There have been a number of cases lately in which complainant has either failed to prove a prima facie case or been unable to overcome respondent’s evidence of its right or legitimate interest in the disputed domain name. Respondent’s use of the domain name is a critical factor, but so too is the trademark. Longevity and recognition in the marketplace cannot trump a respondent’s right or legitimate interest unless it fails to offer affirmative evidence of its choice.

A respondent’s loss of its trademark for failure to file a declaration of use between the 5th and 6th years of registration is not fatal to either its right or legitimate interest in a domain name. Stonz Wear, Inc. v. Framez l-Wear, D2011-1764 (WIPO December 8, 2011). There is no rule that a respondent must own a trademark; indeed, it is more generally true that a respondent is not nor ever was a trademark holder, but that its right or legitimately interest arises either by its use of the domain name [paragraphs 4(c)(i) and (iii)] or through the coincidence of its business or personal name with the domain name [paragraph 4(c)(ii)]. Complainant’s prima facie burden on the second element is only satisfied by alleging that it has not given permission for respondent to register the domain name and that the respondent is not “commonly known” by the domain name. To allege one without the other does not satisfy the burden. In Stonz, the Respondent operated a business years prior to the Complainant acquiring its trademark.

In The California Milk Processor Board v. Center Ring Productions, LLC., D2011-1689 (WIPO December 1, 2011) (see last week’s post for another California Milk dismissal) the Respondent is a corporation owned by Mr. John Milke (pronounced with two syllables). Complainant challenged the registration of. GOT MILK? is “extremely well known in the United States.” Nevertheless, the Panel found it “difficult to conceive of a better means of establishing that one is ‘commonly known’ by a word than by showing that the word is his family name. Mr. Milke has been commonly known by that word all his life.” It does not explain the choice of prefix, but here the Panel disregarded “got” as a ” mere” prefix, implying that it undercut Respondent’s legitimate interest. In the Panel’s “assessment [it did not] take the Respondent outside the safe harbor of paragraph 4(c)(ii).” The missing ingredient for the Complainant is evidence of commercial use such that it could be argued that the prefix was not just “mere” but a subterfuge for taking advantage of the trademark. Had it been otherwise “there might be an argument that there needed to be proof that Mr. Milke had been commonly known by the entire phrase” but “Respondent’s use of his surname as the dominant feature of a non-commercial website keeps him within paragraph 4(a)(ii)’s safe harbor.”

A coda in California Milk on reverse domain name hijacking is interesting in pouncing on the Complainant for not recognizing that Respondent’s surname undercut the assertion that he lacked rights or legitimate interests in the domain name. The coda in full reads:

After more than a decade of precedent in UDRP proceedings, this Panel believes that “any complainant, and even more so any professional representative of a complainant, should be at least minimally versed in the Policy, the Rules, their scope, and their limits. It is no excuse that a party or its representative is unfamiliar with clear Policy precedent, much less the clear language of the Policy and the Rules themselves”…. So he finds it troubling that the Complainant, represented by counsel, so casually elides an express Policy provision, paragraph 4(c)(ii). In the Panel’s opinion this Complaint would not pass muster under Rule 11 of the United States Federal Rules of Civil Procedure, which treats counsel’s signature on a pleading as his certification, “formed after an inquiry reasonable in the circumstances “that the claims, defenses, and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law . . .” Similarly it is inconsistent with the Complainant’s (or its representative’s) certification, required by paragraph 3(b)(xiv) of the Rules, that “that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, . . .”

This having been said, and although the Panel found that “the Complaint ‘was brought primarily to harass the domain-name holder,’ Rules, paragraph 15(e),” he elected not to enter an order for reverse domain name hijacking. Instead, he chose to “admonish[] the Complainant’s counsel that in future cases he should do his homework before filing.”