We get into law for different reasons — a family practice needing an heir, not getting into another course, or in my case reading too many Erle Stanley Gardners at some point in law school. The law teaches you to represent the guilty and innocent alike, but knowing you are on the right side of a fight is satisfying. I have written before about the five defences domain squatters use. This is a case where the squatter had done nothing wrong at all.
The facts
Company A, my client, operated in a particular line of business. Planning to split into two related entities, it bought around five domains made up of varying combinations of descriptive words for the two lines of work. A business decision then shelved the plan, and the domains with it; the company continued with its existing website.
Two years after one of those domains was registered, a new company — Company B — was formed by someone else, incorporating the full text of that domain in its name. Company B used the trademark corresponding to the domain, and registered that trademark a good six years after the domain had been registered.
Years passed. Company B built a substantial reputation, operating on a country-level domain — a .in, .ca or .au.
Company B then decided it needed the .com. It sent Company A a cease and desist notice asserting that the domain registration infringed its rights and demanding a transfer. Receiving no response, it filed a UDRP complaint.
The three grounds
Drafting the response was great fun. Under the UDRP, a panel must find all three of the following:
- the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- the registrant has no rights or legitimate interests in the domain name; and
- the registrant registered and is using the domain name in bad faith.
The arbitrator found for Company A. Though the domain was identical, Company A had registered it in good faith, well before Company B even existed — which defeated the second and third grounds.
Why the timing is decisive
This is a settled point, and it is worth understanding precisely. WIPO’s consensus view on the third element puts it this way: although a trademark can found a complaint under the first element irrespective of its date, where a domain name is registered before the complainant’s relied-upon trademark right was first established — whether registered or unregistered — the registration cannot have been in bad faith, because the registrant could not have contemplated a right that did not yet exist.
That is not a technicality. Bad faith requires targeting someone, and you cannot target a party who has not yet appeared. The first element may be satisfied by a later-acquired mark; the third cannot be.
Reverse domain name hijacking
The UDRP goes further. Paragraph 15(e) authorises a panel to declare, where it believes a complaint was brought in bad faith in an attempt to harass the domain owner, that the case amounts to reverse domain name hijacking (RDNH) — an abuse of the administrative proceeding.
The panel here found for my client but did not go so far as an RDNH finding. Such declarations are made sparingly, though they are made: there is an entire site cataloguing the cases where RDNH has been held.
That reticence is worth knowing on both sides. A respondent should not expect an RDNH finding merely from winning; a complainant should not assume a weak complaint is cost-free.
The point
If you registered a domain because a name came into your head, and years later find that somebody has built goodwill and registered a trademark incorporating it — and then sends you a legal notice — all may not be lost.
You may simply be an innocent domain squatter.
The takeaways
- All three UDRP grounds must be met — failing one defeats the complaint.
- A domain registered before the mark existed cannot be in bad faith.
- Keep evidence of when and why you registered — good faith at registration is the defence.
- RDNH findings exist but are made sparingly.
Frequently asked questions
Can I lose a domain I registered before the complainant’s trademark existed? Generally no — bad faith registration cannot be established against a right that did not exist when you registered.
What must a UDRP complainant prove? All three grounds: confusing similarity to a mark in which it has rights, no rights or legitimate interests in the respondent, and registration and use in bad faith.
What is reverse domain name hijacking? A finding that a complaint was brought in bad faith to harass the domain owner, amounting to abuse of the administrative proceeding under paragraph 15(e).
What evidence helps defend a UDRP complaint? Records showing when the domain was registered and why — good faith at the time of registration is what defeats the third ground.