In assessing bad faith “the complainant must prove that the respondent has ‘targeted’ the complainant or its mark in some way, or at the very least that the respondent had the complainant or its trademark in mind when it selected the disputed domain name,” Foodcube Technologies Inc. v. Registrant : Domain Administrator, Foodcube Takeaways, D2009-0945 (WIPO September 4, 2009). The “usual telltale signs of cybersquatting” are the actions described in the four examples of bad faith. It must be evident that in some way the respondent anticipates a benefit by holding or is currently benefitting from actual use of the domain name.
The facts in Foodcube are unusual in that <foodcube.com> was registered prior to the Complainant’s trademark coming into existence but transferred several times while remaining in possession of the original registrant. The argument that rearranging ownership of a domain name within the family should be “effectively ignored” has been rejected. Certipost NV v. Virtual Point Inc, D2008-1183 (WIPO September 25, 2008). Each transfer constitutes a new registration, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (“[T]he transfer of a domain name to a third party amounts to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.”).
However, a complainant of a later acquired trademark right must still prove bad faith. A new registration is measured by the same standards as the original registration. It was evident from the record that there could have been no bad faith registration by the original registrant. In Foodcube, there was a new registration of the domain name and “the issue is whether the Complainant has proved that the Respondent acted in bad faith in effecting that registration.” There was no evidence of bad faith use by any of the prior registrants. Acquiring a domain name and continuing bad faith use is one of the telltale signs of bad faith registration. Except for asserting that the business advertised on the website was a sham, there was no evidence that the Respondent or its predecessors had the Complainant in mind at any time.
The Respondent’s explanations in Foodcube for the various transfers were not implausible as a response to statements made by the Complainant’s representative in cease and desist letters and correspondence with the Respondent. One of the notices stated that “WIPO decisions uniformly reject this view [that you, the Respondent have a superior claim because you registered the domain name earlier than the existence of the trademark right], and find that the date of registration does not confer a superior claim against a trademark holder when the domain name holder is not using the domain for any legitimate, bona fide purpose.” The Panel properly found (indeed, was generous in its language) that the statement was “potentially misleading.” In fact, the statement misstates the law and may very well have excited the Respondent into protecting his position by making “internal rearrangements.” “The Complainant’s real difficulty stems from the fact that this Domain Name was registered before the Complainant even came into existence and, unlike the position in Certipost, there is insufficient evidence of bad faith intent targeting the Complainant, in the ‘internal rearrangements’ made with the Domain Name” in the relevant periods (emphasis in the original).
Gerald M. Levine <udrpcommentaries.com>