WIPO Case No. D2019-2794
February 7th 2020
The Perils of proving bad faith and how they could have been avoided.
The need to decide whether there has been bad faith surrounding the registration and usage of a domain name (see paragraph 4(a)(iii) of the Rules) often raises a question of timing. Proving bad faith may be the most challenging element of a UDRP claim because the Complainant has to prove that the Respondent was or ought to have been aware of it or its trademark rights at the time the Respondent registered the domain name. Recently this issue arose in Agrosuper S.A. v. Joong Supachuli, when one of South America’s biggest meat producers failed to show that its business was or should have been known to the Respondent, particularly because its trademark “FAENADORA LO MIRANDA” was registered about one year after the domain name, <faenadoralo.com>, was registered.
The domain name hosted a website that, in effect, impersonated Agrosuper’s business. Typically, that would be sufficient evidence of bad faith but due to the timing issue it would be “only in exceptional cases” that the Complainant would still be able to prove bad faith. An exceptional case would include being able to rely on common law trademark rights by demonstrating public repute or fame. It is difficult to do so because evidence is often lacking, but this is one way to get around the issue of domain name registration preceding the trademark registration, which in this case was fatal to Agrosuper’s claim.
Ultimately a Complainant has to prove that the Respondent knew about its trademark interest at least as early as when it registered the domain name. It is possible that this was the case in Agrosuper v. Joong Supachuli but it remained too unclear because evidence of sales volumes, marketing efforts, and media recognition was not provided.
So the bottom line of the decision is that the Complainant failed because it had not discharged its burden of showing that the Respondent knew or should have known of the Complainant’s trademark. There was simply not enough evidence to show the reputation of the trademark when the Respondent, registered the disputed domain name.
Here are some more articles in Domain Times on the issue of timing and bad faith:
Domain Names Registered Before Trademark Rights Accrued Bad faith - is there a way around a trademark registered after domain name?
Rights to use generic words: Not so easy
On a separate issue, the panel in this case helpfully noted that the trademarked words and the words of the domain name were both generic terms and are not identical. Naturally this suggests that the Respondent would be free to use those words. However, because of the clear impersonation of the Complainant business amounting to an attempt to redirect web traffic, the Respondent was not using the words in their generic sense. In that light the Respondent cannot have a right or legitimate interest in the domain name. But as usual, if the Respondent had provided evidence to the contrary, it might have forced a finding the other way. It must, therefore, have been cold comfort for the Complainant to have succeed in showing the Respondent had no right or legitimate interest in the domain name and yet to have failed to prove registration and use of the domain name in bad faith. And for the same reason- evidence; adequate evidence in the former case and insufficient evidence in the latter.