Registrations of domain names are not abusive merely because they happen to be identical or confusingly similar to a trademark. Something more is required, namely timing and targeting. The WIPO Final Report and UDRP recognize that the “behavior of innocent or good faith domain name registrants is not to be considered abusive.” A familiar complainant grievance is that “domain name dealers are cybersquatters because they acquire domain names without any intention of making any genuine active use of them and for no reason other than to sell them at a profit,” Solon AG v. eXpensiveDomains.com Project, D2008-0881 (WIPO August 1, 2008). However, as the Panel notes that “is not the definition of a cybersquatter envisaged by the Policy.” Although domain dealing carries with it certain duties of enhanced investigation which is greater than applied against individuals, it is not of itself either unlawful or the “vice at which the Policy is directed.” Rather, the vice is directed to registering and using domain names chosen intentionally to take advantage of the complainant’s reputation and trademark.

This reminds complainants that merely having or acquiring a trademark does not establish a right over an earlier registered, corresponding domain name. Neither use nor non use by the respondent would justify forfeiture. The issue is illustrated in Almost Awesome, Inc. v. USAthletics, FA1009001344656 (Nat. Arb. Forum October 28, 2010). Concerned as the Policy is for protecting the rights of trademark holders it recognizes innocent choices. This is mostly seen in situations in which the complainant’s trademark right comes into existence after the registration of the domain name, although it does not exclude post-trademark rights for innocent registration of domain names composed of common terms. In Almost Awesome the domain name is composed of common terms – “walk,” “jog,” “run” – and the Respondent registered <walkjogrun.com> many years prior to the Complainant’s acquisition of its trademark.

The Policy is not in the business of awarding domain names to trademark holders even though the evidence may demonstrate that the respondent lacks rights or legitimate interests in the disputed domain name, as is the holding in Almost Awesome. Non use supports lack of right or legitimate interest, but not bad faith. “[Here] the Respondent has registered a descriptive or suggestive domain name, ten years before a trademark has received protection through overcoming the descriptiveness through acquired distinctiveness on the basis of use.” To this is added the fact that “the Respondent has been consistent in its non-use and parking of the disputed domain name.” Ultimately, a complainant prevails on its claim only if it is able to prove that the respondent both registered and is using the disputed domain name in bad faith.

The conjunctive requirement for registration and use in bad faith is not relaxed or inapplicable for domain names passively held, although under the “retrospective bad faith” construction of the Policy discussed in earlier Notes a claim could conceivably spring from subsequent bad faith use. Although renewal of registration was not in issue in Almost Awesome, the Panel rejected the construction of the Policy offered in Eastman Sporto Group, LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) that a renewal triggers appraisal of the Respondent’s bad faith registration if current use is in bad faith.

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