Recent Case Notes & Commentary

Domain Name Registered Before Trademark: NO BAD FAITH

Well-Link Industry Co. Ltd. v Jeff. Park, Nexpert, Inc.

WIPO Case No. D2017-0036.


Well-Link Industry is a 2017 WIPO decision that deals with one of the most common issues that arise in domain name law: whether a domain name registered prior to a trademark registration was registered in bad faith.


The answer to this question in ninety percent of the time, is no: a domain name registered prior to the registration and use of a trademark cannot be considered as having been registered in bad faith. The reasoning behind this is not difficult, either: it is not possible for a domain name registrant to abuse trademark rights that did not exist when the domain name was registered.


However, as Well-Link Industry shows us, sometimes on the facts asking for an independent arbitrator may be all too tempting and result in a loss. The Complainant owned a registered  Taiwanese trademark for WELLLINK and had owned it since 1 July 2009 when it was registered. His product is used in civil engineering and construction projects, and is now relatively well known in the industry on a domestic and international level. He has also been the owner of a local Taiwanese domain name, <welllink.com.tw> since 16 April 2008.


The Respondent, who registered the disputed domain name, <welllink.com> apparently had no interest in it, other than to make money by selling it. So he linked it to Uniregistry Market, a “premier domain name marketplace”, with a minimum price of US$2,000.


The Complainant seems to have done its best to show bad faith registration, on the grounds that:

  1. The Respondent does not use it to commercialise services or products;

  2. The website associated with the domain was inactive and the domain name was for sale; and

  3. The Respondent has actually been found in four UDRP proceedings to have acted in bad faith.


A good try, but not good enough. Even the fact that the price went up from $2000 to $15,000 when the Complainant tried to buy the domain name was not enough to overcome the objection found in what the Arbitrator rightly called “the plain language of paragraph 4(a)(iii) of the Policy”, requiring the registration to be in bad faith.

Thus, it was that there had to be a trademark to which the bad faith registration of the domain name could be directed.


The Complaint’s claim for transfer was therefore denied. 


OTHER DECISIONS ON THE SAME ISSUE

Domain Times has carried several articles on this issue and the related issue of when the Complainant itself did not exist at the time the Respondent registered the domain name in question.


For your assistance we have grouped together here some of our articles and case notes for you to browse through. They are:

  1. Snore Fix Inc. v. Domain Administrator, Top Business Names WIPO Case No. D2016-0314

  2. The Beach People International Pty Ltd v. SIEBERT REALTY , NAF Case .Claim No: FA1065001675767

  3. Tailwind Management, Inc. v Robert Casselman/Sharbo Inc., NAF Case: FA 151 100 164 7644

  4. MD On-line, Inc. v Yenta Marketing, Inc, WIPO Case No. D2014-1468

  5. THINGIFY, INC. v Ross Colquhoun, NAF Claim No: FA1405001558220

As you know, the full text of the decisions will be found by using the search engine on the websites of the providers, in these cases WIPO and the Forum.


We are happy to provide you with other decisions and information; please write to nabrownqc@vicbar.com.au.