In this UDRP case study video, I explain how the owner of a trademark registration for PTP lost a dispute over the domain name <ptp.com>.
As I discuss, the issue in this case raises one of the most common misconceptions I hear about domain name disputes: that a company can file – and win – a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) against anyone who simply has a domain name that is identical to its trademark.
The truth is, subject to some narrow exceptions, a domain name registration is not in bad faith if the trademark owner did not acquire its rights until a later date.
That’s exactly what happened in the <ptp.com> case: The complainant, Property Tax Partners, did not obtain its trademark registration until 2020, long after the respondent acquired the domain name in 1998.
As a result, as I explain in the video, the panel found that the domain name registration was not in bad faith, because the UDRP requires a complainant to establish that the domain name “has been registered and is being used in bad faith.” Specifically, the panel wrote:
Respondent claims that it acquired the disputed domain name in 1998. If that claim is true, then the Panel must find that Respondent did not register the disputed domain name in bad faith with respect to Complainant or its service mark, as in 1998 Complainant had not yet used its PTP service mark and thus did not possess rights in that mark…. While Respondent provides no concrete evidence to support its claimed date of disputed domain name acquisition, Complainant presents no evidence to counter the claim. As the overall burden of proof with respect to this element falls upon Complainant, the Panel must conclude that Complainant has failed to sustain that burden as required under the Policy.
Therefore, the Panel finds that Complainant has failed to prove that the disputed domain name was registered and used in bad faith.
This decision is not at all surprising. It’s consistent with the WIPO Overview, and plenty of UDRP decisions have reached the same conclusion: Subject to some narrow exceptions, a domain name registration is not in bad faith if the trademark owner did not acquire its rights until a later date.
This seems to be one of the most often misunderstood issues in domain name disputes, at least by smaller companies or those not using attorneys with experience under the UDRP, even those with litigation or intellectual property law experience. This case is a good reminder that proper evaluation of a potential domain name dispute is always essential.
(For a link to the UDRP decision in this case, see the description in my video.)
