If domain name is registered before a trademark is filed, complainants need to provide good evidence of common law rights.
So you’re legal counsel for a company that feels that someone is cybersquatting on your trademark. That someone is “Purple Bucquet” of Panama, which has lost twenty-six UDRP cases since April 2010 to companies as big as Wells Fargo and Intuit.
You file a UDRP for the domain name and Purple Bucquet doesn’t even bother responding, yet you lose.
Believe it or not, this exact scenario has played out twice within two days last week.
On December 31 a National Arbitration Forum ruled against broadcast company Pidela Holdings Inc for the domain name Rumberanetwork.com, owned by Purple Bucquet. On January 1, a Czech Arbitration Court panel found against a Denmark company for the domain name Hurtta.com, also owned by Purple Bucquet.
In both cases the complainants had trademarks for the domains but they were filed after the respondent registered the domain names.
You can still win a UDRP as a complainant if you file for a trademark after a domain name is registered. You just need to prove common law rights to the mark prior to the domain name registration. In both of these cases, the complainants failed to provide even a minimum amount of information to sway the panels. They phoned it in and failed.
Gary S says
A search of the WHOIS history would have also provided proof of change of registrant numerous times after the initial registration and after any trademark rights. It also appears that the registrar, Power Brand Center, is merely a re-packaging of former registrar Lead Networks.
“A search of the WHOIS history would have also provided proof of change of registrant numerous times after the initial registration and after any trademark rights.”
Only in domainers communist world a change or registrant allows a company to claim a domain.