Recent Case Notes & Commentary

Difficulty of Establishing Bad Faith When Domain Name Registration Predates Trademark Registration

The Beach People International Pty Ltd v. SIEBERT REALTY

Claim Number: FA1065001675767

Disputed Domain Name: <thebeachpeople.com>


The narrow interpretation of bad faith, whereby except in very particular circumstances, a Complainant must prove a disputed domain name was both registered and used in bad faith, often creates challenges for Complainants. 


This case illustrates the problems a Complainant will encounter when the Complainant itself did not exist when the domain name was registered.


Background

Complainant: Since 2013, the Complainant has engaged in selling a variety of beach products under THE BEACH PEOPLE mark.


Respondent: the Respondent has been using THE BEACH PEOPLE MARK since 1991 for real estate and vacation rental services. The Respondent registered the disputed domain name, <thebeachpeople.com>, in 1999.


Identical and Confusingly Similar

Establishing the first element of the UDRP involves the Panel deciding two questions; whether the Complainant has trademark on which it can rely, and whether the disputed domain name is identical or confusingly similar to the Complainant’s mark.


The Complainant provided evidence it had registered THE BEACH PEOPLE mark with intellectual property agencies in both Australian and the United States in 2013 and 2016 respectively. Citing Vanguard Trademark Holdings USA LLSC v. Wang Liqun, which held that registration of a mark with multiple governmental authorities is sufficient to establish rights in the mark for the purposes of the policy, the Panel found in favour of the Complainant.


The Complainant submitted the Respondent’s domain name was identical to its mark, differentiated only due to the removal of spaces between words. The Panel also noted the domain name had the addition of a generic top-level domain (“gTLD”). Because gTLDs are an essential to any website, and that domain name syntax prohibits spacing, the simple omission of spacing and addition of a gTLD are to be disregarded during this analysis (Health Republic Insurance Company v. Gustavo Winchester, FA 1622089).


In light of this, the Panel found in favour of the Complainant, agreeing that disputed domain name was identical it’s The BEACH PEOPLE mark for the purposes of 4(a)(i) of the Policy.


Rights or Legitimate Interests

Due to its discussion of Bad Faith, the Panel chose not to rule on this element of the Policy.


Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to show the disputed domain name was both registered and used in bad faith. Apart from a few particular exceptions, failure to prove either element of bad faith is fatal to a Complainant’s case.


the Panel’s discussion was limited to the issue of whether the disputed domain name had been registered in bad faith. Of critical importance was that the Respondent had registered the disputed domain name in 1999, whereas the Complainant first registered THE BEACH PEOPLE mark in 2013.


Given the approximately 14 years difference between the <thebeachpeople.com> domain name registration, which came first, and the Complainant first registering its mark, the Panel held the Respondent could not have registered the website in bad faith.


The Complainant did not submit any evidence showing it had engaged in commerce under THE BEACH PEOPLE mark prior to 2013. Nor was any evidence provided indicating the Complainant was even in existence at the time the disputed domain name was registered in 1999.


Because the Complainant was unable to satisfy this element of the Policy, the Panel ruled in favour of the Respondent.  It could have been a different result had better evidence been produced.


The Narrow Interpretation of Bad Faith

While some advocate that the ICAAN Policy should be changed to bring it into line with some other dispute resolution policies, where a Complainant is only required to prove a website was either registered or used in bad faith ( such as the Australian Policy) this case is not one for that discussion and, in any case, it looks as if such a change will not be made to the ICANN Policy.


Given the evidence submitted, there is no way the Panel could have arrived at a different decision. There are many cases that cover this particular issue also (see Aspen Grove, Inc. v. Aspen Grove, D2001-0798 and Saratoga Publishing LLC v. Rich Rachbart / Saratoga Online Inc., FA1503001608704).


It is impossible to envision how the Respondent could have registered the website in bad faith when the Complainant, as an entity, had not existed. Indeed,  the Complainant had not even contemplated engaging in business under the mark in 1999. 


Even if the Complainant was successful in showing trademark rights at common law, it would have encountered a difficult task in proving these rights preceded the Respondent’s registration of the website.


Domain Times can advise readers that these points have often been raised by Respondents- and successfully. The point is also another example of getting the facts straight before launching proceedings.