Respondent's Right to a Domain Name In Which It Also Has a Trademark Right

Except where a registrant is the first to register and has a legitimate claim to the disputed domain name, it is settled that registration of the domain alone confers no right or legitimate interest in it. However, the respondent can establish its legitimacy by satisfying any of the three affirmative defenses set forth in ¶4(c)(i-iii) of the Policy. This includes respondent showing that it owns a trademark obtained for legitimate commercial activities of its own and not opportunistically in violation of another’s rights. Concurrent ownership of trademarks may not occur in great number in UDRP cases, but Panels have treated them as being within the scope of the Policy. Evidence of a concurrent legitimate trademark bridges the first two defenses, that is 1) prior to notice the respondent used or is making demonstrable efforts to use the domain name in connection with a bone fide business; and 2) the respondent is commonly known by the domain name.
Determination of a respondent’s rights involves delving into its motivation and weighing its conduct in obtaining a trademark. Two recent cases illustrate the issue. Uponor Oyj and Uponor Innovation AB v. Iman G. Mohammadi, Network Supporters Co. Ltd., D2008-0209 (WIPO May 6, 2008) (Swedish Complainant, Iranian Respondent) and Sandvik Intellectual Property AB v. Harbhajan Singh/State Engineering Corporation, D2008‑0608 (WIPO June 5, 2008) (Swedish Complainant, Indian Respondent). In both, the foreign trademarks were found to be legitimate which resulted in the complaints being denied. The right contended for can also be from acquired distinctiveness, as in Operation Homefront v. Illinois Office of Lt. Governor, D2007-1037 (WIPO October 1, 2007) (<>). The complaint was denied because the Respondent owned a common law trademark antedating the filing date of the Complainant’s registration.
Respondents’ rights, of course, rest on the legitimacy of the trademark registration and this, in turn, involves delving into the registrant’s motivation in applying for or obtaining a trademark. Absent indicia of bad faith, “if a respondent proves that it has a registered trade mark, it also demonstrates a legitimate interest in the domain name, and a complaint would therefore fail,” Ribbel International Limited v. Ribbel Medizintechnik GmbH, D2005-1183 (WIPO January 16, 2006) (Indian Complainant, German Respondent).   It may also be that “[t]wo independent parties may hold trademark rights in different national jurisdictions and each may, on that basis, be able to demonstrate rights or legitimate interests under the Policy in the same domain name,” Lexicon Marketing Operating Luxembourg, S.A.R.L v. Facundo de Giorgio, D2006-0730 (WIPO September 15, 2006) (U.S. and Argentina).   This would also be true for United States parties, each of whom hold a legitimate trademark, albeit in different classes of goods or services.

However, not all interests are legitimate, as the Panel determined in The Union des Associations Européennes de Football v The European Unique Resources Organization 2000 B.V., D2000-0230 (WIPO July 5, 2000) (<>) (Complaint failed on res judicata grounds). Sometimes the right the respondent claims is bogus, as the Panel found in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and, D2000-0847 (WIPO October. 12, 2000).   To establish that a trademark was registered legitimately, the respondent must demonstrate that its registration in the different jurisdiction was made in good faith, The Panel in Madonna Ciccone concluded that the Respondent attempted to establish a right “through the expedient of securing a trademark registration in Tunisia.”   However, a right cannot be legitimized by subterfuge. If it could “then the ICANN procedure would be rendered virtually useless.”   The Panel continued:
[to] establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.
The Madonna holding received further clarification by the Panel in BECA Inc. v. CanAm Health Source, Inc., D2004-0298 (WIPO July 23, 2004). He advanced the Ciccone analysis by calling for examination of the “chronology of events” and “knowledge and intention of the Respondent at the time the disputed domain name is registered.” It abstracted the following guidance from Ciccone:
(i) When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.
(ii) The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent’s domain name registration. A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.
(iii) The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
(iv) The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is “legitimate.”
The determination in BECA Inc. is not a declaration that the Tunisia registration is illegitimate, but a finding that Madonna’s right cannot be trumped by a subsequent, opportunistic registration.   In contrast, the Panel in Lexicon Marketing Operating Luxembourg, S.A.R.L v. Facundo de Giorgio, D2006-0730 (WIPO September 15, 2006) (<>) found that Respondent (a trademark registrant in Argentina) was using the domain name in connection with a bona fide business in Argentina. Although its use of the domain name to solicit business in the United States was in bad faith, the Panel nevertheless held that could not find that the registration was in bad faith and denied the complaint.   The inference is that the trademark registration was not opportunistic as was the respondent’s in Madonna.

However, when the evidence shows that the respondent obtained a trademark “to shield a domain name from an unfavorable UDRP result ... a Panel should not be bound by an immutable rule that would, if followed blind[ly], work an inequity on one of the parties or pervert the objectives of the Policy,” Goldman, Sachs & Co. v. Lis Wevers c/o Goldman Advertising Services BV, FA0610000812109 (Nat. Arb. Forum November 22, 2006) (<>). The Panels in Uponor Oyj and Sandvik Intellectual Property concluded that the Respondents’ Iranian and Indian trademark registrations were made in good faith and “provide[d] the Respondent[s’] principals with a legitimate interest in the Domain Name.”