- The owner of the US trademark TECHTRENDS sought the transfer of 'techtrends.com' under the UDRP
- The panel found that the complainant had submitted no evidence that could establish how widely the mark was internationally known at the time of registration of the domain name
- The respondent could not have set out to target the complainant's then non-existent rights
In Association for Educational Communications and Technology (AECT) v InterAd.com Inc (WIPO Case D2019-1429), a panel has refused to transfer the disputed domain name 'techtrends.com' under the Uniform Domain Name Dispute Resolution Policy, finding that the complainant had failed to prove that the domain name had been registered in bad faith.
The complainant was Association for Educational Communications and Technology (United States), which had registered the trademark TECHTRENDS in the United States in 2007.
The respondent was InterAd.com Inc of the Republic of Korea. It had registered the domain name 'techtrends.com' in 2002 and had started using it in association with an informational website relating to technology trends in 2018.
The complainant initiated proceedings under the UDRP for a transfer of ownership of the domain name.
To be successful under the UDRP, a complainant must satisfy the requirements of Paragraph 4(a) of the UDRP - namely, that:
- the disputed domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interests in the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith.
Under the first element of Paragraph 4(a) of the UDRP, the panel found that the requirement was satisfied because the domain name was identical to the trademark registered by the complainant.
As regards the second element of Paragraph 4(a) of the UDRP, the complainant claimed that the respondent had no rights in the domain name, arguing that it had used the mark since 1985 for, inter alia, a magazine, whereas the respondent's online magazine website had been in use since May 2018. The website had therefore not been active long enough to acquire its own distinctiveness.
The respondent pointed out that:
- it had registered the domain name five years before the complainant's trademark registration, which was limited to the United States and excluded Korea;
- it owned the domain name with a view to providing online technical trends; and
- until recently, it had never been contacted by the respondent regarding the alleged infringement.
The respondent further argued that many other domain names identical to the trademark under different top-level domains had been registered by third parties, such as 'techtrends.app', and that many other famous news sites and technology companies used the same trademark and provided information on technical trends. The respondent went on to explain that it had taken some time to open the online information service due to slow growth of its small business, but that it had recently found a contributor who regularly provided content for the website.
The panel declined to consider the second element of Paragraph 4(a) of the UDRP due to its conclusion under the third element.
As regards the third element of Paragraph 4(a) of the UDRP, the complainant claimed that the respondent had not replied to its email relating to trademark infringement. The complainant added that web archives showed several instances where the domain name had been advertised for sale at $45,000.
The respondent replied that:
- the complainant's failure to contact it could have been due to a temporary failure of email;
- other means of communication were publicly available, including in the Whois directory; and
- in any event, the complainant's failure to contact the respondent did not prove bad-faith use of the domain name.
The respondent added that the offer for sale of the domain name showed that the administrator of the domain name was not the respondent, but an individual using an email address with a different domain name. The respondent explained that, since it had never considered the sale of the domain name, it had closed the parking page and corrected the email address information on the Whois in 2012, and that its website was now updated daily.
The panel considered that the complainant had not provided any explanation as to why, at the time of registration of the domain name, the respondent was aware or should have been aware of the 'techtrend' name or the complainant's intent to register the trademark. The panel added that the complainant had submitted no evidence that could establish how widely the name was internationally known at the time of registration of the domain name in 2002, despite the fact that it had asserted using such name since 1985. Stressing that bad faith had to exist at the moment of domain name registration, and that the respondent could not have set out to target the then non-existent rights of the complainant, the panel concluded that bad-faith registration had not been established. It deemed it unnecessary to consider in detail the other arguments raised by the complainant, such as confusion, as they could only relate to use. The panel added that, in any case, in its opinion, none of the evidence put forward by the complainant established bad-faith use either.
This decision is an illustration of the importance of proving bad faith at the time of registration of a domain name, especially when the complainant's trademark did not yet exist at that time.
Originally published by WRT
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