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Market Presence of Trademark at the Time of Domain Registration

Companies that are oaks today were acorns yesterday. A complainant’s market presence today can be a determining factor for a favorable finding on its prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. However, the same evidence is insufficient to prove respondent’s bad faith registration. eDreams, Inc. v. CK Ventures Inc., D2009-1508 (WIPO January 8, 2010). The respondent, on the other hand, focuses on continuity of good faith use of the disputed domain name. The future is only relevant to the extent that there is proof of “demonstrable preparations” and that relies on what the respondent has done not what it proposes to do. That is why in determining whether a respondent’s evidence is sufficient to rebut the prima facie evidence, “the Panel is entitled to prefer a specific allegation in the Complaint to a generalized denial in the response,” Id.

Paragraph 4(a)(iii) of the Policy operates from a different perspective. Now, the complainant must demonstrate that it was also an oak of yesterday. If it was merely an acorn it has a greater burden to prove that the respondent both had knowledge of its existence and that it registered the domain name with the complainant in mind. This is the principal teaching in eDreams. The Panel was unanimous in denying the complaint. The dissent found that there was no confusing similarity between EDREAMS and <> and that the Respondent proved that it used the domain name for a bona fide offering of good or services. The majority focused attention on the issue of bad faith registration.

While there are certainly cases that hold that registering a domain name with “reckless disregard” of the existence of a trademark “even if the registrant did not have actual knowledge of the mark,” citing Grisoft, s.r.o. v. Original Web Ventures Inc., D2006-1381 (WIPO March 5, 2007) (however, a strong dissent that puts this proposition in perspective), “this inference can only be drawn where it is shown that the mark was widely used when the Domain Name was registered.” However, “[w]here the mark was not widely used at the date of the registration, it cannot be inferred that the registrant’s intended use of a corresponding domain name would give rise to a serious risk of confusion or diversion of Internet users through such links, and hence that the registration was effected with a reckless disregard for this risk.”

The Complainant in eDreams offered no evidence from which a conclusion could be drawn that EDREAMS was any more than an acorn when the Respondent registered <>. “There is no evidence that the Complainant’s EDREAMS mark was sufficiently widely used when the Domain Name was registered in 2003, so that automatically generated links would relate to the field in which this mark was used and would divert Internet users to the Complainant’s competitors.”

One can see eDreams as a cautionary tale for complainants generally with a similar history. In order to prevail the trademark “would need to have a strong reputation at that date to outweigh the fact that the Domain Name is not identical to this mark and is identical to a term which is widely used [in the computer industry] to refer to a completely different product. Such evidence as there is, namely the web pages recorded in 2005 and exhibited by the Respondent, supports the view that the reputation of the Complainant’s mark was not strong enough to result in automatically generated links to the Complainant’s competitors when the Domain Name was registered.”

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