Bad Faith Registration? Domain Name Preceded Trademark

There are several cases where a Complainant has failed to show bad faith registration because the domain name at issue was registered before the Complainant’s trademark was registered or, in some case, before the Complainant came into existence as a company.

Another such case has now been decided.

MetaQuotes Software Corp. v. Name Administration Inc. (BVI)

WIPO Case No. D2012-1475

“The analysis of the evidence in the case file leads the Panel to the conclusion that the Complainant has not established that in the period 2002-2003 the recognition by the public of the Complainant and of its METATRADER trademark was such that would make it likely that the Respondent was, or should have been, aware of the existence of the Complainant at that time. The situation now may be different, but this is not what is relevant here. At the time when the Respondent registered the disputed domain name, the Complainant had neither applied for the METATRADER trademark nor made a copyright registration for its MetaTrader software platform in the Russian Federation. Therefore, and as summarized in paragraph 3.1 of the WIPO Overview 2.0, the Panel finds that the registration of the disputed domain name could not have been in bad faith because the Respondent could not have contemplated the Complainant’s then non-existent rights. On this basis the Panel also finds that there is nothing about the circumstances of this case to suggest that the Respondent was willfully blind to the Complainant’s rights when acquiring the disputed domain name. In these circumstances, the engagement of the Respondent in negotiations initiated by the Complainant for the sale of the disputed domain name cannot be regarded as illegitimate either.

For these reasons, the Panel finds that the Complainant has failed to establish that the Respondent has registered and used the disputed domain name in bad faith.”

Note that the points to hone in on are:

1. Whether the date of the registration of the domain name preceded the registration or filing of the Complainant’s trademark;

2. Whether the date of the registration of the domain name preceded the registration or filing of the Complainant’s copyright registration;

3. Whether the date of the registration of the domain name preceded the incorporation of the Complainant.