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Right to Regain Domain Name Earlier Registered than Trademark Not Dependent on Respondent’s Use, Non-Use or Underutilization Of It

Unless a complainant has a trademark right with priority over the respondent’s choice there is no principle of law that allows it to acquire a domain name by forfeiture. This does not mean that a respondent’s earlier registration necessarily defeats a prima facie case, but a complainant’s argument that it has a superior right because it has a trademark and the respondent does not, PPTP.NET, LLC v. Hoa But, FA1002001310141 (Nat. Arb. Forum April 12, 2010), or that the respondent either uses in bad faith, underutilizes (in the complainant’s opinion), keeps its domain name inactive or refuses to respond to complainant’s correspondent is based on a false premise, Success Bank v. ZootGraphics c/o Ira Zoot, FA0904001259918 (Nat. Arb. Forum June 29, 2009). The superior right of a holder refers to its exclusive use of its trademark in commerce rather than to a corresponding domain name. In that respect only the holder has superiority because it has priority, not the other way around, and this superiority looks forward from the holder’s acquisition of its trademark, not backward to encompass another’s right. To rule otherwise would introduce a new rule of law favoring holders of later acquired trademarks.

In attempting to establish a better claim or a superior right to the domain name the Complainant in NETtime Solutions LLC v. NetTime Inc. c/o Chad Wagner, FA0810001230152 (Nat. Arb. Forum December 19, 2008) for example proposed that a respondent can lose its right to a domain name if “his company has been dormant for at least 10 years; that his use of the domain name has not been in connection with bona fide offering of goods and services; that the domain name has been crippled by its non-use; [and] that by ceasing to trade Respondent has extinguished his rights in the name.” However, even if a complainant is successful in proving that the respondent lacks rights or legitimate interests in a domain name because of its use the respondent’s registration prior to the complainant acquiring a trademark right is a barrier to proving bad faith. The law is that a “later business cannot just register a trademark and then subsequently use this procedure to remove a website from the Internet that uses the same name,” Rohl, LLC v. ROHL SA, D2006-0645 (WIPO July 12, 2006).

In PPTP.NET, LLC the Complainant argues that the Respondent “has not established any corporation, trademark or service mark pertaining to or referencing the domain name [<pptp.com>].” Neither has it responded to “multiple attempts at communication regarding the domain name.” From these facts the Complainant infers that the “current domain holder … has acted in bad faith by … renewing the domain name registration … despite not having a website present(sic) at all.” The Complainant is represented, although whether the person is a lawyer is not indicated. Lawyer or not, none of these arguments has any merit. A respondent whose registration of the disputed domain name predates the complainant’s trademark has no obligation to respond to a complainant, although failing to respond is a factor in considering a finding of reverse domain name hijacking, and does not need to have a corporate form or trademark to register and renew a registration.

Even if the Complainant in PPTP.NET had a trademark, which it was unable to prove, and for which reason alone it failed to state a claim, it could not have succeeded in removing the domain name from the Respondent because the right it claimed for itself commenced 13 years after the registration of the domain name. Similarly, in Mariposa Ltd. v. Stonecutter, Don Sawtelle, D2010-0200 (WIPO March 28, 2010): “While Complainant may consider that it has a ‘better claim’ to the term ‘Mariposa’ than Respondent, that is not sufficient to establish abusive domain name registration and use” (Domain name registered in 1995; trademark registered 2008).

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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