Damned difficult. Nothing is impossible, but the devil is in the details. Is it registered to him as an individual?
I've been waiting for the right fact pattern to come along and recently took a case to the UDRP in which the transfer document expressly conveyed "all rights" in addition to the domain name itself. I was surprised that the panel pretty much ducked that point and took a very mechanical "the registrant changed, so it was a new registration" approach.
In another case, a panel found a "new registration" where the change in ownership merely was a result of an individual winding up a sole proprietorship which he owned.
Relevant bits of the first case follow. The use of a privacy service was something of an ancillary issue, but this was about as clean a fact pattern as I have seen in order to test whether the right of priority in a domain can be transferred. The summary of our position is relatively accurate:
http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0062.html
The Respondent8 notes that the disputed domain name originally was registered by Peter Bradford, purportedly a Canadian citizen, some three and one-half (3 ½) years before the Complainant established trademark rights in CREDITKEEPER through USPTO registration. The Respondent argues that it cannot be disputed that the Complainant adopted its trademarks with full knowledge that the disputed domain name already had been registered. The Respondent asserts that the central issue in the dispute therefore is one of priority. Given that privacy services are engaged merely as an agency of the domain name registrant, the Respondent contends it would be unreasonable to conclude that the use of a privacy service constitutes a discontinuity of beneficial ownership and priority rights in the registration and use of a domain name.
Regarding the issue of identity or confusing similarity under the Policy, the Respondent notes that the majority view of panelists is that the registration of a domain name prior to the time a complainant establishes rights a trademark does not preclude a finding of identity or confusing similarity, with the issue of priority best resolved under other Policy criterion. However, the Respondent contends that the Complainant cannot claim exclusive rights to use the term CREDITKEEPER in a domain name, given that the disputed domain name was registered prior to the Complainantâs establishment of trademark rights. Further, the Respondent offers empirical evidence of what it claims to be the generic or descriptive use of this term, including a general reference to credit agencies as âkeepers of credit historyâ, and a reference in one website article to Equifax as a âCredit Keeperâ.
The Respondent maintains that it has established rights or legitimate interests in the disputed domain name. The Respondent acknowledges that the disputed domain name originally was registered by Peter Bradford and used to advertise various credit related services, but notes that the domain name consists of two common or âdictionaryâ words â âcreditâ and âkeeperâ â and that such registration and use of the disputed domain name predated the Complainantâs acquisition of rights in the marks in question through USPTO registration. According to the Respondent, common words and descriptive terms legitimately are subject to registration as domain names on a âfirst-come, first-servedâ basis.
Thus, the Respondent concludes that the original registrant had every right to register and use the disputed domain name to advertise credit related services on the internet. The Respondent contends that it acquired all rights to the domain name under a certain âDomain Name Purchase and Sale Agreementâ effective December 15, 2004, provided as Exhibit D to the Response. The Respondent argues that when it acquired rights to the domain name in 2004, the priority of use of the domain name was not extinguished, just as the Complainantâs acquisition in the CREDITKEEPER marks by assignment did not preclude the Complainant from claiming priority under United States trademark law based on the applications filed by the original registrant.
The Respondent denies bad faith registration and use of the disputed domain name. According to the Respondent, if Bradford cannot be found to have registered and used the domain name in bad faith, then neither can the Respondent be held in bad faith as Bradfordâs successor-in-interest. The Respondent contends there is âzero questionâ of bad faith registration and use of the domain name by Bradford, and points out that it has continued to make the same use of the disputed domain name as was made by the original registrant. The Respondent further argues the original registrant was not required under the Policy, following the Complainant establishment of trademark rights in CREDITKEEPER, to either keep and maintain the domain name in perpetuity, or to assign it and all rights therein to the Complainant.
Even assuming arguendo that the sale and transfer of the domain name from Bradford to the Respondent in 2004 constitutes a new registration under the Policy, the Respondent maintains that neither it nor the original registrant were under any duty of constructive notice regarding the United States trademark applications filed by the Complainantâs predecessor-in-interest. The Respondent alleges that it is a Bahaman corporation and Bradford a Canadian citizen, and asserts that the Complainantâs U.S. trademark registrations should have no extra-territorial effect under the Policy.
Further, assuming arguendo that the Respondent was aware of the Complainantâs trademark rights in CREDITKEEPER when it acquired the disputed domain name, and that the Respondent also knew the Complainantâs rights had extra-territorial effect, the Respondent concludes that no bad faith can be inferred from its acquisition and continued use of the domain name consistent with that of the original registrant. To the contrary, the Respondent maintains that there is no bad faith in the acquisition of an asset that pre-dates later claims made thereto by others, and that a contrary conclusion in this case would undo much of the law in common to the relevant jurisdictions of Canada, the Bahamas, and the United States. The Respondent dismisses the Complainantâs argument that a change in Whois database registrant information based on a registrantâs use of privacy service should constitute a ânew registrationâ for purposes of the Policy. The Respondent argues that a privacy service functions solely in an agency capacity in relation to the actual domain name registrant, and that the Complainantâs position amounts to little more than a disingenuous attempt to destroy the continuity of beneficial ownership and rights of priority in the registration and use of a domain name, without which the Complainant is keenly aware that its case must fail.
In the final analysis, the Respondent posits that it received the disputed domain name in privity with the original registrant, acquired all rights and interests through a written assignment, and maintained continuity of use of the domain name consistent with that of the original registrant. Such cannot constitute bad faith registration and use under the Policy, according to the Respondent.
Okay, got that so far. Here's what the panel said:
The Respondent, however, fundamentally misperceives the Policy and its objectives in asserting that a previous registrantâs good faith registration of a domain name immunizes one who subsequently acquires the domain name from further scrutiny. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. The consensus view of WIPO Panelists is that, while a renewal of a domain name does not amount to registration for purposes of determining bad faith, the transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.7, and cases cited therein.10
While a renewal is not considered equivalent to a âregistrationâ in the context of the objectives of the Policy, and thereby insulates a respondent who did not register a domain name in bad faith but subsequently uses it in bad faith, the benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in âpossessionâ long after the original registration would have expired. See PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338.11 The Panel notes that paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.12 See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. But the Respondent has not indicated that it explored the possibility of third-party rights in any way before registering and using the disputed domain name.
In view of the foregoing, it follows that the Respondent cannot rely on a previous registrantâs good faith registration of the disputed domain name without more to establish that the Respondent possesses rights or legitimate interests in the disputed domain name. Nor can the Respondent rest its claim of legitimacy on a continuation of the previous registrantâs use of the domain name, in the absence of a good faith effort by the Respondent to avoid registering and using a domain name corresponding to the trademark of another in violation of the Policy. As noted above, the Respondent does not indicate that it explored the possibility of third-party rights in any way before registering and using the disputed domain name.13
There's a reason that I emphasize the "without more" there (it's one of my favorite legal phrases). You have to ask yourself what facts, if changed, would result in the panel finding a different result.
A couple of "easy ways out" would be:
1. If the domain name is owned by a corporation or other legal entity, then move any other assets out of that entity except for the domain name, and then buy the entity.
2. If the domain name is owned by an individual, arrange a fully-paid perpetual lease and indemnify him/her against any consequences.
The "harder ways out" would be to dissect that decision at a finer grain of resolution. Would the outcome have been different if there was clear continuity in the manner in which the domain name had been used, etc.
Of course, these considerations come into play only
after assessing the scope and coverage of the trademark in question, relative to the proposed use of the domain name.
