THINGIFY, INC. v Ross Colquhoun
Claim Number: FA1405001558220
It has not been uncommon for one party to register a domain name several years before another party registers the same name as a trademark. So when a clash such as this occurs, who should receive the protection of the UDRP?
In such a case it is likely there will not be any evidence indicating targeting of the Complainant’s mark by the Respondent, seeing that there was no trademark at the time the domain name was registered. Therefore, a Complainant will have a difficult time proving the Respondent has engaged in bad faith at the time of registration of the domain name.
The point came up in a recent case involving the domain name < thingify.com >, a case that highlights the troubles a Complainant will face when the Respondent has registered the domain name several years before the Complainant’s mark was registered.
Disputed Domain Name: <thingify.com>
Complainant received USPTO registration for the THINGIFY mark on July 30, 2013.
Respondent had registered the domain name <thingify.com>several years before, in May 2005.
The first two elements of the Policy were not even debated. In light of the evidence provided by the parties, the Panel’s analysis was limited solely to whether the Respondent had engaged in bad faith by registering the disputed domain name.
Under the Policy, a Complainant is required to prove that a Respondent has engaged in bad faith when the domain name was registered. In this case, because there was such a time difference between when the Respondent first registered the disputed domain name, compared to point in time the Complainant commenced using the mark, there was no way in which the former could have engaged in bad faith. The reason was simple: the Respondent could hardly have been motivated by bad faith towards a trademark that did not exist.
Because the Respondent could not have registered the domain name in bad faith, as the Complainant’s mark was not even in existence, the Complainant therefore failed on this element and of course lost the whole case.
Because the UDRP is concerned with cybersquatting, this decision is unsurprising. Here, considering the impossibility that the Respondent targeted the Complainant in bad faith, the Panel arrived at the only sensible conclusion.
This decision continues consistent reasoning by the majority of Panellists that it is simply impossible, according to the current wording of paragraph 4(a)(iii) of the Policy, for a Respondent to engage in bad faith in scenarios where the Complainant did not exist at the time when the disputed domain name was registered.
There has been a push by some in the UDRP community to have accepted a bad faith standard based on the renewal of the registration of the domain name , so that it could be said that the renewal was akin to a registration. If that were accepted, so the argument goes, it might then be said that the registration (the renewal)occurred after the domain name had been registered. But this has only been adopted by a small number of Panellists and the logic has not been widely accepted.
Therefore, those wishing to bring a Complaint against a Respondent under the UDRP for cybersquatting where there brand did not exist at the time the disputed domain name was registered, will face great difficulty.
But all is not lost. It might still be possible to argue that the Complainant had a common law trademark, if the facts support it, commencing at a time prior to the registration of the domain name. The act of registering the domain name could then be said to have been in bad faith, i.e. motivated by ill will towards the unregistered or common law trademark.
Note also that some domain name policies, notably the Australian one (as in .com.au) and the European policy for .eu, require only registration or use in bad faith, not both.
NOTE: Research for this article was undertaken by Jacob Bayley but the text and the views expressed are the responsibility of the Editor.