Successor trademark holders complaining about domain names registered before they acquired their interests have the added burden of not having all the documentary facts and sometimes no explanation for long delays in taking action against a registrant. This was illustrated recently in Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) for <autocar.com> and <autocar.org> in which the complainant acquired the 1905 trademark in 2001 and waited 8 years to complain about domain names registered in 1998 and 1999.

A more successful outcome is reported in Layby Services Australia Pty Ltd. v. Chrisco Hampers Australia Ltd., D2009-1066 (WIPO November 3, 2009) in which the complainant, a new owner of a gift business commenced a timely proceeding against a respondent who registered <hamperking.com> prior to the Complainant’s assignor acquiring a trademark registration for HAMPER KING. It had to overcome the difficulty of explaining why it was entitled to a domain name registered before a trademark was officially issued. Ordinarily, the lacuna of evidence supports the respondent unless there is proof that the trademark was in use and distinctive prior to issuance that the respondent had knowledge of the complainant and its trademark. Generally,

in these circumstances the WIPO panelists’ consensus view is that when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

The complainant’s task is harder when dealing with a generic word or phrase, of which there have been a number of recent examples. MediaWhiz Holdings, Inc. v. Domain Admin, PrivacyProtect.org / Domain Manager, MediaWiz Services Pvt Ltd., D2009-1227 (WIPO October 28, 2009) (<mediawiz.biz>)

Layby Services, however, offered sufficient evidence to prove that the Respondent competed in the same market and more importantly in an exchange of correspondence prior to the commencement of the proceedings had disclosed that it was using the domain name in bad faith; that, in fact, it “provides prima facie evidence that the Respondent was using the disputed domain name to divert Internet users to its website.” The “act of redirecting Internet users to other websites by using the reputation and goodwill of the Complainant’s trademark through a domain name that incorporates a trademark to a website unconnected to the trademark owner, does not constitute bona fide offering of goods and services.” However, proof of bad faith use does not necessarily support bad faith registration.

In Layby Services the Complainant supplemented its evidence persuasively in response to a Procedural Order, which is a gift to parties who take advantage and a vexation for those unable to respond affirmatively. See, for example, CSS Polymers Inc. v. Robert Beirne, D2009-1179 (WIPO November 9, 2009), in which in response to the Respondent’s excuse that “[d]ue to the lack of better record-keeping and the Panel’s request that Complainant CSS Polymers respond within only four (4) days, I am unable to locate documents showing use of the `CSS Polymers’ trademark in 2002” the Panel stated that the Order “was intended to benefit Complainant, not burden it.” Further, it “was incumbent upon Complainant to assemble the evidence it needed to carry its burden on the elements of the Policy and to support assertions in [the] declaration before commencing this proceeding.”