Paragraph 4(c)(ii) of the Policy is written in the past tense, “have been commonly known by the domain name” (emphasis added). Although the Policy does not specify when respondent was known by the domain name the language suggests that it must have been from a time that preceded the registration of the domain name. In Omni Development, Inc. d/b/a The Omni Group v. Graffle, Inc., FA1104001385743 (Nat. Arb. Forum June 14, 2011) the respondent’s corporate name is the domain name, <graffle.com>, which is identical to the Complainant’s trademark. By happenstance the Respondent’s corporate name is the same as the trademark. This would seem to qualify for the defense.

The Whois directory is a first stop in determining the respondent’s rights or legitimate interests based on the “individual, business or organization” name declared in its registration of the disputed domain name. Cases too numerous to cite on this proposition. If the respondent’s name is different from the domain name then it cannot have been commonly known by it; if it is the same, the respondent is either genuine or deceiving. It is well settled that “[m]ere ownership of a domain name is not sufficient to show that a respondent automatically could claim protection under paragraph 4(c)(ii) of the Policy,” Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum January 13, 2003). The Policy is construed to “require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail,” RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001); Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (<shantiyogaworks.com>). The “consensus … is that Respondent must already have been known [by the disputed name] at the time of registration or acquisition of the domain name in issue,” Nobel Learning Communities, Inc. v. Chesterbrookacademy, D2005-0753 (WIPO September 20, 2005) [<chesterbrookacademy.com>].

Were a prior corporate name identical to the trademark a complete defense, it would be a backdoor to appropriating the complainant’s trademark. The rule is that the respondent must also show that the corporate name was selected in good faith without intent to take advantage of the trademark, which means coupling the 4(c)(ii) defense with evidence that the domain name is connected to a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. In Omni Development, the Respondent challenged on its going forward burden offered no evidence to support its claim to be developing a global raffle business. It alleged but failed to prove “demonstrable preparations to use” the domain name. Although lacking rights or legitimate interests in a domain name is not tantamount to bad faith it is a cumulative factor. The Complainant also offered evidence that the Respondent was a serial cybersquatter. The totality of circumstances favored the Complainant.

Omni Development is indistinguishable from the Neiman Marcus type of case, but distinguishable from Carlyle Group v. Carlyle Coutts Capital Corporation, D2008-1960 (WIPO February 19, 2009) (<carlyle-coutts.com> and <carlylecoutts.com>). In Carlyle Group the Panel faulted the Complainant for failing to offer any evidence that the Respondent was not what it claimed to be, a business entity duly formed in 2000 under the laws of Toronto with an associated company Carlyle Coutts Capital Corporation SA formed under the laws of Panama. Is this putting the burden of proof on the wrong party? No, because suspicion of an identical preexisting corporate name by itself is not evidence of bad faith. In Carlyle Group the Respondent (no evidence being offered to the contrary) was conducting a legitimate, present business under the corporate name. Failure to establish that a respondent lacks rights or legitimate interests in a domain name is conclusive against the complainant. If the respondent persuades the Panel that it is making a bona fide offering of goods or services its registration of the domain name could not by definition have been abusive.