“When a domain name is registered before a trademark right is established, the registration of the domain name was not [indeed, could not have been] 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. Only “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.”

Passive holding of a prior registered domain name is not a contingency that transforms good faith to bad. Yet, the Panel in GS Enterprises LLC v. Thierry Ehrmann, FA1005001324481 (Nat. Arb. Forum August 5, 2010) appears to suggest that bad faith could be found for passive holding a domain name registered prior to the Complainant’s acquisition of a trademark. “The Panel finds that Respondent’s failure to make active use of the disputed domain may indicate bad faith registration and use.” Further, “[i]n this case, the Panel finds it troubling that Respondent apparently has not made substantial use of the domain name in any way other than to post a single page of apparent art work, for over 13 years…. However, the Panel is also mindful of the high burden required for an actual showing of bad faith for non-use alone.”

The Panel’s statements are not simply a misreading of the law they are nonsensical because (facts not supporting targeting) no inference of bad faith can be drawn from passive holding of a prior registered domain name that remains in the hands of the original registrant. Why in light of the well settled law the Panel found the Respondent’s conduct “troubling” is, well, troubling. The “high burden” requirement is applicable to registrations of domain names contemporaneous with or newer than the trademark. To call a post-acquired trademark holder’s burden “high” in proving bad faith leaves the impression that the burden can be satisfied. While a complainant whose trademark right post dates the registration of the domain name has standing to maintain the proceeding it has no actionable claim to the disputed domain name.

Where the complainant’s trademark preexists the domain name it must demonstrate that the respondent had knowledge of its trademark and intended to target it for commercial gain. See Facebook, Inc. v. Amjad Abbas, DME2010-0005 (WIPO July 13, 2010) discussed in August 6 Note. But, the “high burden” has no relevance to a prior registered domain name except under very limited circumstances. This could not have been made clearer in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) which the GS Enterprises Panel invokes as authority. The Telstra Respondent registered a domain name identical to the Complainant’s trademark which “ha[d] a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries.” Therefore, to cite Telstra in analyzing a case in which the respondent is holding a domain name registered years prior to the trademark is to miss the point entirely.

Whether the Respondent in GS Enterprises took “active steps to conceal [his] true identity, by operating under a name that is not a registered business name” (which, incidentally, was not the fact), is irrelevant even if he had. The Consensus principle is not contingent even if the Panel were unable for lack of imagination “to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.”

Passive holding without proof of demonstrable preparations to use the domain name may support a finding of lack of legitimate interest in a technical sense, meaning that the respondent cannot prove a defense under paragraph 4(c)(i) of the Policy, but if the domain name is registered in good faith the respondent must then have an unforfeitable “right”. And, if a respondent has an unforfeitable right he cannot be said to have registered the domain name in bad faith. There would be a totally different result if the current respondent were a transferee of the domain name. BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, D2008-0882 (WIPO August 21, 2008), to be discussed tomorrow in light of a district court decision denying summary judgment in an ACPA action entitled Ricks v. BMEzine.com, LLC., 2:08-cv-01174 (D.Nevada July 26, 2010).

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