Trademarks and domains and the general idea

[trelgor]

Hi!

I am taking a course that is supposed to make you eligible to be an "IP-paralegal". As a domainer I have become interested in IP-law...

Today's lecture was partly about the UDRP. The lecturer stated that registration of domain names for the purpose of reselling them constitutes bad faith.

This was my response, post lecture:

" During the lecture today it was stated that registration of domain names for resale purposes is equivalent to bad faith - in cases where there is a trademark that is equivalent to the domain name. This is not true.

There are a large number of UDRP decisions and many situations where domain name holders' rights can be retained despite trademark rights on the other side, and even though the primary purpose may be resale.

It may simply be that the brand did not exist when domain registration was made. Or that it cannot be made probable that the mark would be known by the registrant in that case. It may also be that the current registration is so wide in its target group that a UDRP, is doomed to fail. For example, many different businesses may have trademarks for the same word combination, but in different systems and in different classes. In addition, there may be several other stakeholders who claim interest of another type. That there should then be no market in which these names can be secured by perhaps the number of businesses that demand them would be harmful and legally insecure.

Many UDRP decisions also state that resale purposes as such do not in themselves constitute grounds for “bad faith”. This requires proof of targeted sales attempts to the trademark owner. Or that content that infringes on the current brand is published using the domain name.

My assessment of whether the name should be registered as an investment is made only by the inherent qualities of the name, never by whether there are trademarks to try to sell it to. I do consider if there are active trademarks that the registration could be infringing on though, and stay away if that is the case.

It is about a name development service and basically marketing and business services. Fully legitimate.

I have never had brands as a target group, rather startups that are looking for a powerful - and perhaps even available - name. In some cases, the whole purpose is to find a viable name that is possible to trademark protection.

Throughout this period, the general perception has largely been that it is not possible to sell domain names in a secondary market without committing a crime. This is a notion that is not only very misleading, but also very costly and harmful to companies who believe that they automatically own the right to a domain name because they have a trademark. It is also an insult to those domain investors who do not want to be associated with those who in bad faith infringe on trademarks, "squatters".

My customers are grateful and happy. A domain name registration is a unique right, basically similar to a trademark or patent. The fact that the latter are sold and valued is only a more established fact. You mentioned that domain names today because of inherent capabilities can be worth a lot of money, and that the rights of domain registrants should therefore be weakened. Conclusion 1 is correct and conclusion 2 is wrong from the domain registrants' perspective.

What should primarily be done is informing companies that domain names are important assets that can rarely be secured simply by declaring an interest after the fact. I think my thesis work will touch on these issues.

A comment from a different perspective... "

I would love to hear what more well versed contributors in legalities have to say about this. Particularly, @jberryhill .

The response above was google translated, in case it's a bit incoherent.

Cheers!

 

[jberryhill]

Today's lecture was partly about the UDRP. The lecturer stated that registration of domain names for the purpose of reselling them constitutes bad faith.

That's not surprising for a drive-by introduction to the UDRP which, to be honest, is more than some practicing attorneys get.

Obviously, you can click on the link in my signature, and find dozens of cases where persons who were seeking to sell a domain name prevailed in a UDRP (and those are just the ones at WIPO).

It's sort of like taking a quick overview of law in general and having someone say, "If someone kills someone else, then that's murder." Well, it might be murder, it might be something else. As a general proposition, one person killing another person is "homicide". Whether it is a criminal homicide - which breaks down into various shades of intentional homicide, criminally negligent homicide, or merely negligent homicide; or whether there was some kind of legal justification - self defense, defense of another, or various kinds of state-sanctioned killings (war, execution) - is a much longer story. I mean, you can easily spend a good couple of weeks on various flavors of "homicide".

But if you are taking an intro course where you are going to cover, say, "criminal law", in a couple of weeks then, sure, "if someone kills someone, that's murder", because you have a lot of other aspects of criminal law and procedure to get through, and your first assignment is not going to be the sole defense of a homicide case.

