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Registration “Before Notice” and Offering Bona Fide Goods or Services Good Defense to UDRP Complaint

While merely registering and holding a domain name confers no right or legitimate interest, a domain name can be legitimized if 1) “before any notice … of the dispute”, 2) respondent “has used or made demonstrable preparations to use the domain name”, and 3) “in connection with a bona fide offering of goods or services.” Paragraph 4(c)(i) of the Policy. Each of the elements must be demonstrated. It is not longevity alone that supports a respondent’s right – the real estate theory of adverse possession is not a recognized defense – but respondent’s use of the domain name in connection with a bona fide offering of goods or services may be. Each element has to be proved.

In Cerruti 1881 s.a.s. v. Gurpreet Johar, D2012-1574 (WIPO September 28, 2012) the well known CERRUTI trademark was trumped by . Two factors in Respondent’s favor were its longevity of use and proof that since 2003 it was “conducting a substantial commercial enterprise through his Gino Cerruti Limited company.” The company held a corporate registration.  This may be sufficient under the UDRP to prevent forfeiture, but is not a verdict on trademark infringement. The Panel noted

The Complainant is a very well-known company, engaged in the same general industry as the Respondent. Its claims concerning the Respondent’s knowledge prior to his selection of a business name may be persuasive in any subsequent trademark infringement action which the Complainant may elect to file. These claims, however, fall outside the narrow scope of the UDRP Policy.

Respondent in the Cerruti case is located in the UK; the Complainant’s domicile is Paris, France. There is nothing in the case summary indicating whether Complainant has a market presence in the UK, but since the domain name was registered in 2004 Complainant must be graded low marks on policing its trademark.

The Panel noted that Complainant had served a cease and desist notice. Part of its argument was that Respondent’s failure to reply to the notice gives weight to the charge of bad faith: “Respondent’s apparent unwillingness to find an amicable solution further demonstrates his bad faith in this regard.” But, of course, failure to “find an amicable solution” is not evidence of bad faith. The core of the complaint which is beyond the scope of the Policy is passing off:

While the Complainant may be able to successfully show, in a full evidentiary proceeding before a court of competent jurisdiction, that the Respondent selected this business name with the intent to trade on their well-known CERRUTI mark, the abbreviated UDRP procedure is not an appropriate mechanism for resolving this dispute.

The proper forum for parties adversely claiming rights in a string that contains the whole of a trademark the would be a civil action in the UK where plaintiff may be confronted with a laches defense. In a UDRP proceeding, failing to police significantly reduces a trademark owner’s ability to capture the disputed domain name. As I have stated in earlier Notes, the failure to act promptly, the longer it waits supports a conclusion that the trademark owner did not believe there was any likelihood of confusion with its trademark.

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