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Priority in the Use of a Term Later Claimed as a Trademark

A holder’s right accrues when it acquires its trademark. It is a going forward right; not one that reaches back, which means that earlier registered domain names have priority in the use of the term. If the trademark was not in existence when the respondent acquired the disputed domain name it could not be charged with abusive registration. By virtue of the complainant holding a trademark it has standing to maintain a proceeding but no actionable claim. In such a circumstance, one of the questions is whether the complainant has overreached in commencing the UDRP proceedings and be exposed to a ruling of reverse domain name hijacking. The answer is “yes” in Webpass, Inc. v. Paul Breitenbach, D2010-1796 (WIPO December 2, 2010) (“The Complainant knew when it filed the Complaint that the registration of the disputed domain name preceded by several years any rights that the Complainant may have acquired in the mark WEB PASS.”). And, “no” in Dynamis, Inc. v. BB & TT, FA1012001364095 (Nat. Arb. Forum January 26, 2011).

There is a penumbral line in reverse domain name hijacking. In denying the request for a ruling against the Complainant the Panel in Dynamis explains “[i]n the first place … [the] Complainant does have rights in the name DYNAMIS.” But, so did the Complainant in Webpass! The focus should not be on what right the complainant has in the present, but on what it has done in the light of its knowledge of the respondent’s right. It clearly cannot be that simply having a trademark is sufficient to protect the complainant from an adverse ruling. The second explanation by the Panel in Dynamis is particularly on point. “Secondly, it is not clear from the record what information about Respondent’s use of the Domain Name was reasonably available to Complainant prior to filing its Complaint.”

If there is a standard of proof for finding of reverse domain name hijacking it is not applied consistently. RDNH is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule 15(e) fills in the blanks by authorizing the Panel “to declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding … [i]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder.”

RDNH by definition is intensely fact driven and decided on a case-by-case basis. The conduct that draws the sanction is of two types, either “an attempt at Reverse Domain Name Hijacking” (as that term is defined in Rule 1) or commencing a proceeding “primarily to harass the domain-name holder.” There are two standards: “malice aforethought” [Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000)] and “utterly clear” [Great American Insurance Company v. Ron Hamilton, FA109753 (Nat. Arb. Forum October 14, 2002)].

The “malice aforethought” standard demands proof positive from the respondent of complainant’s abusive intent [Mess Enterprises v. Scott Enterprises, Ltd., D2004-0964 (WIPO January 25, 2005) (“Respondent registered the domain name … in spite of [its] knowledge, then proceeded to intentionally secure a trademark registration with an express purpose of fraudulently invoking the Policy as a means to wrest the disputed domain name from the Respondent.”] In the case of Dynamis, the Panel gave the Complainant the benefit of doubt, thereby indicating that it is in the “malice aforethought” camp, meaning that the Respondent’s evidence was insufficient.

The “utterly clear” standard returns the burden to the complainant to rebut an allegation of abusive intent. The Complainant in Altametrics, Inc. v. Ryan Sveinsvoll, FA1008001343628 (Nat. Arb. Forum November 11, 2010) argued and the Panel concurred that it is “unreasonable to expect Complainant, who originally filed this proceeding against a ‘Domains by Proxy’ undisclosed registrant, to know the myriad individual and corporate identities he maintains.” In contrast, and equally “utterly clear” the Complainant in Webpass offered none of the extenuating cirmsances proffered in Altametrics.

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