A domain name dispute brought by the American Farm Bureau shows that (at least under the right circumstances) a trademark owner may be able to win a proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) even if its trademark rights arose after the disputed domain name was registered — if the trademark owner previously registered and used an almost identical domain name.
This decision, if followed by other panelists, could greatly expand the ability of trademark owners to prevail in UDRP proceedings.
I discuss the case, involving the domain name <txfbins.com>, in a YouTube video.
As I explain in the video, the complainant’s trademark registrations did not arise until after the disputed domain name was created. Usually, that sequence of events is fatal to a UDRP complaint, because the UDRP specifically requires a complainant to prove that the disputed domain name “has been registered and is being used in bad faith.” In other words, bad faith must be established at two points in time, when the domain name was registered and when the complaint was filed. So, as the WIPO Overview simply states: “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.”
But in the Farm Bureau case, the complainant had registered and started using its own domain name, <txfb-ins.com> (without the hyphen that appears in the disputed domain name) in 1998. That’s before the disputed domain name was registered in 2000. And apparently the panelist found that important in evaluating the bad faith element of the UDRP.
Specifically, the decision says:
The disputed domain name was registered before the Complainant registered its trademarks referred to above. However, the Complainant has also provided evidence of longstanding use and reputation prior to the Respondent registering the disputed domain name. In particular, the Complainant registered and commenced use of its domain name <txfb-ins.com>, which is similar to the disputed domain name, two years prior to the Respondent registering the disputed domain name.
The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and the Complainant’s trademark. By registering the disputed domain name after the Complainant started to use and advertise its similar domain name, and then by using the disputed domain name to generate PPC traffic that refer to the Complainant, demonstrates that the Respondent specifically knew of and targeted the Complainant.
In my opinion, that’s an incredibly important and helpful finding for UDRP complainants. Because it allows a trademark owner to establish bad faith based on its prior use of a domain name that’s similar to the disputed domain name – even if it can’t establish that its trademark rights were obtained prior to creation of the disputed domain name.
