Recent Case Notes & Commentary

Bad Faith Registration? Domain Name Registered Before Trademark. Offer to Sell. Generic Expression

Publicare Marketing Communications GmbH v. G.E.D. Faber / GAOS BV, WIPO Case No. D2012-1580

This case deals with the situation, now arising regularly, where the domain name was registered before the trademark and the Respondent did not know of the Complainant and its trademark.


The Complainant advertising company had a German trademark for PUBLICARE registered on November 16, 2005. Domain name publicare.com registered by Respondent on April 4, 1999, i.e. before the trademark. It resolved to a parking page and was for sale.


The case turned on whether there had been bad faith registration, a question that was thrown into sharp relief because the domain name had been registered before the trademark. The Panel considered that situation made all the more important because the domain name was a generic latin expression.


Basic points of decision:

The basic points from the case are that to establish bad faith registration:

  • The trademark must have been registered before the domain name;

  • Offering the domain name for sale to the world at large is not enough:

  • It must be a sale to the Complainant or a competitor of the Complainant; and

  • It must be shown that the Respondent had knowledge of the Complainant and its trademark.

Reasons:

The panel supported its conclusions in the following way:

The Panel noted that “… the Disputed Domain Name was registered more than six years before the registration of the Trademark by the Complainant. The Panel further notes that the Disputed Domain Name corresponds to a generic latin name. The Panel finds that the evidence before it is not sufficient to enable the Panel to conclude that the Trademark is so well-known that it should supposedly have been known by the Respondent. Being a dictionary word, and not inherently distinctive, there is an onus on the Complainant to present the Panel with compelling evidence of secondary meaning and distinctiveness through extensive use, which has not been established here. See by analogy Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent), WIPO Case No. D2007-0515 (in which the three member panel refused to find bad faith in the case of the registration of a domain name consisting of a Latin word, i.e. , based on the lack of evidence showing that the respondent had knowledge of a complainant and its trademark rights prior to or at the time of registration/acquisition of the disputed domain name).


“From this perspective, the Panel notes that the Complainant has not established that the Respondent would have been aware (or should have been aware) of the Complainant or of the Trademark at the time when the Disputed Domain Name was registered (or when it was renewed). On this basis, the Panel cannot admit that the Disputed Domain Name was registered in bad faith by the Respondent.”


The Panel also made the point that offering a domain name for sale, by itself, was not enough o show bad faith, as the sale contemplated by paragraph 4(a) (i) of the Policy “…requires the showing that the Respondent has knowledge of the Complainant and of the Trademark, as the paragraph aims at a sale to the Complainant or to a competitor of the Complainant. As a result, the mere fact that the Respondent offers the Disputed Domain Name for sale (and other domain names that it holds) does not demonstrate a showing of bad faith of the Respondent.”


Comment

It has sometimes been said that an offer for sale shows bad faith by itself. It is clear that, expressed in such generality, the statement is not correct. Nor can it be correct to say, as it sometimes is, that a respondent offering its domain name for sale to the world at large is really making an offer of sale to the Complainant, as the respondent must have thought that if it waited long enough, someone who had a corresponding trademark would come along and the offer to sell thus became an offer to sell to the Complainant. Such an argument would be inconsistent with Publicare Marketing Communications GmbH v. G.E.D. Faber / GAOS BV.