Oops! Is Not A Legal Strategy

Timing is Everything - Make Sure You Don't Put The Cart Before The Horse

You would think that, by now, parties who get involved in UDRP proceedings would know that if all they can prove is that the domain name they are chasing was registered before the complainant trademark owner obtained it trademark rights, the claim will probably fail. But, apparently, parties are still ignorant of this basic principle, if a recent case is anything to go by.

In Brian M  Maouad, Advance 2000

, Inc., v. Reza Sanjideah, WIPO Case D2025-2137, just decided, the Complainant had started up its business in 1990 and had a registered trademark for ADVANCE that was registered on January 4, 2011. Not surprisingly, it also had a domain name it used for its business, which was <advance2000.com>. The domain name it was chasing, <advanced2000.com>,  (with an extra “d”) was registered on December 2, 1996, which was15 years before the trademark.

This gave rise to the real issue in the case. The domain name <advanced2000.com>  was confusingly similar to the ADVANCE trademark, which was fairly obvious: the domain name was virtually the same as the trademark, so it was similar, and it was also confusing, because the extra letter “d” could scarcely make much of a difference- and the Panel so held.

So, the trademark owner won Round 1. But is also had to prove Round 2, that the Respondent who had registered the domain name had no right to it or legitimate interest (an RLI) in it. That was where the Complainant got into trouble, and it failed.

The Respondent, the party who had registered the domain name, had registered it in 1996, before the trademark. It was being used for a website on cyber security compliance under the name Advanced 2000 and which offered IT services. The Washington Post had described the Respondent in 1998 as a “reputable dealer”, so it was legitimate. Thus, the Panel was able to conclude that before the dispute arose, the Respondent had been offering goods and services in good faith for long before the Complainant’s trademark. This gave it a legitimate interest in the domain name in dispute, <advanced2000.com>. The Complainant therefore lost.

The same thing happened on the third element that the Complainant had to prove, that the registrant had registered and used the domain name in bad faith. It could not prove this because the domain name had been registered years before the trademark, the domain name in 1996, but the trademark not until 2011. Bad faith does not live in vacuum and has to be aimed at someone or something and that could not have happened if the domain name had been registered before the Complainant’s trademark came on the scene.

So the Complainant trademark owner lost on these two issues and thus lost the whole case.

As a final flourish, the Panel also held that the Complainant trademark owner, even although it was a layman and not a lawyer, should have known about these principles, but had ignored them and had thus “made a farce of this proceeding”.

The price the Complainant had to pay for this farce was that the Panel made a finding against it of Reverse Domain Name Hijacking, meaning that the Panel felt the claim had been brought in bad faith.

The Panel’s final advice to people getting mixed up in these proceedings ( and we agree with it) : “take a modicum of trouble to understand the basic tenets (of the UDRP) and its elements and limitations, or else hire someone familiar with the UDRP to get it done.” Good advice.