Friday, April 18, 2008

Transfer based on rights in earlier registered domain name?

In Futurebazaar India Ltd. v. Rashid Arashid, Chen Xianshang, Bao Shui Chen, WIPO Case No. D2008-0175 (John Swinson, April 10, 2008), the Panel required the transfer of futurebazar.com to a Complainant claiming rights in FUTUREBAZAAR and (more importantly) the domain name futurebazaar.com. With the Respondents defaulting, having a reputation as cyber pirates, and using the disputed domain in connection with a website featuring sponsored links, this matter appeared to be another straightforward typosquatting dispute.

The plot thickened, however, when it became clear that the initial Respondent registered the disputed domain before the Complainant filed trademark applications for FUTUREBAZAAR and before Complainant embarked on a $2 million advertising campaign to generate goodwill and establish common law rights in the FUTUREBAZAAR mark.

Faced with these facts, the Panel had to acknowledge that "[s]ometimes in similar circumstances, it is difficult to prove bad faith, as the Respondent cannot be expected to have known of the Complainant or the Complainant’s trademark rights." With that said, the Panel made the best with what it had, namely, the fact that the Complainant registered its futuerebazaar.com domain name over a year before the Respondent registered the disputed domain. With that ledge to hang on, the Panel concluded that "[b]ecause the Complainant conducts its primary business via a website, it is likely that the Respondents became aware of this website and the name of the Complainant’s brand, recognised the popularity or potential popularity of the website, and recognised the popularity or potential popularity of the website, and registered a domain name which was likely to be confused with it." Based on this reasoning, the Panel found the necessary bad faith registration required under the UDRP.

It is clear that the Panel did not have satisfactory evidence of the Complainant's common law rights in its mark (as opposed to its domain name) prior to the Respondent's registration of the disputed domain. The Panel had plenty of other evidence of bad faith conduct, however, and the absence of a response emphasizing the timing issue really did in Respondents here. In circumstances such as these where there is ample evidence of bad faith use, but not bad faith registration, it may be more desirable to file an ACPA claim in a U.S. District Court. While a UDRP complaint requires both bad faith registration and use, the ACPA merely requires bad faith use, registration, or trafficking in a domain.

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