If brevity is the soul of wit, as Shakespeare told us[1], brevity must also be the soul of wisdom and therefore of wise decisions by courts and other decision making tribunals. So the recent decision in TriPacific Capital Advisors, LLC v. ahura fze / domain admin Claim Number: FA1311001530299, (NAF 26 December, 2013) in which I was one of the three arbitrators[2], was a very wise decision for two reasons.
First, it was brief. Secondly, it expressed its single point in a very few words, for the simple reason that that was all that needed to be said, although it makes a very important point, which still seems to be lost on many practitioners and commentators in the domain name field. The point was that if a domain name is registered before the trademark on which the Complainant relies, it is extremely difficult to show that the trademark was registered in bad faith. In the TriPacific case, the domain name was registered on July 18, 2001, but the trademark that the Complainant relied on was registered after the domain name and, indeed, its first use in commerce was claimed to be only December 5, 2005, again after the registration of the domain name. No bad faith registration could be shown. Decision for Respondent. End of subject.
The panel stated its unanimous view as follows:
The record indicates that Respondent registered the <tripacific.com> domain name over four years before Complainant’s acknowledged first use of the TRIPACIFIC mark. The WHOIS information for Respondent’s domain name indicates that the domain name was registered on Complainant’s first use in commerce of the TRIPACIFIC mark was not until December 5, 2005. It is well established that a respondent does not act in bad faith where it registers a domain name prior to a complainant’s use of a mark.[3] E.g., Aiden fung v. terry zimmer, FA 1396869 (Nat. Arb. Forum Aug. 18, 2011) (no bad faith found where the complainant failed to provided evidence of common law rights before the domain name was registered); Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (no bad faith found where the domain name was registered three years before the complainant began using the mark).
[1] From Shakespeare’s Hamlet, 1602:
"LORD POLONIUS.
This business is well ended. My liege, and madam, to expostulate What majesty should be, what duty is, Why day is day, night night, and time is time, Were nothing but to waste night, day and time. Therefore, since brevity is the soul of wit, And tediousness the limbs and outward flourishes, I will be brief: your noble son is mad: Mad call I it; for, to define true madness, What is’t but to be nothing else but mad? But let that go."
[2] See the decision for the arbitrators and their unanimous decision
[3] There is no evidence of opportunistic bad faith.
Comments