Domain names are not literally owned, but possessed for a length of time, not unlike a valuable leasehold with option for which continuance of possession requires timely renewal. They can be irrecoverably lost if allowed to lapse for nonpayment of the annual or multi-year fee. This is particularly true for domain names that track trademarks composed of generic words or are neither famous nor well known. When a domain name comes onto the market registrants have no way of knowing that it belonged to a trademark holder who inadvertently allowed it to lapse. Berenson & Company, Inc. v. Berenson Corp. c/o Babij, Terry, FA0909001283183 (Nat. Arb. Forum October 23, 2009). For a domain name identical or confusingly similar to a trademark the use to which it is put may well be a controlling factor in determining good or bad faith. Content, for example, consistent with the generic or descriptive terms of the domain name will more likely be found in good faith; less likely if the website displays advertising competitive with the complainant’s goods or services.

However, recapture of a domain name after inadvertent loss is uncertain. A complainant without trademark rights has no standing – See Note for May 15, 2009, Connie Campbell Bratcher v. Inspirational Poetry Quebec, FA0902001249815 (Nat. Arb. Forum May 8, 2009) (<inspirationalpoetry.com> and for prior owners whose trademarks make few ripples in the marketplace or are composed of generic terms, GLB Serivicos Interativos S.A. v. Ultimate Search Inc., D2002-0189 (WIPO May 29, 2002) (<paparazzo.com>) they may have standing but no case. There must be some proof that the respondent has acquired the domain name with prior knowledge of an underlying trademark or that the domain name has not been intentionally abandoned, Midland Heart Limited v. Uton Black, D2009-0076 (WIPO March 30, 2009) (“Although the Complainant had previously registered the Domain Name and <midlandheart.co.uk>, it had allowed these registrations to lapse, and there is no evidence that the Respondent knew that the Complainant intended to re-register them.”)

Berenson presents a situation in which the Respondent has conducted a business under the same name for a period antedating the commencement of the Complainant’s business. However, this is not a race to the Registrar case. Complainant originally owned the disputed domain name and lost it “under circumstances unknown to the Panel.” This elicited the dictum that “The Panel wishes to emphasize that UDRP proceedings are not meant to regain ownership of a domain name that was lost.” The statement may be accurate in a literal sense, but is misleading nontheless. UDRP proceedings are intended to weed out abusive registrations. In fact, the Provider databases are full of cases in which a lost domain name has been regained, but not where the respondent has a right or legitimate interest in it.

The question is, To what use is the domain name being put? If the purpose is to take advantage of the complainant’s trademark it will be forfeited. FBomb Clothing c/o Joel Jordan v. Domainly.com, FA0902001245522 (Nat. Arb. Forum March 16, 2009), regardless of how it was acquired, Intagent LLC v. Dominor LLC, D2008-1878 (WIPO January 29, 2009) (<intagent.net>) involving an expired domain name sold at auction. The Respondent was dismayed by the UDRP complaint even though it purchased it “to take advantage of the Google Page Rank.” While “it is understandable that Respondent considers it unfair that a domain name registrar may auction an expired domain name the use of which may be encumbered by trademark rights, such auction of expired names is [] consistent with the registration system adopted and implemented by ICANN.” Inadvertently allowing a registration to expire “does not mean that any Registrant is permitted to swoop in and acquire the registration.” Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum February 10, 2003).