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Letting the Sunrise Window Close Without the Trademark Holder Availing Itself of the Procedure

Sunrise rights refer to a stipulated period during which an owner of a registered trademark may register a domain name prior to the Registrar accepting registrations from the general public. The model has been employed for a number of gTLDs – <.info>, <.biz>, <.mobi> and <.tel> – as well as regional TLDs – <.eu> and <.asia>. In the case of <.mobi> (which is generally illustrative of other sunrise TLDs), the TLD was made available to the general public on September 26, 2006. Prior to that time and after July 11, 2005 until the period closed, the <.mobi> registration agreement provided a mechanism for trademark owners to challenge registrations. Similar challenge mechanisms were also provided for and other gTLDs. The latest sunrise window for the .tel TLD closed on February 2, 2009.

The question is, If the trademark holder fails to challenge a registration during the sunrise period does it lose the right to have the disputed domain name cancelled or transferred after the challenge window has closed? The emerging consensus is that tardiness is no bar to recovering the domain name under the UDRP. As with all gTLDs, <.mobi> registrations are subject to the UDRP. The issue has been squarely raised in a number of decisions. C. Bechstein Pianofortefabrik AG v. Melvin Besbrode, Besbrode Pianos Leeds, D2008-1528 (WIPO December 4, 2008); Adidas AG v. Zhifang Wu, D2007-0032 (WIPO March 21, 2007) and Mansueto Ventures, LLC v. Jonathan Witte, D2006-1479 (WIPO January 19, 2007).

Although not squarely raised, in part because the Respondent defaulted without the issue crystalizing, the Complainant in Yahoo! Inc. v. David Blanco, FA0908001280452 (Nat. Arb. Forum October 14, 2009) was successful in capturing <yahoo.tel>. In a communication with the Provider, but not a formal response to the complaint, the Respondent “emphatically insisted that this Panel lacks of competence to rule the present case, pursuant to internal provisions of the procedural Law of the Kingdom of Spain.” The challenge was rejected on the grounds that the registration agreement mandated a UDRP proceeding. “Thus, Respondent is compelled to revise [his thinking] and be properly informed of its content [the registration agreement] and implications, before making pointless contentions.”

If there can be said to be a standard argument against forfeiture it is that the complainant is bared from maintaining the proceeding because it failed to act timely in securing its sunrise rights. In Adidas, the Respondent stated that he offered the domain name for sale “only after the priority or sunrise period for registration” had expired, implying thereby that by failing to register in every gTLD the complainant has nothing to complain about. In the Respondent’s view it was he who was the aggrieved party. The Respondent further contended “that the Complainant should take the responsibility of securing the different domain names incorporating the ADIDAS mark and not attempt to seize them from others like the Respondent who has legitimately registered the domain name.” But “[t]his … is not the law..and even success in a Sunrise Challenge does not insulate a ‘.mobi’ domain name from a subsequent attack under the Policy.” The fact that “the Complainant did not avail itself of the ‘sunrise’ procedure for .mobi names [is irrelevant]. That failure provides no obstacle to the Complainant from exercising its rights under the UDRP,” Mansueto Ventures.

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