The complainant’s threshold burden for maintaining a UDRP proceeding is to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has a right. An application to register a trademark does not satisfy the burden, but proof that the mark has a prior history of commercial use qualifies for a common law right. The principle that an application for a trademark by itself is insufficient to pass the threshold test has an exception, namely where the respondent is found to have anticipated the complainant’s trademark registration after the complainant has received significant media coverage. The exception is explained in the WIPO Overview at paragraph 3.1:
In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.
The Overview cites several examples, such as “where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch).” A good example of an applicant with a famous name but untested and descriptive trademark and no proof of “substantial media attention” prior to the registration of the domain name is Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009) whose mark EVERYDAY FOOD was registered on the Supplemental Register. Martha Stewart‘s request for transfer of the domain name was denied.
The Complainant’s application for JUICY ADS in Tiger Media, Inc. v. Leconte Pierre, D2011-0670 (WIPO May 30, 2011) was pending and even though registration on the Principal Register was imminent it could not have passed the threshold test without other evidence of a trademark right. The more evidence in Tiger Media consisted of a history of commercial use prior to the Respondent’s registration of the domain name which supported a common law right to the trademark. The Complainant had also received substantial media attention: “The Internet archive has stored 121 records of the website which the Complainant’s domain name, <juicyads.com> resolves to. In December 2009, Xbiz announced that the Complainant had been nominated for the Traffic Service Company of the Year award that year. The Complainant was an Xbiz awards winner in 2011.”
In addition to the media attention in Tiger Media, the record contained concrete proof that the Respondent had actual knowledge of the Complainant in that the home page “included a nearly exact reproduction of the Complainant’s logo, the subject of its trademark application in the USA.” Copying a complainant’s web page is tantamount to an admission of bad faith. The Respondent was served with a cease and desist notice, to which it did not respond. Significantly, after the cease and desist notice, the Respondent changed the appearance of the website, which reinforces a conclusion that the primary purpose for the registration of the domain name was to take advantage of the Complainant’s trademark.
There is also an issue in Tiger Media (as in Martha Stewart) that the trademark is descriptive and common. The Panel dealt with this head on. “The Panel is aware that the disputed domain name does have some descriptive reference to the nature of the services being provided via the Respondent’s website.” However, as the Panel also noted, “[t]he verbal component of the Complainant’s trademark is at least arguably not wholly descriptive and has an allusive or suggestive character.” The clincher for bad faith registration, “as the Complainant points out, [is that] any claim to good faith on the part of the Respondent can hardly be made out where he has adopted a very close, if not exact, copy of the Complainant’s logo on his website (until receipt of the cease and desist letter).”