A recent case decided under the Uniform Domain Name Dispute Resolution Policy (UDRP) by a panel from the World Intellectual Property Organisation (WIPO) clearly underlines the fact that registration of a domain name must generally post-date the complainant’s trade mark rights or the complaint will be denied. This is because if a domain name is registered before the relevant trade mark, it is almost impossible to demonstrate that the respondent was aware of and was specifically targeting the complainant, thus evidencing the necessary bad faith for a complaint to succeed.  

Cases where complainants with later trade mark registrations have succeeded in obtaining a transfer of the domain name at issue usually involve the complainant being able to prove very strong unregistered rights that pre-date the domain name or exceptional circumstances such as an upcoming merger where confidential information has been leaked.  

Furthermore, the case in question demonstrates that complainants who file complaints against innocent respondents who registered their domain names a long time before the complainants' trade mark rights came into being risk a finding of Reverse Domain Name Hijacking being made against them (defined under the UDRP Rules as "using the Policy in bad faith to attempt to deprive a registered domainname holder of a domain name") and this will undoubtedly harm their reputation.  

On 9 June 2010, Mr Corentin Benoit Thiercelin (the Complainant), a French individual claiming to run a company named VIRTUALEXPO, submitted a complaint to WIPO with a view to obtaining the transfer of the domain name (the Domain Name) which had been registered by an American company, CyberDeal, Inc. (the Respondent), on 2 May 1996.  

The Complainant sent letters to the Respondent accusing the Respondent of infringement, alleging that the operation of the website at the Domain Name was causing damage (despite the fact that there was no evidence that the Domain Name had ever pointed towards an active website) and demanding transfer of the Domain Name and compensation for the damage caused. However no response was received. The Complainant therefore sent letters to the registrar of the Domain Name and to Internet Corporation for Assigned Names and Numbers (ICANN), complaining of the inaccuracy of the contact details on the registrar's WHOIS database and the consequential inability of the Complainant to make contact with the Respondent.  

Obtaining no response to his letters, the Complainant decided to file a UDRP complaint. Much to the dismay of the Complainant, in a decision dated 10 August 2010, the Panel denied the complaint and also found that the Complainant had engaged in Reverse Domain Name Hijacking.  

To achieve the transfer of a domain name under the UDRP, a complainant needs to establish all of the three following circumstances:  

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

(ii) The respondent has 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.  

The Complainant claimed that he had registered the domain names and in 2003 and that he had registered three trade marks incorporating the name VIRTUALEXPO. The earliest of the three was a Community Trade Mark registered in 2005. The Complainant further contended that the Domain Name was identical to his trade marks. The Respondent did not provide any response to the complaint.  

In the view of the Panel, the Domain Name was identical to the Complainant's registered trade marks since, for the purposes of assessing identity and confusing similarity, it is well-established that the domain suffix may be ignored. The date of the trade mark registration is not relevant either when assessing identicality / confusing similarity.  

The Complainant also alleged that the Respondent had no rights or legitimate interests with respect to the Domain Name but, in view of its findings concerning the Respondent’s lack of bad faith, the Panel considered it unnecessary to address the issue, it thus being irrelevant for the purposes of the decision.  

Turning to the third limb of the UDRP and the question of registration and use in bad faith, although he did not provide any evidence to suggest that the Domain Name had ever been put to active use, the Complainant asserted that the Domain Name had been registered and was being used to prevent the Complainant from acquiring the Domain Name. The Complainant further contended that the Respondent's non-use of the Domain Name was evidence of bad faith use.  

The Panel underlined that the fundamental question raised by this case was whether the Respondent had the Complainant and / or the Complainant's trade mark in mind at the time of registration of the Domain Name. The Panel agreed that nonuse may constitute evidence of bad faith in line with the landmark case Telstra Corporation Limited v. Nuclear Marshmallows (D2000-2003), which established that holding a domain name in a passive manner, that is to say without using it, could be viewed as bad faith use under certain circumstances. However, unlike in the present case, in the Telstra case the domain name had been registered long after the complainant's trade mark had acquired fame and the trade mark in question was very well-known.

In this case, the Domain Name was registered in 1996 while the Complainant set up his company VIRTUALEXPO in 2000, registered domain names including the name VIRTUALEXPO in 2003 and registered a trade mark in the name VIRTUALEXPO in 2005. In this respect, the Panel quoted the WIPO Overview of WIPO Panel Views on the following question: "can bad faith be found if the disputed domain name was registered before the trade mark was registered / common law trademark rights were acquired?"  

The consensus view on this question amongst WIPO Panels is that:  

"Normally 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.  

However: In 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."  

The Panel noted that there was no evidence inferring that the Respondent should have been aware of the Complainant's plans for his VIRTUALEXPO company / brand back in 1996. In the Panel's view, the Complainant's claim that the Domain Name was only registered in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name was "wild, unsupported and wholly misconceived". Nothing suggested that the operation of the Respondent's website was causing damage to the Complainant and indeed the Domain Name did not appear to be pointing anywhere.  

The Panel therefore concluded that there was nothing in the papers before it to support the Complainant's claim that the Domain Name had been registered and was being used in bad faith. As a result the complaint was denied.  

As far as the Panel was concerned, this was a complaint which should never have been submitted. The Panel also noted that the Complainant knew that the Domain Name was registered nearly ten years before the Complainant acquired his registered rights and no attempt was made to justify the disparity in dates. The Panel thus concluded that the Complainant had hoped that the Panel would simply miss the point.  

The Panel quoted paragraph 15(e) of the UDRP Rules providing that: "If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain hijacking or was brought primarily to harass the domain name holder, the panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding." The Panel therefore went on to find that the complaint was brought in bad faith and did constitute an abuse of the administrative proceeding.  

The decision is available at the following link: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2 010-0941.