(Late) trade marks do not always come up trumps in domain disputes

M. Corentin Benoit Thiercelin v. CyberDeal, Inc. (WIPO Case No. D2010-0941)

A recent domain name decision serves as a stark reminder that trade mark rights may not trump earlier rights to a domain name.

The complaint was heard before a Panel appointed by the World Intellectual Property Organisation’s (WIPO) Arbitration and Mediation Center and centred on a dispute over >virtualexpo.com< (the Domain) registered on 2 May 1996 by American company CyberDeal, Inc. (the Respondent).

The French Complainant, M. Corentin Benoit Thiercelin claimed to have run a company, named VIRTUALEXPO, and alleged that:

a) the Domain was identical to the Complainant’s registered trade marks;

b) the Respondent had no rights or legitimate interests in respect of the Domain;

c) the Domain was registered and used to prevent the Complainant acquiring the Domain; and

d) the Respondent’s non-use of the Domain was evidence of its bad faith.

In support of the complaint, the Complainant relied upon 3 VIRTUALEXPO trade mark registrations (the earliest of which was dated 14 December 2005), the domain names <virtual-expo.net> and <virtual-expo.com> (both of which were registered on 17 December 2003) and the registration of the VIRTUALEXPO company in August 2000.

Although non-use can constitute evidence of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) in the Telstra case the domain had been registered long after the trade mark in question had become well-known. In this matter, the Complainant’s trade marks were only registered well after registration of the Domain in May 1996.

Under the Uniform Domain-Name Dispute-Resolution Policy (UDRP), in order for a complaint to result in the transfer of a domain name, the onus falls to the Complainant to prove that:

(a) The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(b) The respondent has no rights or legitimate interests in respect of the domain name; and

(c) The domain name was registered and is being used in bad faith.

Paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions relevantly posed the question “Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?” and aptly answers “…[n]ormally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right”.

The relevant paragraph goes on to state that “…[i]n certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.”

Although the Panel held the Domain to be identical to the Complainant’s registered trade mark, in the absence of evidence proving that the Domain had been registered, or was being used, in bad faith the Panel denied the complaint and instead held that the complaint had been brought in bad faith, constituted an abuse of the administrative proceeding and should never have been launched given that there was no evidence before the Panel that supported any inference that the Respondent “should have been aware of the Complainant’s plans for his VIRTUALEXPO company/brand in May 1996”.

Take Away

Before launching a complaint for transfer of a domain name under the UDRP it is essential that trade mark owners clearly ascertain their relevant priority date as the mere existence of a trade mark registration will not “trump” an earlier registration of a domain name, unless it is clear that the respondent was clearly aware of the trade mark owner and its use of its (unregistered) mark and that the aim of the domain name registration was to take advantage of the confusion between the domain name and any potential rights the trade mark owner may hold.

More information

If you have any queries in relation to trade marks or domain names, please contact us.