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Simultaneous Legitimacy and the First to Register Principle

Where there is a parity of right, the first to register a domain name comprised of a string of syllables, two or three letter acronyms, single words or combination of letters or words is entitled to it. In these circumstances, the “first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest,” CRS Technology Corporation v. Condenet, Inc., FA93547 (Nat. Arb. Forum March 28, 2000). First come first served implies registration of a domain name that equally could have been acquired by a trademark holder who was outraced to the registry. However, it is not being first that secures the right, but being first to register the domain name in good faith. “A person who successfully registers a domain name on the basis that [he was] the first to apply to register it secures the registration subject to the three threefold requirements of the Policy” (emphasis added), VRL International Ltd. and International Lifestyles, Inc. v. Relevansanalys, D2009-0974 (WIPO September 3, 2009).

The first to register principle is illustrated in Neptune Orient Lines Limited v. cnwonder.com c/o Wu Guiqiang, FA1002001310401 (Nat. Arb. Forum April 14, 2010) contending over the three letter second level domain name <nol.com>. The Complainant claims to have operated under the trade name NOL since 1968, although it only obtained registration of it as a trademark subsequent to the registration of the domain name. Although the Complainant “has proved that it is entitled to claim protection of its mark ‘NOL’ and its tradename ‘NOL’ before Respondent began to use the domain … Respondent is likewise free and allowed to claim protection upon the ‘NOL’ domain name, as it is making a bona fide offering of services, certainly linked with the name used in the domain” (Underlining in original).

A competitor who by happenstance registers a domain name descriptive of its services and not purposely to disrupt its counterpart who has also adopted the mark is entitled to retain the domain name. One Creative Place, LLC v. Kevin Scott, D2006-0518 (WIPO June 16, 2006) (<montrosejetcenter.com>):

Both parties had a potential interest in using the highly relevant, descriptive words ‘Montrose Jet Center,’ as a name, as a domain name, or in descriptive advertising…. In short, it appears to the Panel that this dispute represents a race to use descriptive words in a newly competitive marketplace, rather than a bad-faith effort by the Respondent to trade on the Complainant’s established marks.

Finally, where the mark is used by a “multitude” of businesses – “nol” is incorporated in a number of trademarks – Panels have approached the issue in one of two ways. Either the mark is too weak to satisfy the bad faith registration requirement or too diluted for protection by any of the multitude, in which event the first to register is entitled to keep it.

Gerald M. Levine <udrpcommentaries.com>

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