Recent Case Notes & Commentary

NO BAD FAITH WHEN DOMAIN NAME REGISTERED BEFORE TRADEMARK

Limited Liability Company AV 808 v. Brian Cury, EarthCam, Inc.

WIPO Case No. D2019-0625

May 7, 2019


In another instance where the disputed domain name was registered well before the complainant acquired any trademark rights, this decision shows that it is clear that many such cases should not be brought before the UDRP to begin with. That is because it is difficult to prove bad faith registration when there was nothing towards which any bad faith motivation could have been directed at the time the Respondent registered its domain name.


Nevertheless, such cases can provide us with useful insights when it comes to how UDRP panels deal with arguments surrounding bad faith and Reverse Domain Name Hijacking.


The Case

The Complainant, a Russian company, which sold digital car video recorders, dash cams and automotive accessories, had an international trademark for CARCAM registered on January 9, 2013. Respondent’s domain name was <carcam.com> that was registered on July 22, 1996, obviously years before the trademark. The domain name did not resolve to an active website. After unsuccessfully offering US$5000 to purchase the disputed domain name, the complainant brought UDRP proceedings against the Respondent who dealt in cameras, computer software and hardware under the trademark EARTHCAM.


The Panel’s Findings

The UDRP panel found with no difficulty in finding that the disputed domain name was identical to the Complainant’s trademark given the domain name was an exact copy of the CARCAM trademark. The Panel also avoided the issue of Rights and Legitimate Interests because it was pretty clear that the issue of bad faith would determine the result.


0n that issue, the Panel immediately honed in on the fact that the domain name was registered some seventeen years before the complainant registered its trademark, and there was, therefore, little chance the panel would find bad faith registration or use. It also emerged that the Complainant itself was not even in existence when the domain name was registered. Bad faith must be directed at someone or something, and as there was no trademark and no owner of the trademark in existence on the day the domain name was registered, there could be no bad faith registration and, by definition , no bad faith use.


The Complainant tried to argue bad faith use and registration on the grounds that the respondent demonstrated an intention to sell the disputed domain name, the domain name was kept inactive, and the Respondent held more than 150 domain names and, thus, was probably a speculator.


The panel dismissed all of the respondent’s arguments quite easily and concluded with the general principle that in cases where a “respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.” Moreover, the business of buying and selling domains is legitimate so long as it does not interfere with the rights of third-party trademarks, take advantage of the trademark value of the domain name or target the trademark holder. The passive holding and the respondent’s refusal to sell are not evidence on their own of bad faith, and as such the Panel found against the Complainant. One cannot help but think the case was, as is sometimes said in this field, dead on arrival.


Reverse Domain Name Hijacking

In cases such as these, where it is clear that the complainant had no chance of winning, the panel may and sometimes will, find Reverse Domain Name Hijacking (RDNH) against the complainant as a sort of censure of bad behaviour. For this to occur, the Respondent has to demonstrate that the case was brought in bad faith or primarily to harass the domain name holder. In the present case the panel highlighted that the Complainant, with legal representation, brought the case “without a plausible legal basis” and “only on the barest of allegations without any supporting evidence.” In the view of the panel, the Complainant should have known it had little chance of succeeding, and yet it went on regardless, and such an act was determined to be in bad faith. As such the panel found RDNH against the complainant.