The comparison is often vital to the issue of “bad faith,” the third of the UDRP’s three-part test. That element requires a trademark owner to convince the panel that the disputed domain name “has been registered and is being used in bad faith.”
In general, UDRP panels require that the complainant’s trademark rights pre-date the respondent’s acquisition of the domain name. Otherwise, they reason, how could a respondent have acted in bad faith if it registered a domain name before the relevant trademark rights even existed?
This general rule is summarized in the WIPO Overview:
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.
This perspective is nearly universally accepted (though the issue of “when a domain name is registered by the respondent” is not always clear, such as when the “creation date” in a domain name’s whois record is not updated despite transfer of the domain name to a new registrant on a later date).
Still, two recent decisions show that some complainants still ignore, or at least unsuccessfully attempt to argue around, this UDRP requirement.
In a dispute over the domain name <7daysmagic.com>, the complainant apparently relied on a U.S. trademark registration claiming a date of first use of June 1, 2015 — more than five years after the disputed domain name had been created on April 23, 2010. As a result, the panel did not find bad faith, allowing the respondent to keep the domain name.
The panel concluded:
The Complaint fails on the evidence to show that the disputed domain name was registered in bad faith. Registration of the domain name predates both the filing date and date of first use in commerce of the trademark by many years. The Complaint does not provide any basis for rights that might predate the registration date of the domain name. The Panel finds no evidence that Respondent targeted the trademark at the time of registration of the domain name. Complainant bears the burden of proof and the Panel finds that the disputed domain name was not registered in bad faith. Accordingly, the Panel finds that Complainant has failed to establish the third element of the Policy.
A different case, involving the domain name <reformation.com>, was more complicated but reached the same conclusion. There, the domain name was registered on May 31, 1996, while the cited trademark registrations claimed a date of first use of December 11, 2008. Despite this, the complainant in that case apparently tried to argue that the dates alone should not determine bad faith.
The complainant in the <reformation.com> case argued that bad faith existed because the website associated with the disputed domain name had “been used to spread malware” and because the respondent used “false registrant information.” The panel disagreed that these factors alone could establish bad faith and instead focused on the respective dates:
The UDRP is fundamentally concerned with cases of cybersquatting in which domain names have been registered and used in bad faith, interfering with, harming, or otherwise taking unfair advantage of the rights of trademark owners. Paragraph 4(b) of the Policy provides four circumstances that, if found by the Panel to be present, are considered evidence of the registration and use of a domain name in bad faith. While this list is intended to be illustrative and not exclusive, all of the examples pertain to circumstances where the rights of a trademark owner are implicated and potentially adversely affected….
In sum, there is no evidence in this case to show that the registration and use of the Domain Name has had anything to do with Complainant and its REFORMATION trademark (or the mark of any third party).
Interestingly, in both the <7daysmagic.com> decision and the <reformation.com> decision, the alleged cybersquatters prevailed even though neither one of them submitted a response. (This is possible because, as I have previously written, there is no “default judgment” in UDRP proceedings.)
While the cases had much in common, they differed significantly in their legal representatives: The complainant’s counsel in the <7daysmagic.com> is an attorney who reportedly had just “voluntarily given up the ability to provide U.S. trademark-related legal services for a minimum of five (5) years”; while the law firm in the <reformation.com> case describes itself as “one of America’s largest Intellectual Property firms.”
These cases show that, regardless of the level of legal representation, and even in the absence of a response, UDRP panels hold strongly to the rule that bad faith requires a complainant to have trademark rights that pre-date the respondent’s acquisition of the disputed domain name.