Likewise if you have one intro course which is going to cover things like trademarks, copyrights, patents, trade secrets, etc., then it's too much to ask to go into the specifics of the UDRP. I have to deal with this all of the time with licensed practicing attorneys who took a two-hour Continuing Legal Education course which covered the UDRP, and they think they are going to tell me what is or isn't cybersquatting.

Nobody is born knowing everything. Good luck with your studies.

 

[trelgor]

What are the odds that the UDRP requisites get reshuffled in the future @jberryhill ? From the viewpoint of the lecturer, they ”far too seldom look at legitimate use”.

 

[jberryhill]

What are the odds that the UDRP requisites get reshuffled in the future @jberryhill ?

Low. There has been a rights protection mechanism working group churning away since 2016, with no definite progress made toward any particular goal:

https://gnso.icann.org/en/group-activities/active/rpm

Their mailing list archives are here:

https://mm.icann.org/pipermail/gnso-rpm-wg/

The most significant accomplishment of the group has been to expel a longtime advocate for domain registrants.

 

[trelgor]

I feel that fiddling with the current setup to tip the scale in favor of the plaintiff would be opening a can of worms.

When the smaller big fish realize that there are bigger big fish that feel just as entitled to the registration - they will go ”oops”.

Expelling a registrant rights advocate is a sign of no good though.

Thank you so much for answering and helping out!

 

[trelgor]

I’ll probably get there eventually, but what is the relevance of new registrations VS acquired registrations (non drop) in UDRP decisions general practice? Anyone know?

 

[jberryhill]

but what is the relevance of new registrations VS acquired registrations (non drop) in UDRP decisions general practice?

I'm not sure what you are driving at.

Whether a domain name is hand-registered or acquired from someone else doesn't make any significant difference. What matters is whether:

1. The domain name is identical or confusingly similar to a mark in which the Complainant has rights;

2. The Respondent has no legitimate rights or interests in the domain name; and

3. The domain name has been registered and used in bad faith.

...and the Policy includes various examples of things that might or might not be legitimate rights or bad faith.

It makes no difference if I hand-register a domain name in order to exploit someone's trademark, or if I buy the domain name from some other person in order to exploit someone's trademark. What the UDRP is typically driving at is "What is the most likely reason why this person acquired this domain name?"

 

[trelgor]

I understand. I was wondering if it is ever carries any weight that a ”first registration” was done prior to the complainants trademark registration, even though the respondent acquired it after the trademark registration.

I guess not.

I was wondering because I saw that argument somewhere. I guess it must have been bad counsel.

 

[jberryhill]

I understand. I was wondering if it is ever carries any weight that a ”first registration” was done prior to the complainants trademark registration, even though the respondent acquired it after the trademark registration.

No.

I was wondering because I saw that argument somewhere. I guess it must have been bad counsel.

Yes.

One slim area of exception would be where transfer of the domain name was also part of the transfer of an ongoing business, and there was an assignment of ongoing trademark rights or goodwill in the name, such that the use is really continuous. But that sort of thing is usually not relevant to domainer discussions here on Namepros.

There is some question about whether that type of situation would have a different outcome under the US ACPA. However, UDRP panelists have tended to draw a hard stop on claims to have priority rights based on a prior registrant's date of initial registration.

This is such a common question in the UDRP that it is in the WIPO Overview of frequent issues:

https://www.wipo.int/amc/en/domains/search/overview3.0/#item38

3.8 Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?
3.8.1 Domain names registered before a complainant accrues trademark rights
Subject to scenarios described in 3.8.2 below, 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. (This would not however impact a panel’s assessment of a complainant’s standing under the first UDRP element.)

[See also section 1.1.3.]

Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.

[See also sections 3.2, 3.6, and 3.1.4.]
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So, if anyone is suggesting that you can rely on a prior registrant's registration date, then they simply don't know what they are talking about.