Proving Bad Faith At Registration Time Could Be A Good 'Techtrend'

Author:Mr David Taylor and Aissatou Sylla
Profession:Hogan Lovells
 
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The owner of the US trademark TECHTRENDS sought the transfer of 'techtrends.com' under the UDRP The panel found that the complainant had submitted no evidence that could establish how widely the mark was internationally known at the time of registration of the domain name The respondent could not have set out to target the complainant's then non-existent rights In Association for Educational Communications and Technology (AECT) v InterAd.com Inc (WIPO Case D2019-1429), a panel has refused to transfer the disputed domain name 'techtrends.com' under the Uniform Domain Name Dispute Resolution Policy, finding that the complainant had failed to prove that the domain name had been registered in bad faith.

Background

The complainant was Association for Educational Communications and Technology (United States), which had registered the trademark TECHTRENDS in the United States in 2007.

The respondent was InterAd.com Inc of the Republic of Korea. It had registered the domain name 'techtrends.com' in 2002 and had started using it in association with an informational website relating to technology trends in 2018.

The complainant initiated proceedings under the UDRP for a transfer of ownership of the domain name.

UDRP requirements

To be successful under the UDRP, a complainant must satisfy the requirements of Paragraph 4(a) of the UDRP - namely, that:

the disputed domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights; the respondent has no rights or legitimate interests in the disputed domain name; and the disputed domain name was registered and is being used in bad faith. Decision

Identity/similarity

Under the first element of Paragraph 4(a) of the UDRP, the panel found that the requirement was satisfied because the domain name was identical to the trademark registered by the complainant.

Rights/legitimate interest

As regards the second element of Paragraph 4(a) of the UDRP, the complainant claimed that the respondent had no rights in the domain name, arguing that it had used the mark since 1985 for, inter alia, a magazine, whereas the respondent's online magazine website had been in use since May 2018. The website had therefore not been active long enough to acquire its own distinctiveness.

The respondent pointed out that:

it had registered the domain name five years before the complainant's trademark registration, which was limited to the United States and excluded Korea; it...

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