Success in UDRP actions largely depends on when trademark rights arise. A pair of recent UDRP decisions underscores the critical importance of a Complainant establishing that its trademark rights arose prior to the time the Respondent registered the disputed domain name. Two different Panels came to two different decisions concerning two very similar domain names (<rocketpay.com> and <rocketpays.com>). The key difference between the two cases is when the disputed domain name was registered relative to the first use of the Complainant’s trademark in commerce.
In the case of Rocketgate PR LLC v. Mack Sullivan, an NAF Panel denied the Complainant’s efforts to have the domain name <rocketpay.com> transferred because the Complainant failed to demonstrate the Respondent lacked rights or legitimate interests in the disputed domain name.
The Complainant is in the business of providing online payment services, and claimed trademark rights in its registered mark ROCKETPAY, which it first used in commerce in January 2014. The Respondent registered the disputed domain name nearly 12 years earlier, in November 2002, but as of the time of the filing of the complaint, did not use the disputed domain name in connection with an active website.
The Panel found that the Complainant failed to establish the Respondent lacked rights or legitimate interests. The Panel observed that Complainant only argued that the Respondent was “apparently making no business or other use of the registered domain” and that “there is no active web-page at the address.” Absent any “pre-existing rights which may be implacable to impugn a registration,” the Respondent in this case — who registered the disputed domain name first, prior to the existence of any trademark rights on the part of the Complainant — was entitled to use it for any legitimate purpose.
The same Complainant brought an action against a different Respondent over the domain name <rocketpays.com> (Rocketgate PR LLC v. DANIEL CHAVES / ROCKET PAYS INTERNATIONAL). NAF assigned the case to a different Panel. In this case, the Respondent likewise did not use the disputed domain name to establish a website. But the key difference was that the Respondent did not register the disputed domain name until October 2014 — after the Complainant first used the ROCKETPAY mark in commerce, and likewise after it had filed its application to register that mark with the United States Patent and Trademark Office.
While at first glance the two decisions appear inconsistent, after some reflection, and application of the principles underlying the UDRP as an anti-cybersquatting mechanism, one can reconcile the two cases. One must remember that an action for cybersquatting under the UDRP is not the same as an action for trademark infringement. The UDRP seeks to curb abusive registration. In the case where the Respondent acquired the domain name prior to the time the Complainant’s trademarks arose, it is impossible to conclude the registration could be abusive. But in the second case, where the Respondent registered the domain name after the trademark rights arose, one may more reasonably make the inference of abusive registration.
RocketPay.com decision: Rocketgate PR LLC v. Mack Sullivan, NAF No. FA1602001662354 (April 5, 2016)
RocketPays.com decision: Rocketgate PR LLC v. DANIEL CHAVES / ROCKET PAYS INTERNATIONAL, NAF No. FA1602001662361 (April 6, 2016
About the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.