Although complainants of trademarks postdating the registration of domain names have standing to maintain a UDRP proceeding they have no actionable claim. (This is also true under the ACPA although it does not preclude claims for trademark infringement). Nevertheless, there continue to be claims testing the theories of “retroactive bad faith” and renewal that implicate the warranty that “the domain name will not infringe upon or otherwise violate the rights of any third party” (Paragraph 2 of the Policy). However, registrations of respondents-transferees postdating the trademark are actionable in violation of their warranties. The question is, how does one know whether the current registrant is a transferee? The answer could be in the Whois Record; it could also come from a review of snapshots captured by <archive.com>; or, from research in the DomainTools database which would provide the most comprehensive look-back of the domain name.
Two recent cases assess the meaning of changes to the Whois record. One of the Panels accepts the inference that change implies a new registrant; the other does not. The Panel in Pinterest, Inc. v. Pinerest.com c/o Whois Privacy Services Pty Ltd / Ian Townsend, D2015-1873 (WIPO December 21, 2015) notes that “[t]ypically, a complainant would not prevail on this aspect of the Policy [rejecting the retroactive bad faith theory] if its trademark rights post-date the creation date of the disputed domain name,” but it can prevail if the registrant is a transferee and this means looking more carefully at the Whois record:
Despite [rejection of the retroactive bad faith theory] there are exceptions to the general rule regarding a post-dating trademark, including the circumstance where a domain name has been transferred between unrelated registrants after its creation date, as is alleged here.
The Panel continues:
In such a circumstance, UDRP panels typically assess the registration in bad faith requirement as at the date when the respondent took possession of the disputed domain name and not at its original creation date.
And concludes,
The Complainant bases its assertion on the fact that this is the “last updated” date shown on the corresponding WhoIs record.
Before I get to the Panel’s coda in Pinterest the Panel in the second case, Consell NR v. Sedric Levasseur, D2015-1954 (WIPO December 26, 2015) is also asked to consider the “update date” but finds that change “does not necessarily indicate an ownership change but could well be the date of any other update in the WhoIs details.” This possibility is confirmed by Respondent in International Lighting Corporation v. Beat Brunner and Interlight SA, D2015-2029 (WIPO December 28, 2015) ("[the] change [was with the] registrar and hosting provider not of registrant.") Concededly, with Consell even if the entry signified a new registrant the registration still predated the trademark Complainant loses because its trademark still postdated the domain name registration.
Nevertheless, the question of ownership change based solely on the Whois details is problematic; although the Pinterest Panel’s analysis goes further than the Panel in Consell by using Respondent’s default in reaching the conclusion that Respondent (presumed transferee) intended to target Complainant when it registered <pinerest> (a one-character difference from the trademark):
In these circumstances the burden of production shifts to the Respondent to bring forward evidence or allegations demonstrating rights or legitimate interests in the disputed domain name. The Respondent, however, has chosen not to file a Response in these proceedings or otherwise to communicate anything which might point towards it having such rights or legitimate interests.
The Panel continues that it
note[s] that the disputed domain name might also be read as the two words “pine” and “rest”, which might well have been the intent of the original registrant of the disputed domain name but the Panel accepts the Complainant’s contention that the Respondent is not the original registrant and is a more recent acquirer.
However,
In contrast to the original registrant, the Respondent has used the disputed domain name not in connection with any meaning of the words “pine” and “rest” but rather to address the viewer of the associated website as “Pinterest Visitor”, that is, the typographical variant representing the Complainant’s trademark, and thereafter to deliver to such viewer a variety of unrelated websites or malware. In the Panel’s opinion, no rights or legitimate interests can vest in the Respondent by virtue of such activity.
As to whose burden it is to enlighten the Panel whether transferees are related persons the onus appears to be on respondent. See Qwalify, Inc. v. Domain Administrator, Fundacion Private Whois / Gregory Ricks, D2014-0313 (WIPO April 29, 2014):
In the present case, the Complainant claims that there have been two transfers of the disputed domain name since it acquired any rights in the QWALIFY mark, namely first at some point between March and May 2012 and secondly in March 2014 after the Complaint was filed. In the Panel’s view this is plainly incorrect. At best there has been a single relevant transfer, namely that which occurred between March and May 2012. . . . As far as the alleged March 2014 transfer is concerned, the revealing of an underlying registrant by a registrar or privacy service after a complaint is filed under the Policy, with corresponding amendment of the WhoIs record, is not typically viewed by panels under the Policy as a transfer of the domain name concerned, nor in the opinion of this Panel should it be.
The underlying rationale for looking to respondents to explain their rights or legitimate interests rests on another practice in assessing the creditworthiness of complainants, namely that Panels will accept all reasonable allegations of fact, unless the evidence is clearly contradictory. This tends to give complainants an edge where respondents default even though default is not an admission of any material facts in UDRP (or in arbitration generally).
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.
