Thursday, February 5, 2015

UDRP Logic PART II: Trademark Rights Do Not Magically Relate Back



By Zak Muscovitch.

Again turning to the insightful and compelling Riveron decision which I wrote about yesterday, you will be comforted to know that as far as the panelist in that case was concerned, magic doesn't work in UDRP proceedings. The panelist, Paul M. DeCicco, clearly and eloquently stated that, "While Complainant currently has trademark rights...such rights do not magically relate back to the time that Respondent first registered the domain name, a time well prior to Complainant’s first use of its mark".

The Panelist pointed out that, where a trademark right arose after the disputed domain name was registered, the facts "foreclose a finding of bad faith registration and use under [the UDRP]". In support of this position, the Panelist referred to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, wherein the WIPO Consensus View is set out:

"Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], 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."

The panelist, Paul M. DeCicco, went on to further make the point, as follows:

"As noted above, it is axiomatic that if a complainant lacks trademark rights at the time the respondent registered the disputed domain name, there can be no finding of bad faith registration. Numerous decisions support this very logical proposition."

The compelling logical reasoning submitted by the Panelist in the Riveron case is sometimes not shared by all UDRP panelists. Some Panelists, although a minority, subscribe to a notion of "retroactive bad faith", wherein a domain name can magically be registered in bad faith, when it was registered before the complainant's trademark was even a twinkle in its eye. Some of these panelists believe that merely renewing a domain name that was obviously registered in good faith (for example, before the trademark arose), can be magically treated as a "new registration" for the purposes of gauging bad faith registration and use.


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