Domain names and trademarks alike can be lost by termination or cancellation if registrations are not renewed (UDRP) or affirmed (Trademark Act) and once lost are retrievable, if at all, with effort. Under U.S. law, a trademark “shall be canceled” (15 U.S.C. 1058(a)) unless the registrant takes affirmative steps between the 5th and 6th years to maintain its currency by filing “an affidavit setting forth those goods or services recited in the registration on or in connection with which the mark is in use in commerce” (Id. 1058(b)(1)). For domain names, timing of renewal depends on the number of years for which they were registered and while registrars have notice procedures in place to forewarn of imminent termination lapses continue appearing on the UDRP dockets.
A lapse, however, an inadvertence to perform an administrative task, is not fatal if the trademark holder acts reasonably quickly to remedy the oversight. Zevex, Inc. v. Isaac Goldstein, FA1005001323005 (Nat. Arb. Forum June 15, 2010). On the other hand, a lengthy passage of time gives credence to the argument that the domain name has been abandoned. Radio Italia S.p.A. v. Mdnh Inc, Brendhan Hight, D2010-0329 (WIPO May 14, 2010). The Complainant owned <radioitalia.com> until 2000. A moderate passage of time can be offset by the complainant showing that the respondent is taking advantage of the trademark by populating the website with links to the complainant’s industry and its competitors.
Panelists have essentially rejected the view expressed in Corbis Corporation v. Zest, FA0107000098441 (Nat. Arb. Forum September 2, 2001) involving <digitalstock.com> that losers should be weepers and finders keepers (“There is an element of “finders keepers, losers weepers” in this decision. We believe that is as it should be.”) Nevertheless, the complainant should take care. When a domain name comes onto the market registrants have no way of knowing that it belonged to a trademark holder who inadvertently allowed it to lapse. Berenson & Company, Inc. v. Berenson Corp. c/o Babij, Terry, FA0909001283183 (Nat. Arb. Forum October 23, 2009). The Respondent was innocent of bad faith; it benefited from the fortuity of the Complainant’s lapse.
It may to the respondent appear unfair that it can be deprived of the domain name. The Panel noted in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum February 10, 2003) that while “it is understandable that Respondent considers it unfair that a domain name registrar may auction an expired domain name the use of which may be encumbered by trademark rights, such auction of expired names is [] consistent with the registration system adopted and implemented by ICANN.”
Inadvertently allowing a registration to expire “does not mean that any Registrant is permitted to swoop in and acquire the registration.” This was the circumstance in Zevex and recently in ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010). Both these Complainants had owned their respective domain names for a long period of time and acted quickly to redeem what they had lost. The Zevex Respondent registered the disputed domain name on April 1, 2010, one day after Complainant’s redemption period ended. “Zevex” has no meaning in the English language so the term could not be used in any dictionary sense. The Panel inferred bad faith registration from bad faith use in populating the website with links to the pharmaceutical industry and Complainant’s competitors.
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com