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Recent Case Notes & Commentary

Timing of bad faith – Corrs Chambers Westgarth Fails on Evidence to take domain name

WIPO Case No. D2019-2535

December 3, 2019

National Australian law firm Corrs Chambers Westgarth failed to win the domain name <> from American company, Domain Vault, because it could not demonstrate that the domain name was registered in bad faith. The case highlights a critical but fairly common misunderstanding of what paragraph 4(a)(iii) of the UDRP Policy requires of Complainants.

The domain name <> was created in 2001. As Corrs didn’t provide any evidence of a subsequent transfer or registration occurring after 2005 (when Corrs registered its trademark in Australia) the panel had to assume that the current holder of the domain name had been the only holder since 2001. This becomes the relevant time point for the ‘bad faith’ analysis which was an issue for Corrs because the panel found that Domain Vault could not have had knowledge of Corrs’ trademark at the time of registering the domain name. This makes it much less likely that it was registered in bad faith. Even though the panel had no issue with finding that the domain name was presently being used in bad faith, the Policy requires that the registration itself was also done in bad faith.

Panels will ask on the balance of probabilities, whether the Registrant knew of the Complainant’s business at the time of the registration. Even though Corrs has been referring to itself as ‘Corrs’ as early as 2000 and they claimed to have international recognition, the evidence provided no reason to think that the Respondent, an American (not apparently involved in the legal industry) was aware of them.

It might not be the case that Domain Vault has held <> since it was created in 2001. If they registered it more recently or simply any time after 2005 (when Corrs registered their trademark) – that would become the relevant time point for determining whether the Respondent targeted Corrs. If evidence of a more recent transfer existed it would have been favourable to Corrs bearing in mind the requirement that “there must be sufficient grounds to infer that the Respondent had the Complainant or its trademark in mind when the disputed domain name was created (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743).”

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