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Right or Legitimate Interest in a Domain Name Not Defeated by Refusal to Sell

An abusive registration presupposes either an existing trademark or knowledge of its existence when registering the domain name. If the trademark did not exist before the registration of the domain name or if it did but the respondent had no knowledge of it (which means a more probably than not denial of knowledge) then inferentially the registration could not have been made in bad faith. A later registering trademark owner wanting a domain name corresponding to its trademark has no good reason for getting it.

The Complainant in Avomex, Inc. v. Barry Pierce / Tina D. Pierce Widow of Barry E. Pierce, D2011-1253 (WIPO September 23, 2011) acquired the trademark WHOLLY GUACAMOLE after the registration of the domain name but before the present owner (the widow of a deceased registrant) acquired her interest by process of law. The widow rejected Complainant’s offer to purchase the domain name. That is one of the privileges of ownership, so Complainant’s argument that Respondent “has improperly refused to sell or transfer the Disputed Domain Name” is more in pique than a rational assertion. Refusal to sell a domain name is not to be equated with an “‘attempt[] to extort from Complainant’ and ‘squeeze as much money as possible’ by refusing Complainant’s offers to purchase the Disputed Domain Name.”

There is (also) no merit to the following two arguments that a respondent has no rights in a disputed domain name because 1) the domain name “resolve[s] to a GoDaddy parking page, from which Complainant alleges Respondent receives revenue” and 2) “[Complainant] is the [only] party with legitimate rights, and therefore Respondent cannot be the legitimate rights holder.” Complainant alleged that Respondent failed in a duty to perform due diligence to ensure that the new domain name “acquisition” would not violate existing trademark rights. The issue is whether a transferee who acquires her interest by action of law inherits her transferor’s good faith registration or had an obligation under paragraph 2 of the Policy to perform due diligence in registering the registration into her own name?

The Complainant alleges that:

Respondent would be held to have “registered” the Disputed Domain Name as of the date it was “acquired” from Barry Pierce. This would mean, Complainant argues, that Respondent should have conducted a due diligence search before any continued use of the Disputed Domain Name, and when the Mark was found, would have subservient rights to Complainant.

This, however, misstates the law:

Complainant misconstrues the holding of [Ticketmaster Corporation v. Global Access, D2007-1921 (WIPO February 13, 2008)], a situation involving facts substantially different from those here. Ticketmaster, supra, involved a respondent that purposefully acquired the domain name at issue in a commercial acquisition of a domain name portfolio. There is no doubt that in such a circumstance, a domain name acquirer should expect to perform due diligence to ensure future uses do not infringe existing trademarks, where the very use is competitive to an existing mark. Respondent in this case, on the other hand, acquired the Disputed Domain Name only through the death of Barry Pierce, an involuntary and entirely dissimilar mode of acquisition, and with no commercial motivation.

The Panel in Avomex makes clear that acquisition by operation of law is not a new registration. A good analogy would be with an intra-corporate assignment or transfer between commonly controlled persons. Schweizerische Bundesbahnen SBB v. Gerrie Villon, D2009-1426 (WIPO January 11, 2010) (“[b]usiness enterprises commonly assign and transfer trademarks among commonly controlled entities for a variety of reasons.”).

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