an earlier case, Corbis Corporation v. Zest, FA0107000098441 (Nat. Arb. Forum September 12, 2001) (. “The Panel also believes that the very fact that a domain name has lapsed could allow a party to register the domain name without a trademark search, even in the hope that some person might wish to buy the name”).

However, the final thought in Corbis and repeated in Diamond Trust is dubious since registrations of lapsed domain names identical or confusingly similar to strong trademarks require persuasive rebuttals from respondents as in Diamond Trust but not forthcoming in Culture and Sport Glasgow, CB Publishing, Wendy Su, or Corbis.

Innocent purchasers are those lacking knowledge of complainants’ trademarks and using domain names consistent with their semantic meanings. The fact that an accused domain name resolves to a pay per click parking page is not evidence of use of the disputed domain name in bad faith but it can be if the content is infringing. In Diamond Trust, the prior holder had owned the domain name for 17 years. Complainant owns trademarks for the phrase DIAMOND TRUST, albeit acquired subsequent to the original registration of the domain name. The question is whether domain names returned to the general pool are vulnerable to forfeiture simply because by happenstance names correspond to trademarks? The answer is generally not.

While the phrase “diamond trust” is distinctive in a trademark sense (having been accepted for registration in the U.K.) its protectability is limited to the specific services Complainant offers. As a general rule, complainants are expected to prove respondents had them particularly in mind when respondents acquired the domain names. Clues of knowledge include content of website to which domain names resolve; location of parties; respondent’s business model; and history of UDRP complaints. If none of these are proved and complainant offers no other evidence no inferences can be drawn of bad faith registration.

In Diamond Trust the Panel notes lack of renown, geographic distance, and lack of commercial presence in Respondent’s country: “[no] degree of renown attached to the Complainant’s mark that the Respondent, based in the Republic of Korea, should have been aware of the Complainant’s registrations or of its business under the DIAMOND TRUST mark.” Even though Complainant is present in “various geographic regions” it offered no evidence of any presence in the Republic of Korea “or anywhere in the surrounding geographic region under the DIAMOND TRUST mark that might have made it more likely that it might necessarily have come to the Respondent’s attention.”

Where complainants are silent, that is it fails to offer evidence, there can be no inferences to support abusive registration unless there is a clue in the resolving website. First, there is the general proposition

A domain name broker seeking to acquire a disputed domain name, whether at auction or otherwise, cannot reasonably expect to acquire other than the most simple of generic or descriptive terms as a disputed domain name with impunity under the Policy without carrying out at least some basic level of checks of existing third-party trade mark interests in the disputed domain name. Although the scope of this exercise will depend upon the nature of the domain name concerned and should not generally extend to international trade mark searches, at a bare minimum and where the domain name comprises more than a common generic or bare descriptive term, it is not unreasonable to expect a potential acquirer to carry out a simple Internet search to see if there are any third-party interests that are so obvious that it ought to be aware of them.

Then, there is the specific lack of proof:

While neither party has provided evidence of [an Internet search], the Panel notes that on entering the search term “DIAMONDTRUST” into a Google search engine it was unable to see in the first few pages of results any reference that obviously related to the Complainant or its businesses.

This yields the following conclusion:

In these circumstances the Panel sees no reason that the Respondent based in the Republic of Korea should necessarily have been aware of the Complainant’s DIAMOND TRUST mark or of its relevant businesses under that mark at the date of acquisition of the disputed domain name.

“Diamond Trust” and “Digital Stock” but not “Trongate 103″ or “Rocks and Runes” are weak marks. “CB Printing” sounds as though it could be a stronger mark but Complainant failed to prove common law rights–its pending application for trademark postdates the registration of the domain name–and Respondent showed that the acronym “CB” “can have an unlimited number of meanings, which can be used together with ‘publishing.’”Alphanumeric strings purchased by registrants unaffiliated with original holders of domain names, who acquire the domain names after they have been  returned to the general pool, who use the domain names without competing with trademark owners, or whose domain names are attractive to many third-parties other than trademark owners are invulnerable to forfeiture. The reverse is true where the domain name cannot be used without infringing third-party rights.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.

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