Bad faith - is there a way around a trademark registered after domain name? Confusingly similar -...
WIPO Case No. D2018-0947
9 July 2018
The Complainant had a series of trademarks, some of which were based around BPER, which stood for the Complainant’s full name BANCA POPOLARE DELL'EMILIA ROMAGNA. Its first registration for BPER alone was an Italian Trademark filed on August 26, 2014.
The disputed domain name, <bper.com>, was registered on February 20, 2000, i.e. before the trademark. In January 2017, the disputed domain name began resolving to a website in French which appears to be about "water" and water recycling in urban environments.
The Complainant initiated negotiations to buy the domain name but they were unsuccessful.
PRELIMINARY QUESTION - CAN THERE BE CONFUSING SIMILARITY WITH ONLY PART OF A TRADEMARK?
We will come to the essential issue presently. But an interesting issue occurred early in the case where the Panel (3 person and unanimous) had to decide if the domain name was confusingly similar to any of the Complainant’s trademarks that did not consist exclusively of the letters BPER. Those letters were present, but could the Panel say that the domain name, which was <bper.com>, was confusingly similar to that expression when it was just included in some of the trademarks and not the sole content of them. The Panel said yes, it could and it did, declaring that the domain name could be and was confusingly similar to trademarks like BPERCARD, as the BPER part was a “plainly visible and recognizable” part of the trademark and therefore a domain name could be found to be confusingly similar to part only of the trademark. (There were other trademarks consisting solely of BPER and of course the domain name was identical to them. But they would not have enabled the Complainant to succeed on bad faith registration).
The problem in this case was that the Complainant’s earliest registration for BPER alone was on August 26, 2014. But the disputed domain name, <bper.com>, was registered before that and on February 20, 2000. Accordingly, could you say the domain name had been registered in bad faith when at the time of its registration the trademark had not yet been registered? The Complainant said, yes, you could say that because registering the domain name, in dot com, was registering it in “a natural geographical area of expansion of Complainant's growing business", and to do that must have been motivated by bad faith. Also, the domain name registration came shortly after the Complainant had itself registered <bper.it>.
But none of the evidence of the Complainant showed that at the time the domain name was registered the Respondent knew of or could be inferred to have known of the Complainant and its trademark. There was no evidence of the size or geographic extent of the Complainant's operations back in January / February 2000 which might show whether the Respondent knew of it or not. Nor was there evidence that the Respondent had ever sought to take advantage of the Complainant’s trademark.
More importantly, the evidence that the Complainant had in fact been using BPER when the domain name was being registered, which showed the Respondent was influenced by knowing the name, was not up to scratch. There were documents showing the use of the name, it was true, but they were “current or recent documents, not documents objectively demonstrating actual use (of the name) dating from the 1990s”.
The Panel said that the evidence had to show that BPER was in use before the domain name was registered, but it did not show that. Nor was there evidence to enable an inference to be drawn that Complainant was sufficiently well-known by BPER in February 2000, or that Respondent knew that the Complainant was using BPER at that time.
There was also no evidence that “the Respondent ever used the disputed domain name to take advantage of the significance of the acronym as the Complainant's trademark.”
The interesting point about the case is that the Panel proceeded on the assumption that although the domain name preceded the trademark, the Complainant could still show bad faith registration if it could show the use of the trademark had been prominent and the Respondent probably knew of it. Trouble was, the evidence was not there.
You might say this is another and significant decision showing in effect that the party with the evidence will win, but that any party who cannot present the necessary evidence will probably lose. Which it did, in this case.