It's no secret that to win a UDRP claim, you almost always need to have trademark rights prior to a disputed domain registration

In SecretLab SG Pte Ltd v. Jason Bright, Secret Lab LLC, WIPO Case No. D2018-2807 (Clive L. Elliott, February 7, 2019), the Panel refused to transfer the disputed domains secretlab.com and thesecretlab.com to the owner of several registrations for the mark SECRETLAB. It is not often that a UDRP Complainant has its complaint denied, but the facts in this case did not favor a transfer and Respondent lawyered-up to mount a vigorous defense against Complainant's claims.

Looking at the three elements of a UDRP claim, the Panel first examined whether the disputed domains were identical or confusingly similar to a mark owned by Complainant. As Complainant owned several registrations consisting of the term SECRETLAB, the Panel found the requisite similarity between the disputed domains and Complainant's registered trademark.

Things started to go south for Complainant, however, once the Panel turned its attention to the second element of a UDRP claim, namely, whether Respondent has any rights or legitimate interests in the disputed domain. Complainant asserted that the disputed domains were registered 20 years ago and have been "parked" ever since that date. Respondent, however, countered with evidence that it at least made use of a "holding page" for its website. According to the Panel: "Whether the passive holding of a domain name is acceptable or not depends on the circumstances of such holding. Factors relevant in the present case include the length of time that Respondent registered the Domain Names prior to any use by Complainant, the evidence Respondent has provided of its use, albeit limited, of the Domain Names, the plausible explanation given by Respondent as to its choice of the Domain Names and finally the plausibility of the use of the Domain Names in relation to [Respondent's] services." Respondent introduced evidence that it had registered its company name with the Minnesota Secretary of State and also that it had offered software related services, albeit on a limited basis, from the disputed domains. It seemed that this evidence satisfied the Panel as to Respondent's "legitimate interests." As to its "rights" to the disputed domains, the Panel found highly relevant "the fact that Respondent registered the Domain Names long before Complainant used and registered Complainant’s Marks."

Turning to the third element, whether Respondent registered and used the disputed domains in bad faith, there was simply no evidence to support the notion that the disputed domains were registered in bad faith. According to the Panel, "Respondent registered the Domain Names some 16 years before Complainant started using and seeking to register Complainant’s Marks. It is difficult under those circumstances to see how the registration of the Domain Names could constitute bad faith conduct." Note that there was some potential bad faith actions by Respondent after registration, but to prevail in a UDRP action, one must demonstrate both bad faith use and bad faith registration.

Under these facts, the Respondent walked away with a victory and kept its domain names.