Proving that a domain name is confusingly similar to complainant’s trademark is but one-third of the journey; the easiest part since on that issue the complainant controls the proof. However, if the disputed domain name was registered prior to the complainant acquiring its trademark it can prevail only on proof that a subsequent registrant lacks rights or legitimate interests and is using the domain name in bad faith, from which registration in bad faith can be inferred. Against the original registrant, even lack of rights or legitimate interests is insufficient to prove bad faith. These are the basic rules. A trademark holder of a subsequently acquired right is entitled to no more than trademark law allows.

The Complainant in MediaWhiz Holdings, Inc. v. Domain Admin, PrivacyProtect.org / Domain Manager, MediaWiz Services Pvt Ltd., D2009-1227 (WIPO October 28, 2009) acquired its trademark in 2006 and alleges first use in commerce in 2002. It claims to have registered its domain name <mediawhiz.com> in 1999 prior to the registration of the disputed domain name (2001), but of course that fact is irrelevant since in 1999 the Complainant had no trademark right under any theory.

Proof that the respondent has a legitimate interest in the domain name whether as subsequent purchaser or as original registrant is conclusive against the complainant. This was noted recently in Berenson & Company, Inc. v. Berenson Corp. c/o Babij, Terry, FA0909001283183 (Nat. Arb. Forum October 23, 2009) in which the Respondent was a subsequent owner of the disputed domain name and is further illustrated in MediaWhiz in which there were no intermediate owners.

Clear though the law is it seems as though there are always parties (and lawyers) eager for the fray. In MediaWhiz, the Complainant chose to try its luck. “Faced with evidence immediately apparent on the home page of the Website that the Respondent, MediaWiz Services Private Limited, had been established under the name ‘MediaWiz’ since 1995, and knowing that its rights in respect of the name ‘Media Whiz’ went back to, at the earliest, 2002, the Complainant nonetheless chose to commence this proceeding in circumstances where its odds of success, should the Respondent choose to contest the proceeding, were minuscule.” The Panel found

The Complainant’s allegations of non-use by the Respondent of the disputed domain name are, on the facts, not sustainable.

Insofar as the Respondent may have commenced (or, indeed, re-commenced) use of its name in the U.S. market, the Complainant is, of course, free to assert its rights in the Trade Mark in the U.S. courts against the Respondent.

On the evidence available to the Panel, however, the Panel has no hesitation in finding that the Respondent, which has been commonly known as “MediaWiz Services Private Limited” since 1995 in at least the Indian marketplace, has rights or legitimate interests in respect of the disputed domain name.

Representation by counsel is no panacea; the consequence, a finding of reverse domain name hijacking.