Where two parties in the same geographic area offer the same range of goods to the general public it might appear that in registering a domain name identical to the complainant’s trademark the Respondent had an impure motive. What if the domain name was registered before the complainant established its business? Although the respondent had knowledge of the complainant’s business plans? But, there was no proof that the general public associated the trademark as the source of goods from the complainant? The Consensus is that “when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right,” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1. The Overview continues, however, with an exception, that “[i]n certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”

In Paragon Micro, Inc. v. Julian Pretto, D2010-0721 (WIPO July 1, 2010) the “Complainant states that it was incorporated in 2003 and began using its mark in 2006. Yet, the <paragonmicro.com> domain name was apparently registered in 2001, which would have been some time before Complainant was formed.” Generally, the exception has been applied in cases involving well known entities either merging or acquiring other entities, opening resorts or hotels before obtaining trademark rights or announcing a new corporate name. A recent example was The Old Course Limited v. Patrick Woods, D2010-0682 (WIPO June 6, 2010).

Paragon Micro, however, illustrates the difficulty in applying the exception and the heavy burden the complainant must satisfy. The Respondent in Paragon Mico is holding the domain name inactive, thus it “cannot presently be said that it is using the disputed domain name to attract visitors for commercial gain.” But, argues the Complainant “the Respondent could ‘at any time’ begin using the disputed domain name in a manner that would disrupt its business and cause confusion as to the source of the parties’ respective goods and services.” This fails because bad faith (registration and use) cannot rest on the possibility that the respondent will activate the domain name in the future to disrupt the complainant’s business or confuse the purchasing public.

If the Respondent opportunistically anticipated the Complainant’s trademark, it is not proved by asserting as a fact, speculation. “Evidence of such an exception has not been provided here; indeed, the Complaint nowhere even acknowledges that the registration predates Complainant’s trademark rights.” The record apparently contains one piece of information unexploited by the Complainant (unless it is a typographical error) consisting of a copyright notice on its own website page that reads “1995-2010.” If this notice accurately reflected the Complainant’s length in business it failed to “provide any other evidence regarding length of use and provides no information concerning sales, nature and extent of advertising, consumer surveys, or media recognition that would establish rights in a mark that is not registered.”

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