A company found out the hard way, that not only must you remember not to let your trademark registrations lapse, but you must remember to renew your domain registrations. In O’Reilly Automotive, Inc. v. Bjarne Lorenzen FA 1220459 (Nat. Arb. Forum Sept. 24, 2008), the domain transfer was DENIED and Mr. Lorenzen of Denmark was able to keep the registration of www.partscity.com. Complainant is an automotive parts retailer who was the owner of federal registrations (Reg. Nos. 2,312,510 and 2,233,940) for the mark PARTS CITY. Unfortunately, those registrations were cancelled on December 31, 2005 and October 28, 2006. Complainant did get a new registration for PARTS CITY on July 15, 2008 (Reg No. 3,465,437). Complainant operated the disputed website until it inadvertently lapsed on June 10, 2003. The Respondent registered the domain on August 23, 2003. The decision does not indicate how Complainant was using the domain prior to its lapse, nor why it did not notice the loss of the domain for the two months prior to its acquisition by Respondent.
The Panel reviewed each of the three (3) elements of the UDRP policy. First, the Panel noted that Complainant had not established the identical and/or confusingly similar element. Although this element seems to not require a timeline of trademark ownership, the Panel relied upon other decisions which established that Policy ¶4(a)(i) assumes the Complainant’s rights must predate Respondent’s domain name registration. The Panel noted, “the UDRP was not established to assist current business owners in correcting poor business decisions of the past.”
The Panel also found that the Complainant had not established the second requirement of Rights or Legitimate Interests. In an effort to prove bad faith, Complainant’s own allegations that Respondent is a competitor selling automotive parts, helped to support the finding that Complainant’s rights are therefore junior to Respondent’s registration of the domain. The panel further noted:
Complainant would have the Panel find that it has protectable rights in the domain name despite letting it lapse and languish for months while Respondent has no such rights despite validly registering the unclaimed name and holding it in an undeveloped state for years. Holders of valid domain names are not required to develop them in any particular way within a fixed time or risk losing them, especially when they are not using the domains in a manner that is offensive to the rights of another.
Third, the Panel reviewed the Bad Faith element. The Panel noted that “Complainant’s assertion that merely holding a parked domain disrupts its business because it can not use that domain name for its own benefit does not satisfy this element. Fair competition should not be confused with bad faith use or registration.”
Ultimately, the Panel DENIED the Request for Transfer.
