For registrants who are not trademark owners losing their domain names can be an irretrievable loss; and for trademark owners, perhaps not irretrievable but fraught with uncertainties of recovery. ICANN attempted to solve the problem of inadvertent lapses of registration in the Expired Registration Recovery Policy (ERRP) and its companion the Expired Domain Name Deletion Policy (EDNDP), implemented in 2013. The EDNDP is incorporated in full in the Registrar Accreditation Agreement (RAA). In this way, the ERRP and EDNDP provided a measure of security against registrants’ inadvertently losing their domain names, although a review of recent awards shows that no amount of safety features are entirely adequate to prevent loss.
The principle feature of the policy is a mechanism coordinated with registrars for alerting registrants of impending expiration of their registrations. The ERRP provides in 2.1.1 that
Prior to the expiration of any gTLD registration, registrars must notify the registered name holder of the expiration at least two times. One of these notices must be sent approximately one month prior to expiration and one must be sent approximately one week prior to expiration.
The ERRP also provides for a “redemption grace period” of 30 days following expiration of the registration. The EDNDP incorporates the essential terms into the RAA for which it becomes a contract obligation. Only if holders let the terminal dates pass do the domain names return to the general pool:
3.7.5 At the conclusion of the registration period, failure by or on behalf of the Registered Name Holder to consent that the registration be renewed within the time specified in a second notice or reminder shall, in the absence of extenuating circumstances, result in cancellation of the registration by the end of the auto-renew grace period.
Failing to timely renew means that “domain name[s] must be deleted [and returned to the general pool] within 45 days of either the registrar or the registrant terminating a registration agreement.” (Section 3.7.5.3).
Even with these mechanisms in place registrants continue to miss their renewal dates. The reason expiration is particularly severe for registrants lacking trademark rights is that they have no standing under either the UDRP or the ACPA and no remedy beyond the redemption grace period. This has impacted, for example, complainants alleging common law trademarks as illustrated in NYBEST Services, LLC v. Jun Zhu, FA1603001667008 (Forum April 29, 2016) (<nybest.org> inadvertent loss, no appearance by Respondent but Complainant failed to prove common law rights).
The question that naturally arises is whether post-EERP lapses have become more difficult to justify as inadvertence and whether complainants can (or should) be forgiven their negligence? Reclaiming lost domain names has always and continues to depend in large part on the strength of the trademark, the timing of the registration, the timing of the claim, the use to which the domain name is being put, whether it is being offered to sale, and the identity of respondent.
What can surely be counted on is that investors specializing in acquiring lapsed domain names are on the lookout for to opportunities and will almost certainly register names returning to the general pool as quickly as they’re noticed. In Flowserve Corporation v. Domain Admin / Ashantiplc Limited, FA160500 1674825 (Forum July 12, 2016) Complainant had recently acquired a hundred year company manufacturing industrial pumps and was the transferee of its intellectual property including. The dissent held (although not full throatedly) that Complainant failed to prove bad faith registration. I’ll return to the Dissent in a moment. The Majority rejected Respondent’s argument that it acquired the domain name for the value of the acronym because
the real situation is that when a Google search is performed the top results referred only to Complainant’s trademark. The remote and speculative alternative uses of the term “sihi” merely suggested by Respondent for possible third party’s applications as Indian specialty dishes and local hospital acronyms are insufficient to outweigh the worldwide use of the term by an industrial pump manufacturer since the 1920’s.
For this reason,
The Panel finds . . . that other than to identify Complainant’s goods and services, “sihi” is not an acronym distinctive enough for a potential purchaser to be willing to pay a high amount of money. . . . From the evidence presented for the purchase of the Disputed Domain Name both in timing (one day post prior registration lapse) and purchase price, it appears reasonable and more likely to the Panel, that Respondent performed the same Google search as the Panel in determining demand from potential users, hence value, and anticipated it would recover an amount in excess of its premium purchase price through a worldwide pump manufacturer with a registered mark seeking to reclaim its lapsed .com domain, than through a local Indian specialty chef, restauranteur, or local hospital seeking to use the domain as an acronym.
