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Trademark Owner’s Right to Earlier Registered Domain Name

The Anticybersquatting Consumer Protection Act (ACPA) provides that “[a] person shall be liable in a civil action by an owner of a mark . . . if . . . the mark . . . is distinctive at the time of the registration of the domain name. . . .” This surely means that if the mark is not distinctive at the time of the registration of the domain name the domain name holder has a superior interest in it. Under the Uniform Domain Name Dispute Resolution Policy (UDRP) the owner of a mark has to prove that the domain name holder both registered and is using the domain name in bad faith. The consensus of panels is that a domain name registered prior to a complainant acquiring a mark cannot have been in bad faith because when the domain name was registered the complainant owned no rights to the mark.

There are two events in the life of a domain name that can be said to be critical for a holder, namely the date of the registration and the date of the renewal of registration. The consensus view is that the bad faith element relates to registration; that is, the registrant’s intention when it initially registered the domain name. The WIPO Overview, paragraph 3.7 is that “While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name.”

But there is a countervailing view that Paragraph 2 (“Your Representations”) applies to renewals as well as registration, and where the facts demonstrate bad faith use before and after renewal abusive registration should be found against the respondent. This view was first expressed in the Mummygold line of cases. Although M. Scott Donahey denied the complaint in City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, D2009-0643 (WIPO July 3, 2009) his analysis struck a chord with other panelists, namely that Paragraph 2 is applicable in considering bad faith under paragraph 4(b)(iv) of the Policy. There is more to say about Donahey’s view and the several panelists who have signed onto it but it will have to be left for another occasion.

The consensus reading of the UDRP that Donahey challenged was also picked up by Richard G. Lyon in Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010). Concededly, <> had not been registered in bad faith but after complainant acquired its trademark respondent began taking advantage of it before renewal and continued its conduct after renewal. The Panel found that “[i]f Respondent’s paragraph 2 representation and warranty were given in October 2009 it would have been knowingly false.” Lyon’s held that the present conduct was “textbook cybersquatting” and held that “Respondent’s 2009 renewal of the disputed domain name to be the date on which to measure whether the disputed domain name was registered and used in bad faith.”

Other panelists have concurred with this reading of the UDRP, including David H. Bernstein in a split 3-member Panel in Big 5 Corp. v. / Roy Fang, FA1308001513704 (Nat. Arb. Forum October 11, 2013): “[A] domain name not only must be registered as per the requirements of Paragraph 2 of the Policy, but also its renewals must comply with the same standards. Thus, the requirements of the Policy can be studied not only regarding a domain name registration but also when it is renewed.” The Hon Neil A. Brown QC found Eastman Sporto “persuasive” in Saratoga Publishing LLC v. Rich Richbart/Saratoga Online Inc., FA1503001608704 (Forum April 27, 2015), but he explained why in this particular case the Sporto analysis did not apply:

In Eastman, several of the features of the conduct of the domain name holder were that it intentionally changed its use of the disputed domain name and that the new use was “textbook cybersquatting”. In the present case, Respondent had not made any change to its use of the domain name after the registration of the trademark and did not have a website with links to competitors of Complainant; it simply registered a domain name consisting of two common words and then continued to renew the registration. In those circumstances the Panel’s opinion is that it cannot regard the renewal as a registration and therefore it cannot regard the renewal as the registration of a domain name in bad faith.

Two more cases have recently been added to renewal argument. The first case is VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) decided by Bruce Meyerson. This is a disturbing case. The <> domain name was registered on June 19, 1995 and renewed on June 11, 2010. Respondent did not appear. Meyerson used Rule 12 to assist the Complainant:

At the request of the Panel pursuant to Rule 12, Complainant provided an Additional Submission contending that the UDRP analysis should occur not when Respondent originally registered the domain name but when Respondent renewed the domain name in June 2010.

Myerson’s decision established that he too believes renewal can be found to be bad faith, although here the bad faith amounted to Respondent offering to sell the domain name which was being passively held. Michael Berkens of TheDomains found this troubling, and for good reason: the decision and the use of Rule 12 to assist any party is irresponsible.

The second case is Playworld Systems, Inc. v. Domain Manager / Giant Distributors Inc., FA1504001613470 (Forum May 21, 2015), decided by Francine Siew Ling Tan. She held that “Respondent has the said obligations with each renewal or with each request to the Registrar to maintain the disputed domain name.” What is disturbing about the case is that Respondent registered the domain name 18 years ago, although it appears before renewal to have wandered into Sporto territory, which Respondent did not in Saratoga Publishing. The comment from Domain Name News was “I’m dumfounded.” Subscribing to the Paragraph 2 requirement is not enough to justify the decision.

The interesting question here is whether we are seeing the emergence of a new consensus on the applicability of Paragraph 2. If that is the case, it has to be more rigorous, along the lines set out by Lyon and Brown rather than Myerson.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement here

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