Cyarx Technologies Ltd. v. Taylor Robison
WIPO: Case No. D2020-0595
Domain name: <siemplify.com>
The registration of a domain name by a Respondent before the Complainant has registered a trademark is not an immediate disqualifier, In all cases, for pursuing an action against a registrant. Some businesses may take time to get their paperwork filed, and it is still possible for a Panel to find bad faith registration if the Respondent takes advantage of this (see section 3.8.2 of the WIPO Overview 3.0). But these scenarios tend to be the exception rather than the rule.
In a recent decision involving <siemplify.com>, an Israeli company In SIEM (security information and event management) learned this the hard way when It sought to obtain the domain name, but its complaint was denied for this very reason.
Arguably the most challenging of the three requirements under Paragraph 4(a) of the UDRP Rules is the third, that being the need for the Complainant to demonstrate that the domain name “has been registered and is being used in bad faith.” Bad faith usage, such as redirecting to a competitor, is not enough to satisfy this requirement. For a case to succeed, the Complainant must prove that the domain name was registered in bad faith as well as used in bad faith. This requires the existence of rights, ideally complete trademark rights, at the time of the domain’s registration. Complaining that another has a domain name you want and is using it in bad faith is not satisfactory grounds for a complaint if they were there first!
In this case, the Respondent had registered the <siemplify.com> domain in 2011, 4 years prior to the establishment of the Complainant’s company and 6 years before It registered its SIEMPLIFY trademark with the United States Patent and Trademark Office. The Complainant provided evidence that shows It attempted to purchase the domain name in 2018, but to no avail. The Panel found for the Respondent with ease.
Furthermore, this evidence of negotiation would end up backfiring on the Complainant, who was hit with a finding of Reverse Domain Name Hijacking (RDNH). Per section 4.16 of the WIPO Overview 3.0, Panelists do not take kindly to “Plan B” approaches; that being when a frustrated buyer launches a complaint “after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis”. The Complainant’s evidence of prior negotiation, coupled with a generally weak case, suggested that this was one such example of a “Plan B” approach.
What this case teaches us is the importance of proving not just bad faith use, but bad faith registration. If someone beats you to the punch by registering your dream domain name before your company is off the ground, then bringing a case before an arbitrator under the UDRP is probably not a good idea!