In this video, I discuss a UDRP decision in which the disputed domain name — <skill.com> — was registered 26 years before the complainant obtained its trademark registration (for SKILL). While that timeline usually makes it impossible to establish "bad faith," this case was more complicated because the registrant of the domain name changed hands, so the panel discussed whether it was subject to "an unbroken chain of possession."
It’s usually not possible to establish that a domain name was registered in bad faith if the complainant’s trademark rights did not exist as of the date of registration. Indeed, the WIPO Overview says that, subject to certain exceptions, “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”
The domain name was created on May 1, 1995, under the name of MacTemps, Inc. In 1999, MacTemps changed its name to Aquent, Inc., and the registrant of the domain name was updated accordingly. At some time in late 2007 or early 2008, the domain name was transferred from Aquent, Inc., to Aquent, LLC. And in 2021, it started resolving to a website for a network of recruiters.
Meanwhile, Skillful Communications, the complainant in the UDRP case, obtained a trademark registration for the word SKILLFUL in 2016, with a claimed first use date of 2010; and a trademark registration for SKILL in 2021, with a claimed first use date of 2020.
So, if the only relevant comparison to be made was whether Skillful’s trademark rights existed when the domain name was registered in 1995, the answer would be easy, and the complaint would be denied.
But, as I discuss in the video, the case was complicated by the issue that the registrant of the domain name changed through the years. And as the WIPO Overview says, “if a respondent acquires a domain name after the complainant’s trademark rights accrue,” then it may be possible to find bad faith registration.
The panel wrote:
Respondent has established an unbroken chain of possession in the disputed domain name since 1995…. The late 2007 or early 2008 transfer of the disputed domain name was to a controlled subsidiary of Aquent, Inc. and there is no evidence that such was done to take advantage of any trademark rights Complainant might claim in its newly adopted SKILLFUL mark. The transfer appears to simply be a change of which company within the… corporate family would hold the disputed domain name, much in the same way that companies often move the ownership of their trademarks between holding companies and operating companies within the same corporate control group.
As a result, the panel denied the complaint, allowing Aquent to keep the domain name.
So, this was ultimately a rather easy win for Aquent and a good reminder that dates are important in the UDRP’s bad faith analysis, whether it’s the date on which a domain name was registered or the date on which the current registrant acquired it – and also, whether any changes represent something deceptive or nothing more than what’s called an “unbroken chain of possession.”
