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Recapturing Inadvertently Lapsed Domain Names

Ownership of domain names can be tenuous. They can be lost beyond recapture through inadvertence. Trademarks, at least the registration for trademarks can also be lost, but more easily regained if not abandoned. Domain names are different; they are not “owned” but rather held for a stipulated period and their continued holding depends on renewal of registration. Not surprisingly holders sometimes forget to renew their registrations and the domain names become available for registration by others.

For trademark owners loss of a domain name corresponding to their trademarks could be devastating. Recapture depends in part on the strength of trademark; also on the time from lapse to demand for transfer. Weak trademarks fare badly. A good illustration for weak marks is Rising Star AG v. Moniker Privacy Services / Domain Administrator, D2012-1246 (WIPO August 16, 2012) a Swiss company who testified that it acquired from a prior registrant in 2006, but whose agent (at some unspecified time) failed to renew. Respondent acquired the domain name at an auction in 2010.

As a trademark RISING STAR is on the weak end of the classification scale. Complainant alleges that “it seems obvious that … Respondent [] bought the disputed domain name for the purpose of selling the disputed domain name to the Complainant who had owned it years before.” What may “seem” obvious to the Complainant is not evidence of a fact, but a supposition. Supposition is not proof of anything. A contention that “the additional offering of the disputed domain name by the Respondent for sale indicates a non-legitimate use” is at odds with the law. Offering a domain name for sale is a fact, but not necessarily supportive of bad faith absent evidence of targeting. The Panel notes

As far as the contention of the Complainant goes, that the additional offering of the disputed domain name by the Respondent for sale indicates a non-legitimate use, the Panel shares the opinion of the Respondent that the offering of a domain for sale per se is not necessarily improper and does not make its use illegitimate.

Supposition of Respondent’s intention to take advantage of Complainant’s reputation could conceivably be transformed to fact “possibly, if the website would display pay-per-click links related to the financial services industry, which is not the case here.” The demand as properly framed by the Panel and the lesson to be drawn is that recapture of a lapsed domain name must be earned by proof; less for a strong mark; more for a weak mark. While it is obviously true that Respondent holds the domain name without Complainant’s permission, that fact alone is not sufficient to support a prima facie case that Respondent lacks rights or legitimate interests in the domain name. As the Panel points out, using a domain name as a link farm is not illegitimate. In this particular case the “arguments of the Respondent make sense from a commercial perspective [and] appear well-founded.” The Panel continued

In fact, the pay-per-click links provided by the Respondent on the website, into which the disputed domain name resolves, all relate to employment opportunities and entertainment. For these subject matters, the term “Rising Star” is a word that bears a positive connotation, meaning either a person who succeeds in his or her job (“the rising star of the xyz company”) or gives an outstanding performance in the entertainment sector, to which the links “recordsong”, “karaoke” or “casino” relate.

A survey of cases indicates that in proceedings by trademark owners of strong (or less weak) marks respondents tend to default. Recapture is more likely; but when a respondent appears and makes a case, it is more likely to retain the domain name.

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