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Senior Domain Name versus Junior Trademark


By
Smith & Hopen PA

The Uniform Domain Name Dispute Resolution Policy (UDRP) was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) to set forth the rules regarding domain name disputes. The UDRP has been accepted by all ICANN-accredited registrars and is now incorporated into the Registrar Agreements of said accredited registrars.

The UDRP is a tool that is often employed by trademark owners to combat cybersquatters—those who register and use domain names incorporating trademarks owned by others in a bad faith attempt to profit off of the trademark owners. If a trademark owner encounters a cybersquatter, the trademark owner may file a UDRP complaint in an attempt to have the domain name registration transferred or canceled.

To prevail in a UDRP proceeding, the trademark owner (complainant) must prove:

(i) “[the] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) [the domain name holder] ha[s] no rights or legitimate interests in respect of the domain name; and

(iii) [the] domain name has been registered and is being used in bad faith.”

See Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a).

With particular reference to element Paragraph 4(a)(iii), let’s consider a fact pattern in which the domain name holder (respondent) registered a domain name prior to the existence of any rights in a trademark and the domain name happens to incorporate said trademark. Should a senior domain name registration trump junior trademark rights?

Paragraph 4(a)(iii) of the UDRP explicitly requires that the trademark owner proves the domain name was registered in bad faith. According to WIPO Overview 2.0, “Generally speaking, . . . when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.” See WIPO Overview 2.0 Paragraph 3.1. The Overview clarifies that in certain situations where trademark rights have yet to be established, but complainant was aware that such rights may actualize, complainant’s registration of a domain name based on that predicted actualization can amount to a bad faith registration. See id.

Now let’s further complicate the fact pattern. Should the senior domain name registration trump a junior trademark if the owner of the domain name registered the domain name in good faith, but has started using the domain name in bad faith? Ultimately, the inquiry is whether the trademark owner must prove a bad faith registration to prevail. The plain reading of the language of Paragraph 4(a)(iii)—“[the] domain name has been registered and is being used in bad faith”—indicates that the complainant indeed must prove that the domain name registration was in bad faith. The language clearly requires that the complainant proves that the domain name was both registered AND used in bad faith.

Regardless of the literal reading of the rule, “a small number of panels have begun to consider the effect of the requirement of Paragraph 2 of the UDRP, which states: ‘By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.’” See id. Some Panels have used this warranty as a means for retroactively establishing that the initial registration occurred in bad faith. In addition, a minority of panels have used the warranty in Paragraph 2 to find that each renewal date should be considered a “registration” under Paragraph 4(a)(iii). In other words, even if the original registration occurred in good faith, each subsequent renewal must also occur in good faith.

As the World Intellectual Property Organization succinctly concludes, “This is a developing area of UDRP jurisprudence.” Id. While the plain reading of the rules suggests that a senior domain name registrant trumps a junior trademark, some UDRP jurisprudence indicates that a junior trademark can trump a senior domain name under certain circumstances.




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