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Progressive Encroachment on Complainant’s Trademark

To have a trademark when commencing the UDRP proceeding is sufficient to satisfy the requirement, but not enough to prevail on a claim of progressive encroachment. Domain names registered in good faith and later re-tasked to take advantage of a trademark may be infringing, even be actionable in a court of law, but not abusive under the Policy, unless the complainant is able to demonstrate that the respondent had its trademark in mind. The Complainant in Public Safety Group, Inc. v. Kwang pyo Kim, D2011-0075 (WIPO March 31, 2011) held a later filed trademark for “thefirestore.com”. The disputed domain name is <firestore.com>. “Whether the Complainant had rights in the trade mark at the time of registration of the Disputed Domain Name may be relevant to the consideration of bad faith under paragraph 4(a)(iii) of the Policy, but it is not relevant for the purposes of determining whether the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights.”

Progressive encroachment in which the domain name commences life in good faith and changes over time to bad faith use is a problem the Policy is not designed to remedy. The presiding panelist alluded to but rejected the theory of retroactive bad faith, preferring the construction set forth in Camon S.p.A. v. Intelli-Pet, LLC, D2009-1716 (WIPO March 12, 2010). “In particular, the Panel in [Camon] looked at recent decisions which found that the wording of paragraph 4(b)(iv) of the Policy is such that it is not necessary to prove registration and use in bad faith, and that the type of use described in this paragraph is to be taken as evidence of bad faith registration as well as bad faith use.” The Panel in the Camon and Public Safety did not agree with the disjunctive approach and “favoured the stricter, conjunctive requirement approach.”

The other two panelists concurred with the result but had different views on the issues of rights and legitimate interests and reverse domain name hijacking. The presiding panelist held that because the Respondent did not have the Complainant in mind Complainant failed to satisfy paragraph 4(a)(ii) of the Policy. One concurring panelist was not “sympathetic” to this approach because:

there is undisputed evidence that the Respondent re-tasked the ‘www.firestore.com’ Website to an objectionable use long after the Complainant began using ‘TheFireStore.com’ mark and name, and well after the Complainant registered the mark in the U.S. On these facts, I cannot find that the Respondent has a legitimate interest in the Disputed Domain Name.

The second concurring panelist who espouses a stricter standard for reverse domain name hijacking was of the view that the Complainant had “no ground for filing the complaint and that this was known to the Complainant.” This was so “because the Complainant has made the unusual but frank admission that the domain name was not registered in bad faith. That being so, the Complainant must have been fixed with knowledge, at the time it filed the Complaint, that it would not be able to prove one of the elements required to be proved, namely that within the meaning of paragraph 4(a)(iii), the Disputed Domain Name had not only been used in bad faith, but had been registered in bad faith.” Thus, the “case for a finding of reverse domain name hijacking in the present proceedings is therefore not a marginal one but a strong one. In fact, the Respondent’s description of it as ‘quintessential reverse domain name hijacking’ is probably apposite.” Nevertheless, panelists are generally reluctant to make an adverse declaration against a trademark holder as illustrated by the two who in Public Safety Group denied a declaration of reverse domain name hijacking.

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