Domain names are not literally owned. Rather, they are held for a length of time pursuant to a registration agreement that must periodically be renewed. The better analogy is to a valuable leasehold interest with an option to renew that can be lost if the registration is allowed to lapse. Trademark holders incorporating their trademarks in domain names have a greater degree of security because trademarks are property in the full sense of the term and inadvertent lapse in renewing a registration does not affect intellectual property rights. Unregistered trademark rights are not less protected in theory but in practice it depends on their classification. Where persons have earned their trademark rights as athletes, musicians, entertainers and writers their surnames are not merely generic or descriptive, but reach higher on the scale and deserve greater protection. The Complainant in Barbara Kingsolver v. Kingsolver Computer Solutions, FA1003001313077 (Nat. Arb. Forum April 13, 2010) owns an unregistered trademark in her surname as a best selling author. Her agent inadvertently allowed <kingsolver.com> to lapse.

Panels have taken one of three positions when the complainant fails inadvertently to renew its domain name: 1) favoring the fanciful and arbitrary and perhaps the suggestive; 2) disfavoring the generic and descriptive; and 3) rejecting excuses altogether. Offsetting the principle that “[n]ormally those who sleep on their rights do so at their peril” is another, that “the law generally incorporates various safeguards to avoid undue forfeitures and unjust enrichments.” Official Pillowtex, LLC v. Smadar Zangi, FA0411000366168 (Nat. Arb. Forum January 6, 2005). These equity principles can be employed where

(1) little if any investigation has been done into the history of the domain name; (2) very little time passed between lapse and the new registration; and (3) the Respondent presents goods or services on its website that are directly related, identical or confusingly similar to Complainant’s goods or services, the characterization of Respondent’s behavior weighs against mere business savvy and instead reflects bad faith.

Surname trademarks have an elevated distinction. Kingsolver may not be “famous” but she is a best-selling novelist in the English language. Registering as a domain name a surname from a different cultural community without investigation and directing the website to an English speaking audience that includes references to the complainant constitutes wilful blindness of the complainant’s rights. The Respondent in Kinsolver offered the following defenses

1. The domain name was purchased from a Hong Kong Company trading in domains for $1,888 U.S.
2. Respondent has never heard of Complainant.
3. The page to which the domain resolves was authored by Respondent’s predecessor.
4. Ms. Kingsolver is not famous.

The fact that a respondent purchased the domain name at an auction or from a third party who registered after the lapse and passed it along with populated content to the next purchaser is not a defense. It is “the responsibility of domain name bidders and registrants to determine whether and how they may be entitled to use the domain names,” Intagent LLC v. Dominor LLC, D2008-1878 (WIPO January 29, 2009) (<intagent.net>). The second and fourth points are worth attention because of the geographical and cultural distance between the parties. If it is true that the Respondent in Kingsolver has no knowledge of the Complainant – the cultural divide being so great it may be expected that he does not – Why should he be charged with bad faith registration, in effect wilful blindness? The reason, is that the Respondent has chosen to employ the domain name to capture traffic in Kingsolver’s cultural community and not in its own, from which in using the domain name in bad faith (as evidenced from the content of the website) the Panel drew the inference that it also registered the domain name in bad faith for its trademark value. See, also Budget Rent A Car System, Inc v. Admin, Domain, D2010-0149 (March 31, 2010), Canadian Complainant; Chinese Respondent, in which the Panel concluded that the Respondent must have known, but the more logical inference is that the domain name was registered for its trademark value since it continued to address the English speaking market for rental cars in Australia and elsewhere around the world including Canada.

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