For a complainant to succeed in recapturing a lapsed domain name it must both anticipate and overcome respondent’s rebuttal that it has rights or legitimate interests in the domain name. To fail on the prima facie case is to fail utterly because failure ends the case. Geographic proximity may make a difference in the assessment as does the relative strength or weakness of the trademark, but these factors are not alone sufficient against a respondent’s persuasive explanation for choosing the lapsed domain name. This is true even where parties presently compete if there are intervening circumstances favoring respondent. An example of complainant’s challenge, how difficult it can be, is illustrated in PFIP, LLC v. Blast Fitness Group, LLC / Thomas Moran, FA1204001440897 (Nat. Arb. Forum June 3, 2012) (<blastfitness.com>). Not only had Complainant or its predecessor allowed the domain name to lapse, but it had also failed to renew its trademark registration for BLAST FITNESS. A double abandonment. The record shows that
Complainant’s predecessor operated fitness centers under … BLAST FITNESS and held a trademark registration for the mark. It transferred its interest to Complainant. Complainant ceased to operate as BLAST FITNESS and began operating as Planet Fitness. The trademark was cancelled. A third party registered the disputed domain name. Respondent purchased the domain name and began operating as BLAST FITNESS. After Respondent purchased the domain name and began use, Complainant’s predecessor transferred its interests in BLAST FITNESS to Complainant. Complainant then registered BLAST FITNESS with the USPTO.
To overcome proof of abandonment there must be some proof that it was not intentional. Letting a trademark lapse is correctable, but a double abandonment of trademark and business name is only correctable in part. “Although complainant had previously registered the Domain Name … <midlandheart.co.uk>, it had allowed these registrations to lapse, and there is no evidence that respondent knew that complainant intended to re-register them.” Midland Heart Limited v. Uton Black, D2009-0076 (WIPO March 30, 2009). Respondent in PFIP had no reason to believe that Complainant would reassert its former business name.
Where a respondent registers a domain name and establishes a business competitive with complainant’s on proof that the complainant both abandoned the trademark and changed its business name it successfully establishes a right and legitimate interest under paragraph 4(c)(i) of the Policy. In such a case complainant is in a position no different from a party who acquires a trademark subsequent to the registration of the same term as a domain name. Reestablishment of an abandoned trademark gives a trademark owner no right of primacy to the corresponding domain name.
It is useful to compare the PFIP facts with the record in another case that held for complainant. In AgreeYa Solutions, Inc. v. Domain Privacy Group, FA1301001479037 (Nat. Arb. Forum February 18, 2013) Respondent registered <agreeya.com> within days of its lapse. There was no abandonment of the trademark, and AGREEYA is relatively strong. Complainant’s proof that Respondent lacked rights or legitimate interests was of two kinds. First, Respondents began offering hyperlinks to other businesses’ websites and advertising services similar to or in competition with Complainant’s offered services of staffing solutions and software solutions. Second,
Complainant also asserts that its prior ownership of the disputed domain name evidences Respondent’s lack of rights and legitimate interests. Prior panels have held that a respondent’s registration of a domain name previously held by a complainant indicates a lack of rights and legitimate interests. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name.”). Based on the similar timing of Respondent’s registration of the disputed domain name shortly after the lapse of Complainant’s prior registration, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
In contrast to PFIP Respondent’s legitimacy in AgreeYa was mortally undercut by its conduct: “Within several days after Respondent’s purchase, Respondent entered into negotiations with Complainant for the sale of the domain name, for an amount between $300,000 and $500,000.” The offer violated paragraph 4(b)(i) of the Policy and is conclusive of abusive registration of the domain name.