The doctrine that the first to register a domain name is entitled to keep it does not secure a right under all circumstances, Educational Tertiary Service v TOEFL, D2000-0044 (WIPO March 16, 2000), although it will if the registration is made in good faith, XIHA Oy v. Qiu Shengjie, Chen Qing Mei, D2010-1204 (WIPO October 28, 2010). Under the UDRP the concept of “good faith” registration is based on affirmative proof that respondent has rights or legitimate interests in the domain name. A registrant cannot, for example, intentionally appropriate a trademark for its domain name and claim priority because the trademark holder failed to register it first, which was the case in Educational Tertiary Service. Good faith is evidenced in one of two ways. The domain name was registered prior to the acquisition of a registered or common law trademark. Or, the domain name is composed of common terms that have currency in the marketplace without reference to the trademark.

A person who successfully registers a domain name and contends that he owns it despite the domain name being identical or confusingly similar to the complainant’s trademark is “subject to the three threefold requirements of the Policy,” VRL International Ltd. and International Lifestyles, Inc. v. Relevansanalys, D2009-0974 (WIPO September 3, 2009). The analysis necessarily focuses on the priority of rights. Targeting presupposes the prior existence of complainant’s business or its trademark and a reputation great enough for inferring that respondent could have had knowledge of it at the time it registered the domain name. A first to register defense presupposes absence of knowledge of complainant or its mark.

The unregistered trademark in XIHA Oy (a Swedish company) is an unusual combination of letters, but since it acquired its right to that mark many years after the respondent’s registration of the domain name it is in the unenviable position of making a claim that defies gravity. Under these circumstances “[i]t is not foreseeable that the Respondent could have had actual or constructive knowledge of the Complainant or the Complainant’s trademark XIHA at the time of registering the Disputed Domain Name.” The complainant carries the burden of proving a common law right if it allegedly preceded the registration of the domain name. However, the Complainant alleged no right prior to the registration of the domain name. It posited its allegation of bad faith on Respondent’s passive holding of the domain name and refusal to sell it at a price it deemed acceptable – “The Complainant had approached the Respondent some years ago by telephone to buy the Disputed Domain Name but the asking price was too high.” Neither of these facts can support bad faith. The Policy does not condemn marketing domain names for a price an arm’s length purchaser is ready to pay.

Nevertheless, the Complainant argued “that despite the registration of the Disputed Domain Name predating the Complainant’s trademark, the Disputed Domain Name was registered in bad faith.” There are, of course circumstances, under which bad faith may exist with a prior registered domain name, but it requires proof of “actual or constructive knowledge of an unregistered trademark or the application for registration of the trademark” by a well known complainant whose activities and plans have been widely reported in the media, citing several cases to this effect. However, the Panel was “unable to find any correspondence between these cases and the present proceeding.”