Complainant prevails only if it proves conjunctive bad faith. Bad faith use can be inferred if the proof supports bad faith registration but there is no inference of abusive registration the other way around, although as I have pointed out in earlier Blogs there are panelists who go their own way on this issue. There are two different ways of describing conduct, and we shouldn’t be fixated on bad faith or not bad faith. Respondents can win either because complainant is unable to prove it registered the domain name in bad faith; or, because it makes an affirmative showing that it acted in good faith, in registering the domain name and using it.
We see an example of the first—that complainant loses because it is unable to prove bad faith registration—in eWomenNetwork, Inc. v. Terra Serve c/o Domain Administrator, FA1506001622849 (Forum July 27, 2015). The 3-member Panel unanimously ruled that “Past panels have declined to find bad faith where, as in the present case, the respondent has shown that its rights in the domain name at issue predate the trademark rights of the complainant.” There was some evidence of bad faith use but the Panel declined to make a ruling: “The Panel notes that it makes no judgment on whether, at any time after the registration of the domain name, Respondent engaged in bad faith use.” There is no explanation for this reluctance on the literal record but there is something between the lines because the Panel also declined to rule reverse domain name hijacking, which I think tells us that it credited Complainant on the issue of bad faith use and saw no reason to reward the Respondent.
An example of the second type of act—that respondent proves that it acted in good faith, not just that complainant is unable to prove bad faith—is found in Aena, S.A., ENAIRE v. John Hamblin, All England Netball Association, D2015-0996 (WIPO July 17, 2015) . By happenstance the string of characters Complainant uses as a trademark Respondent has acquired as an acronym —AENA and “All England Netball Association.” There are cases in which respondents pretend to be who they aren’t, but the Respondent in Aena, S.A. is authentically who it contends to be. The Panel pointed out and properly so that there was no evidence Respondent (in England) had any knowledge of a company in Spain:
Under the circumstances, including the obvious link between the Respondent’s organization and the term/acronym “aena”, the Panel is not convinced that the Respondent had knowledge of or was targeting the Complainants’ trademarks and the use of them at the time of the registration of the disputed domain name. . . . The Panel does not find any other compelling circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainants, or to disrupt the Complainants business. On the contrary, the Panel notices that even at the time of registration in 1997, “England Netball” was set out as the registrant organization.
In other words, Respondent has as much right to use the string of letters as the Complainant so there’s nothing to complain about.
In ewomen the Panel declined to rule that Respondent had any right or legitimate interest in the domain name; it did this because the ultimate ruling denying the complaint had to be under paragraph 4(a)(iii) not 4(a)(ii) of the Policy since 4(a)(ii) of the Policy implies good faith. The only reason Complainant couldn’t succeed was because it lacked priority. In contrast, in Aena, Complainant had priority but Respondent proved it acted in good faith in using the characters for an acronym of its organization.
There are factual situations in which respondents, either because they default, are passive holders of domain names, or cannot demonstrate rights or legitimate interests, have to fall back (and prevail) on the priority argument under paragraph 4(a)(iii) of the Policy. There is no bad faith implied, but neither can successors in interest to the domain names rest assured that they will not be challenged after the new registrations.
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here