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Unlikelihood of Recovering Long Lapsed Domain Name

Registration of a domain name inadvertently allowed to lapse is more likely to be recaptured if the complainant has acted quickly, but not otherwise.  A lengthy delay supports the conclusion that the loss was intentional. Radio Italia S.p.A. v. Mdnh Inc, Brendhan Hight, D2010-0329 (WIPO May 14, 2010). The Complainant owned <> until 2000. The domain name was acquired by a company that was itself acquired in 2005 by the parent corporation of the current Respondent. The business model of these acquiring companies is to “buy[] up expired domain names that have strong incoming links and traffic, and then sign[] up those domains as search affiliates.”

“Strong incoming links and traffic” suggests that the domain name may have been associated with a trademark. There is developing a body of law that holds that high volume registrants are held to a higher standard of investigation. It is particularly applicable to domain names identical or confusingly similar to trademarks well-known in the marketplace; less applicable to trademarks composed of generic terms and descriptive phases that can be exploited for their dictionary meanings or cultural associations. “Radio Italia” is not in the class of arbitrary or fanciful trademarks, but also it is “not totally descriptive and devoid of distinctive character.”

The earliest expression of this standard is set forth in Red Nacional De Los Ferrocarriles Espanoles v Ox90, D2001-0981 (WIPO November 21, 2001) (<>). The Complainant is responsible for the commercial exploitation of much (if not all) of the Spanish railway system, which explained its traffic volume and should have triggered investigation. The Panel held that “where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, [that conduct] constitutes registration of that domain name in bad faith.”

In Red Nacional De Los Ferrocarriles Espanoles, however, the Complainant acted quickly to recover the domain name. This was also true of the Complainant in ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010) and also of the Complainant in Intagent LLC v. Dominor LLC, D2008-1878 (WIPO January 29, 2009) (“While it is understandable that Respondent considers it unfair that a domain name registrar may auction an expired domain name the use of which may be encumbered by trademark rights, such auction of expired names is consistent with the registration system adopted and implemented by ICANN. It is the responsibility of domain name bidders and registrants to determine whether and how they may be entitled to use the domain names.”)

In contrast, Radio Italia acted after 9 years only when it was unsuccessful in purchasing the domain name from the Respondent. It offered no explanation for its loss of the domain name for “reasons which the Complainant describes as a mistake.” Elapsed time is more likely to confirm abandonment of the domain name. Even if at the time of the Respondent’s acquisition “it had turned its mind specifically to this domain name … it may well have concluded the Complainant was not interested in the disputed domain name any longer.” As far as the Respondent’s use of the domain name, “it seems equally plausible … that it may have been registered for its descriptive significance as for its trademark significance.”

Levine Samuel, LLP <>
Gerald M. Levine <>

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