A registered trademark does not give automatic rights to a domain.
The Registrant of the domain Rocketpay.com came up with this brand, registering it in 2002.
A dozen years later, in 2014, a company filed for the registration of the trademark ROCKETPAY, which was granted in January 2016; subsequently they filed a UDRP at the WIPO.
The Complainant, Rocketgate PR LLC, alleged the following:
“Complainant raises the fact that the domain name incorporates the trademark and that the domain name is inactive.
Respondent would have no legitimate interest or rights in respect of the domain name, since the latter is apparently making no business or other use of this domain name. The domain is indeed inactive.
Complainant concludes to Respondent’s bad faith, stating that the domain name subject to the complaint was registered on November 5, 2002 and has apparently never been used for business or any other purpose.”
The Respondent most likely shook his head over the Complainant’s actions and responded with facts and even humor, stating that he’s not a psychic:
“Respondent affirms that he registered the domain name in 2002 and that he has maintained this registration ever since. He notes that Complainant filed the trademark RocketPay 12 years after this registration (namely, in 2014). He also says that although his domain name is inactive, no regulation requires him to use it.
On the question of having rights or legitimate interests in the domain name, Respondent argues that he registered the domain name in 2002 with the intent of developing, alone or in partnership with another entity, a “portal similar to Paypal”. He indicates that there is no time limit to develop a website in relation with the domain name <rocketpay.com>. He also responds that unless he was a “psychic”, he could not have registered a domain name to tarnish a trademark filed 12 years later.
Regarding the element of bad faith, Respondent says that in view of the registration date of the domain name, which precedes the trademark registration of more than a decade, he could have not acted in bad faith.”
Indeed, domains that were registered years prior to any subsequent brands or even trademarks, should be protected from such far-reaching UDRP filings.
Although the Respondent sought a finding of Reverse Domain Name Hijacking, the sole panelist in this case, Nathalie Dreyfus, denied such a finding, citing the existence of the trademark.
For the full text of the UDRP decision for Rocketpay.com, click here.
You can’t expect much from Nathalie Dreyfus.
She “had” to deny this complain to save what is still left from her credibility.
http://www.domainarts.com/2011/10/21/my-personal-trainer-registers-sofitdc-com-receives-cd-from-sofitel-sent-by-a-wipo-panelist/
Good decision in this case, it was the obvious outcome 🙂
And generally speaking, since Kostas mentioned some previous decisions of Ms Dreyfus, WIPO should not allow/appoint panelists who also represent UDRP claimants, it’s a huge conflict of interest.