Ordinarily, a trademark must have been in existence before the registration of the domain name for a finding of bad faith registration, but this is not invariable and depends on factors other than timing. The issue is addressed in paragraph 3.1 of the WIPO Overview, which states:
Consensus view: Normally speaking, 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.
This is then qualified to account for those circumstances in which the respondent has taken unfair advantage of the complainant by anticipating accrual of its right:
However: In 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. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.
The WIPO Final Report at paragraph 23 identifies two types of “predatory and parasitical practices”. The consensus refers to the second type, registering domain names “simply to take unfair advantage of the reputation attached to those marks.” The fairness issue has been discussed in a number of recent decisions. It makes no difference that the complainant has no registered trademark or has an application pending at the commencement of the proceedings, as long as its right is incipient: “any rights that may arise from the complainant’s enterprises.”
In Body Accounting, Inc. v. Affinity Domains, Energy First, D2009-1419 (WIPO December 11, 2009) there was evidence of “connections between the two [parties] that pre-date the registration of the Domain Name.” “The fact that the complainant actually acquires local law trade mark rights in the future is important for the purposes of paragraph 4(a)(i) of the Policy. … However, whether or not it is apparent at the time of registration that they will necessarily come into existence is not important so far as the paragraph 4(a)(iii) assessment is concerned.” It is sufficient that the respondent “had knowledge that trademark rights would soon arise through use or registration of a mark by the Complainant,” General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, D2003-0845 (WIPO January 15, 2004).
Although not involved in Body Accounting because the complainant resides in a common law jurisdiction, this construction of the Policy allows a complainant in a non-common law jurisdiction to maintain a proceeding even though it does not have a registered trademark, citing St Andrews Links Ltd v Refresh Design, D2009-0601 (WIPO June 22, 2009): “So far as possible, the concept of bad faith should be interpreted in such a way that it has its own separate meaning under the Policy and is not dependent on the laws of the country in which the complainant or respondent operates.” This means in practice that a complainant can establish jurisdiction for an unregistered right regardless of its national residence.
Gerald M. Levine <udrpcommentaries.com>