Domain Name Wire

Domain Name Wire

  • An interesting dates question in a UDRP

    1. BY - Jul 23, 2014
    2. Policy & Law
    3. 1 Comment

    What if you registered a domain long ago, let it expire, and then registered it again?

    The date you first registered a domain name is a critical factor in a UDRP.

    Generally speaking, if your registration predates the complainant’s rights in a term, then the complainant can’t win a UDRP. That’s because it’s impossible that you registered the domain name in bad faith…unless you’re psychic.

    Some complainants have argued that the renewal of a domain name can be in bad faith. Some outlying panelists have bought this argument.

    Dates in a just-decided case for proquidity.com bring up another interesting question: what if you registered a domain a long time ago, let it expire, and then registered it again?

    If the complainant’s rights in the matching trademark were gained after the original registration but before the new one, did the rights predate the registration?

    The question is begged but not answered in the proquidity.com dispute. The re-registration of the domain name still predates the complainant’s rights, but just barely.

    Common sense suggests that a panelist, in a case in which this question does need to be answered, would consider the earlier registration as evidence in the question of “registered and used in bad faith”. Of course, the circumstances of the expiration and reason for re-registration would require examination.

1 Comment
  • I would like to add a few comments to this for discussion (1) If you HAD trade mark rights in a phrase/word and that trade mark expires you do not lose all rights to that name/phrase you still retain “Common Law ” rights which can be just as strong as a TM. (2) What does this Author of this piece, or anyone, consider gives the Complainant “Rights” in “A” name/phrase ?. Can it just announce it is going to start using that name/phrase in future and claim “Rights” and if so why can the Respondent not claim equal “Rights” because he/she registered a domain to use ?. (3) “Rights” cannot expire simply because a domain name expires, and what if a company wants to sell the website/domain ,does that then mean the new purchaser is at risk from an earlier person with “Rights” ?.

    The trouble I find with UDRP is that they have 1 Rule for Complainants and another Rule for Respondents and is Biased towards Complainants.

Leave a Reply