Institutional Shareholder Services (“ISS”) filed two “ISS” trademarks with the United States Patent and Trademark Office on June 4 and 5, 2020 (nos. 88950188 and 88947625). ISS has initiated UDRP proceedings against the holder of the domain name, registered on May 16, 2020. This domain name appeared to be used for a phishing operation. However, the decision does not specify whether the said operation included the complainant’s identity and brand.

The peculiarity of this case lies in its chronology. In the presence of a domain name that predates the trademark, the proof of bad faith seems insurmountable. Indeed, how to prove that the trademark owner irrefutably knew the trademarks concerned on the day of the registration of the domain name?

Beforehand, it was necessary to prove the existence of a trademark. To achieve this, ISS relied on its common law trademark. The complainant has been using the sign “ISS” since 2001 and the domain name since 2010. These elements were sufficient to convince the panelist.

Proving a person’s bad faith necessarily and systematically involves a subjective analysis to answer the question: was the domain name holder aware of the complainant’s trademark? In this case, the panelist merely stated that the “Respondent had actual knowledge of Complainant’s rights in the ISS mark prior to registration of the <> domain name”, without indicating the reasons which led him to this conclusion. At the very least, one could have referred to Article 2(b) of the UDRP principles, according to which the registrant of a domain name ensures that the latter will not infringe third parties’ rights. Indeed, we can deduce a duty to search for prior trademarks from this contractual obligation. However, in the context of such a search, it seems reasonable to consider the characteristics of the prior trademarks, in particular, the degree of distinctiveness and/or notoriety. In this case, a search on prior trademarks would have revealed the existence of several hundred “ISS” trademarks, acronyms, weak trademarks, filed or registered in the United States, Europe, Japan, or elsewhere. Isn’t it reasonable to assume that the domain name holder did not necessarily have Institutional Shareholder Services in his sights?

As for the objective approach, the panelist considered that the offer to sell the domain name constituted an act of bad faith. This assertion may seem surprising because, in the presence of an offer to sell a domain name, it is rightly suggested to consider the trademark’s distinctive character (WIPO Jurisprudential Overview, para. 3.1.1). However, it is permitted to consider the “ISS” trademark as weak enough not to prevent a domain name registration. As for the phishing allegations, they lose weight in a UDRP proceeding if the spoofing is not demonstrated. The fact remains that the panel could alert the competent authorities so that they can take the necessary measures to eliminate the threat.

In conclusion, the reasons which led to the transfer of the domain name are debatable.