Generally, complainants of weak marks who wait too long (creating for themselves a laches-like problem) fail—NYLSTAR S.A. v. Domain Administrator, Meryl Blog, D2016-0561 (WIPO June 13, 2016) (<meryl.com> intentionally abandoned domain name and now wants to reclaim it, Respondent appeared)—while stronger marks and recent loss have succeeded—Dymocks Holdings Pty Ltd. v. Heng Zhong / Whois Agent, Whois Privacy Protection Service, Inc., D2016-0560 (WIPO May 18, 2016) (<dymocks.com> inadvertent loss; no appearance by Respondent); Enviro Tech International, Inc. v. Corp New Ventures Services, FA1604001671545 (Forum May 17, 2016) (<ensolve.com> inadvertent loss; no appearance by Respondent).
Whether loss is intentional—NYLSTAR and The Brooklyn Brewery Corporation v. Private Registration at Account Privacy / Jeffrey Matthews Ltd., D2015-1258 (WIPO October 29, 2015) (<brooklynbeer.com>)—or inadvertent the same principle applies as to any domain name whose registration postdates the corresponding mark. To have previously held a domain name and seeking its recovery complainants must still prove lack of rights or legitimate interests and bad faith. As the mark descends on the classification scale the more demanding the proof. While the “Meryl Brand” is strong, “Meryl” standing alone is weak. Without evidence respondent registered the domain name to take advantage of the mark there’s no case.
Whereas the Majority in Flowserve concluded that at best Respondent was “‘willfully blind’ in failing to make a quick and simple enquiries to find out if SIHI belonged to third parties” the Dissent found Respondent’s position “at least plausible”:
Respondent’s position appears to be that its reason for acquiring the Disputed Domain Name could have been its inherent value, either as a four-letter “.com” domain name or on other grounds unrelated to the trademark sense of “sihi.” Respondent presented evidence that “sihi” does have meanings unrelated to Complainant’s mark, and that the price Respondent paid for the Disputed Domain Name is within the general range within which four-letter “.com” domain names commonly trade. It seems likely that would have a greater value than unpronounceable domain names or those comprised of less common letters.
The Dissent reaches this conclusion despite his skepticism—“Yet I am skeptical of Respondent’s claim that it was concerned only with the non-trademark value of the domain name.” Add a vote and the decision would have gone the other way.
The consensus when it comes to lapsed domain names with significant web traffic is that registrants cannot simply turn a blind eye to infringing rights. In Dymocks, for example, Respondent registered the disputed domain name very shortly after the Complainant’s registration lapsed but any trademark or Internet-based search would have easily disclosed Complainant’s trademark rights and long-established use of the word “Dymocks.” See also Colorganics v. Domain Administrator / Marketing Express, FA1604001672179 (Forum June 2, 2016) (<colorganics.com>) and Friedman and Soliman Enterprises, LLC v. Gary Selesko, M&B Relocation and Referral, LLC, D2016-0800 (WIPO June 2, 2016) (<junkusa.com>).
One final note of interest. Ordinarily, when complainants make the first move in the transactional dance to purchase (or inquire about) domain names and respondents are later challenged in a UDRP proceeding they often fall back on their business model of selling domain names, which gives them a certain degree of support for legitimate registrations. Mark Overbye v. Maurice Blank, Gekko.com B.V., D2016-0362 (WIPO April 15, 2016) (“Respondent’s offer to sell the disputed domain name to Complainant is not relevant as Respondent was first approached by Complainant to sell the disputed domain name.”) See earlier discussion on this issue, here. However, this fallback argument is not effective in inadvertent lapse disputes. In Flowserve, the Panel held it was not material; what is material is that “Respondent offered to sell the Disputed Domain Name for $100,000.00, which far exceeds the amount necessary to register the domain name,” citing earlier decisions, thereby violating paragraph 4(b)(i) of the Policy.
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. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.