A registered TM does not mean immediate transfer of an existing domain via a UDRP.
WIPO panelists are paid professionals that utilize their expertise to resolve disputes during the UDRP process.
When having a domain involved in a UDRP, it is important for the Respondent – the domain holder – to actually respond.
This is one of the important tips shared by ESQwire attorney, Jason Schaeffer, a while back.
Sometimes, however, for one reason or another, the Respondent fails to respond to the UDRP; in the majority of these cases, the domain gets lost.
Not so in the case of NetworkOfGiving.com and NetworkOfGiving.org.
Despite a lack of response by the Respondent, Mr. Adam Taylor, sole panelist in this UDRP, pointed out that the domains were registered a full three years before the Complainant’s NETWORK OF GIVING trademark was registered. Furthermore, no change in ownership occurred since.
As part of the UDRP exchange, Mr. Taylor stated:
The Complainant’s registered trade marks are all dated 2008 and its earliest claimed use of the mark was in 2007. This poses an immediate problem for the Complainant because, according to the relevant WhoIs printouts, the registration date for both disputed domain names is May 5, 2005.
Paragraph 3.1 of WIPO Overview 2.0 makes clear that, generally speaking, when a domain name is registered by the respondent before the complainant’s relied-upon trade mark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right. There are exceptions where the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, but there is no suggestion that such a scenario is applicable here.
The Complainant has not exhibited any archive WhoIs printouts but, nonetheless, it concedes that the disputed domain names were registered in 2005 in the name of a Virgina entity called “Network of Giving”. And that is still the case. It appears therefore that there has been no material registrant change since the disputed domain names were first registered.
Given these facts, the case must fail as the disputed domain names could not conceivably have been registered in bad faith.
With that in mind, the Complainant’s case against this pair of domain names was denied.
For the full text of the UDRP against NetworkOfGiving.com and NetworkOfGiving.org click here.
