Some trademark owners see changes in the Whois Registry as an opportunity to seize control of domain names corresponding to their trademarks. The issue boils down to the identity of the domain name holder; whether it is the same or different person than the original registrant. This is important because intentions of successors who have no relationship to their predecessors are judged from registrations that postdate trademark acquisitions. Priority (even where respondent lacks rights or legitimate interests) is the controlling factor in determining entitlement to a disputed domain name.
Ordinarily, a change of registration information signals a new holder, but this is not true “where [there is] an unbroken chain of underlying ownership by a single person.” In that event “a change in the recorded WhoIs details will not be considered a new registration for the purposes of the UDRP.” The question is whether there is “an unbroken chain” The issue is illustrated in Bankwell Financial Group, Inc. v. Whois Privacy Protection Service, Inc. / Domain Manager, Affordable Webhosting, Inc., Advertising, D2015-1664 (WIPO November 13, 2015) where the first named Respondent is a privacy protection service.
The facts in Bankwell Financial are uncomplicated and not essentially disputed. Complainant’s trademark BANKWELL postdated registration of <bankwell.com>, but Respondent had recently changed registration information when it transferred registration into the name of the privacy protection service. However, the domain name pre-existed Complainant’s own purported rights and interests by over ten years. Assuming a change of registration information is not a transfer of interest a respondent would continue its priority over complainant. The question (not just in the Bankwell Financial class of cases) is whether transfer for reason of protection and not of interest for value constitutes such a transfer of registration that would lift complainant to a position of priority?
There was no dispute in Bankwell Financial of Complainant’s standing under section 4(a)(i) of the Policy. Because there was an issue as to whether or not the website carried hyperlinks to complainant’s competitors the Panel decided not to make a ruling under section 4(a)(ii), but even if it had and decided that Respondent lacked rights or legitimate interests in the domain name it would not have changed the ultimate finding under section 4(a)(iii):
Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right (paragraph 3.1 of WIPO Overview 2.0).
A slightly different set of facts, but where the trademark also postdates the registration of the domain name, reinforces the reasoning in Bankwell Financial. In Angelica Fuentes Téllez v. Domains by Proxy, LLC / Angela Brink, D2014-1860 (WIPO December 18, 2014) Respondent was not using the domain name, although there was evidence she had used it in the past. She alleged that she was privately and publically known for many years by her nickname “Angelissima,” She is a novelist, poet and media personality in Denmark, as well as a journalist and business woman. The question here is whether it made any difference that the domain name was being passively held?
On this issue the Panel held
As a preliminary issue, the Panel notes that the Complainant argues that the transfer of the Disputed Domain Name from the original registrant (Angelissima Catering) to Angela Brink (the Respondent), and then subsequently to Domains By Proxy, LLC, each amounted to a new registration and, therefore, the relevant date of registration to be taken into account is October 21, 2013 (when the Disputed Domain Name was registered by Domains By Proxy, LLC) and not the original registration date of January 15, 2003.
The Panel acknowledged the general rule “that the transfer of a domain name to a third party does amount to a new registration” but it point out that “it is also generally accepted that such is not the case where there is evidence to establish an unbroken chain of underlying ownership by a single person, and any change in the WhoIs registrant data is not being made to conceal the underlying owner’s identity.”
In both Bankwell Financial and Angelica Fuentes the Panels gave some consideration to a subsidiary issue as to whether the transfers to privacy services were intended to conceal Respondents’ identities. The conclusion (in Angelica Fuentes, but equally applicable to Bankwell Financial) was that “the use of a proxy service provider by itself does not necessarily amount to nefarious intentions.”
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here
