Another panelist silently rejects the retroactive bad faith construction of the Policy which argues for disjoining the conjunctive requirements for bad faith under paragraph 4(a)(iii) of the Policy. “It is unfortunate, in the face of such bad faith use that the Panel has arrived at the decision that the complaint should be denied. However, the Panel must render its decision within the confines of the Policy, which clearly requires that the Disputed Domain Name must be registered and used in bad faith,” Jowissa Watch Ltd. v. Don Nichols, D2011-0086 (WIPO March 31, 2011). This does not necessarily end the dispute. “In certain circumstances, it may be more appropriate to seek recovery of a domain name via a trade mark infringement action,” Id.
The Complainant’s difficulty in Jowissa Watch is its signature to a distribution agreement with the Respondent, although whether or not it “authorised the use of the JOWISSA trade mark in connection with the Disputed Domain Name” is uncertain because the parties did not provide the Panel with a copy of it. Nevertheless, the existence of such an agreement, albeit terminated, creates a genuine issue that the Complainant acquiesced in the registration of the domain name and acquiescence necessarily negates bad faith registration. If the distribution agreement prohibited the Respondent from registering the disputed domain name it was an unfortunate oversight for Complainant’s counsel not to have offered it into evidence. The inference from a failure to offer evidence is that it supports the opposing party’s contention.
Based on the record, the Panel accepted only that “the Complainant has not currently authorised the Respondent to use the JOWISSA trade mark and that any connection that once existed between the Complainant and the Respondent by virtue of the distributorship has now ceased.” This simply means that the Complainant prevails on its prima facie case that the Respondent lacks rights or legitimate interests in the domain name –”[w]hile the Respondent arguably may have had a legitimate interest in the Disputed Domain Name at one time (as distributor of the Complainant’s watches), the Panel finds that any such legitimate interest ceased when the distributorship came to an end” – but it does not answer the question of bad faith registration which is an entirely separate requirement.
To prevail on a claim of abusive registration, the Complainant has to prove both registration and use in bad faith and the absence of one or the other is insufficient to satisfy the burden of proof. “The Panel finds that in the absence of any evidence to the contrary, that it can be implied that here the Complainant acquiesced to the Respondent’s registration of the Disputed Domain Name, and therefore the Disputed Domain Name was not registered in bad faith.” It is this conclusion that triggered the Panel’s dismay that she had to deny the Complainant’s claim for the domain name. Not only was the distribution agreement terminated but the Respondent both offered to sell the disputed domain name for a significant sum and is misrepresenting his status in that he has created “the impression that [he] is a U.S. operative of the trademark owner.”
There is no constraint on a foreign holder of a U.S. trademark to maintain an ACPA action against a domestic infringer or for that matter against a foreign infringer in an in rem action if the registry or registrar is resident in the United States.