Right of Trademark Owner to Recapture Domain Name after Inadvertent Lapse of Registration

Right of Trademark Owner to Recapture Domain Name after Inadvertent Lapse of Registration


Lapses happen, and when they do the consequences range from loss to recapture. In Golden Door Licensor, L.L.C. v. Protected, WhoisGuard/Chen Bao Shui, D2008‑0352 (WIPO May 13, 2008) the Complainant recaptured its domain name, but in other cases failing to timely renew a registration does not always have a happy ending. The decision in Golden Door centered on Paragraph 4(b)(ii) of the Policy, that the Respondent has registered the domain name in order to prevent the Complainant from reflecting its trademarks in the disputed domain name and has engaged in a pattern of abusive registrations. 
 
As a general rule, the fact that a domain name expired and was not renewed “does not mean that the Respondent has any right to use a well-known trademark as its domain name when such use could cause confusion to consumers and damage to the owner of the trademark,” Donna Karan Studio v. Raymond Donn, D2001-0587 (WIPO June 27, 2001) (<dknyjeans.com>). Indeed, the “Policy does not condone such attempts to ‘catch’ a domain name after an unintentional failure to renew, when the registrant has no right or legitimate interest thereto and no intention of making a fair use of same,” Bronx Arts Ensemble, Inc. v. Vilma Morales, e:bOOm, S.A, D2004‑0493 (WIPO August 30, 2004). The principle works in favor of complainants with famous and well known trademarks, but otherwise the burden of proof is proportionately more demanding.
 
Decisions on lapsed registrations are driven by a number of factors. Respondent’s conduct, that it is an adjudicated serial cybersquatter, for example, supports an inference that as it has acted opportunistically in the past, its present conduct is equally in bad faith.  In Golden Door this was reinforced by the content of the website which offered links to the Complainant’s competitors. This fact leads ineluctably to another inference, which is that the Respondent must surely have had knowledge of the Complainant. (Respondent’s contention that no inference can be drawn because it does not control the content of the web page has been forcefully rejected by a number of Panels on the theory that it responsible for the acts of its agent). 
 
That the domain name is composed of two dictionary words, GOLDEN and DOOR, also played no part in the decision, although it may conceivably have done so, as it has in other cases, if the Respondent appears and offers a plausible explanation. The Respondent gave a plausible explanation in Carbon Footprint Ltd v. Adrian Fuller, D2007-0642 (WIPO July 26, 2007) for registering <carbonfootprint.org> and the Panel concluded that it had a legitimate interest in the domain name. When this happens, the Complainant’s burden will be heavier.   The Panel held that
 
In previous cases in which a panel ordered transfer of a domain name based upon a trafficker’s duty to undertake a reasonable investigation and found bad faith, either the domain name at issue was distinctive (and not a common word or phrase) or the respondent had been found frequently to have ignored others’ trademark rights, as evidenced by losing domain names in previous Policy proceedings.
 

Panels have taken one of three positions when the complainant fails inadvertently to re-register its domain name: 1) favoring the fanciful and arbitrary, and perhaps the suggestive; 2) disfavoring the generic and descriptive; and 3) rejecting excuses altogether. “Normally those who sleep on their rights do so at their peril,” Official Pillowtex LLC v. Smadar Zangi, FA0411000366168 (Nat. Arb. Forum January 6, 2005). Offsetting that disturbing principle is another, that “the law generally incorporates various safeguards to avoid undue forfeitures and unjust enrichments.” These equity principles can be employed where
 
(1) little if any investigation has been done into the history of the domain name; (2) very little time passed between lapse and the new registration; and (3) the Respondent presents goods or services on its website that are directly related, identical or confusingly similar to Complainant's goods or services, the characterization of Respondent's behavior weighs against mere business savvy and instead reflects bad faith.
 
On the other hand, these equity principles are not applied wholesale. There is the “finders, keepers‑losers, weepers” principle, as notably set forth in Corbis Corporation v. Zest, FA0107000098441 (Nat. Arb. Forum September 2, 2001):
 
The Panel holds that a domain registrant who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name; a person in the position of Respondent should be more confident than a registrant who selects a previously unregistered name.
 
The Panel continued: “In sum, where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, we believe that ordinarily the trademark holder should be denied relief, whether the mark is a common law or registered mark, whether the mark is ‘strong’ or ‘weak’.”
 
Clearly, an owner’s failure to monitor its trademarks may be costly and may even result in a new type of abusiveness presently getting attention, “brandjacking.”   How costly the inadvertence, depends on the circumstances of the lapse and the quality of the mark.