The scope of the UDRP may be widening in certain respects, the recent example of domain name hijacking and other cases of abusive conduct, but not to the extent of letting latter-day trademark holders capture an inactive domain name registered many years prior to the complainant acquiring its right. The Respondent in Success Bank v. ZootGraphics c/o Ira Zoot, FA0904001259918 (Nat. Arb. Forum June 29, 2009) registered <successbank.com> following its abandonment by a bank known before its merger with another financial institution as “Success National Bank.” The Complainant is unrelated to the former Success National Bank. It changed its corporate name in 2007 and in January 2008 obtained a federal registration for SUCCESS BANK.
There have been a number of cases over the past year in which complainants like Success Bank have sought to enlarge trademark holder rights by alleging either that the respondent lacks rights or legitimate interests in the domain name – no bona fide offering of goods or services or commonly known by the domain name – or non use currently or over a lengthy period of time. The Complainant in NETtime Solutions LLC v. NetTime Inc. c/o Chad Wagner, FA0810001230152 (Nat. Arb. Forum December 19, 2008) proposed that a respondent can lose its right to a domain name if
his company has been dormant for at least 10 years; that his use of the domain name has not been in connection with bona fide offering of goods and services; that the domain name has been crippled by its non-use; [and] that by ceasing to trade Respondent has extinguished his rights in the name.
The complainant misconceives UDRP if it believes that a domain name can be awarded to the trademark holder unless the respondent proves a superior right to it. It would shift the burden of proof. The Panel in Success Bank properly rejected this argument:
The Complainant relies on the argument that once a complainant shows good title in a mark, the burden shifts to Respondent to defend use and bad faith. Complainant seeks to stretch that argument to the extreme. While Complainant has some rights in the SUCCESS BANK mark, those rights are years junior to the rights of Respondent due to registration of the domain. To hold for Complainant would be to say that one could peruse the lightly used or parked domains, initiate a trademark registration application years after the a disputed domain name was registered and then claim UDRP rights in the domain under the first element of the UDRP.
Even if it were held that the respondent lacked rights or legitimate interests in the domain name, a registration of a domain name prior to complainant acquiring a trademark right (there being no evidence of abusive conduct) is prima facie good faith. A “later business cannot just register a trademark and then subsequently use this procedure to remove a website from the Internet that uses the same name,” Rohl, LLC v. ROHL SA, D2006-0645 (WIPO July 12, 2006). In Success Bank, the Respondent submitted evidence of demonstrable preparation to use the domain name and in any event “Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”
