Recent Case Notes & Commentary

GETTING TO FIRST BASE IS GOOD - BUT GETTING TO SECOND AND THIRD BASE IS BETTER

Infocert S.p.a. v. Information Brokers, Inc. WIPO Case No. D2019-1405 August 19, 2019


Infocert is a leading Italian company in the electronic certifications market in operation since 2004. The disputed domain name <infocert.com> was registered in on 1 October, 1998 by a US company, Information Brokers. Inforcert owns various stylised INFOCERT trademarks registered as recently as 25 May 2010 and, in spite of not being in existence at the time the domain name was registered, it attempted to show that Information Brokers had no rights to it.


Just making into first base

Although counterintuitive, the timing of the registration of a domain name does not necessarily matter in at least the first element under the UDRP dispute because “the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights.” In fact, it requires only that the Complainant “has” a trademark, not that it had one at the time the domain name was registered. In other words, it is possible to bring a claim and to succeed on the first element if you did not have any trademark rights at the time that a now confusingly similar domain name was registered by someone else.


The first element really goes to standing, and the panellist made the valid point that the fact that a domain name was registered before a complainant has acquired trademark rights does not preclude the complainant’s standing to file a UDRP case.


But for a complainant to prove the second and third elements- to get to second and then to third base- when it had no trademark at the time the domain name was created is a different story, as Infocert was about to find out.


It would have to prove that the Respondent had no right or legitimate interest in the name when it registered the domain name. This may be difficult to prove and, in this instance, Infocert failed to do so. Its claim that “infocert was a coined word with no other meaning” and could only relate to the Complainant was optimistic at best, given the Complainant did not exist when <inforcert.com> was registered.

In any event, the evidence was clear that Information Brokers had used the name for a bona fide business, giving it a legitimate interest in the domain name. So the complainant lost the second element and, hence, the entire case.


The panellist went on for good measure and added that the complainant also fell at the third base, i.e. bad faith. The reason? Well, as has been said on many occasions, you can hardly have been activated by bad faith at the time you were registering a domain name if there was no trademark in existence at that time towards which your bad faith could be directed.

In any case, the domain name was actually being used legitimately by Information Brokers in the course of its business, again negating the notion of bad faith on its part.


Confident in its position, Information Brokers counterclaimed for reverse domain name hijacking, as discussed here - in a separate note.