There was an article published today by Gerald Levine on Ip Legal Corner, that highlights what is a disturbing trend for domain owners who have legitimate rights to their domain.
It was generally considered that if you registered a domain, say in 1998, and a company came along in 2008 with a trademark, you could easily show there was no bad faith in the registration unless you could foresee the future. Of course you have to pay attenion to your domain names at all times, someone who registered a domain in 1998 and then paid attention in 2008 to a new company and changed their keywords on a parked page could have a problem if they knowingly did this.
The consensus under the UDRP is that renewal does not equal registration but is a continuation of it. Mr. Levine points out that there is an uptick of cases where trademark holders are going after domain names where they got the trademark after the domain was registered. BidPal Inc. was one such company that tried this, the domain BidPal.com was registered in 2000 and BidPal was not incorporated until 2011, although they did have a transferred trademark in their possession that dated back to 2008, (Reg. No. 3,419,104 registered Apr. 29, 2008). The tm had been assigned and transferred to BidPal by a gentleman named Mark Lacek.BidPal went on to lose the UDRP as the three member panel decided, Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
So now BidPal is taking this to court with a different strategy, Mr Levine wrote:
…The losing complainant in a year-plus old decision has just filed a federal complaint alleging as it did in the UDRP proceeding that (in effect) it has a better claim to the domain name than does the holder. BidPal, Inc. v. InterMediaOne, FA121000146833 (Nat. Arb. Forum December 14, 2012). Its federal action was filed February 5, 2014, 14-cv-00168 (S.D. of Indiana). The UDRP decision was by a unanimous three member Panel. Complainant alleged that the “disputed domain name simply resolves to a placeholder page with the Registrar and contain no original content. The Panel’s unsurprising response to this is that “even if [the Respondent] had not been able to prove the use of the Disputed Domain Name, [it] finds that it is not considered a violation of the Policy just to register a domain name and not give it an active use.”
In the federal action, the plaintiff takes a new tack: “The Infringing Domain Names were Registered and/or Renewed in Bad Faith.” The consensus under the UDRP is that renewal does not equal registration but is a continuation of it.
