The Complainant’s use of its trademark before the Respondent registered the disputed domain name was not enough in and of itself to show bad faith at time of registration.
In the case of Uline, Inc. v. Hulmiho, a WIPO Panel denied the Complaint seeking transfer of the domain name <uline.com>. It held that the Complainant failed to demonstrate that the Respondent registered and used the disputed domain name in bad faith.
Unlike many UDRP cases which fail on the bad faith element, the Complainant in this case introduced evidence that it began using using its mark prior to the time when the Respondent registered the domain name. But that in and of itself was not enough in the Panel’s mind to demonstrate bad faith use and registration.
The Panel found no evidence that the Respondent had the Complainant in mind when it registered the disputed domain name. Further, that fact that the disputed domain name appeared to be up for sale at a price likely exceeding the Respondent’s out-of-pocket costs in registering it was of no consequence if the Respondent did not have the Complainant in mind at the time.
And the Panel rejected the Complainant’s argument under Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 that non-use of the domain name showed registration in bad faith. The panel in Telstra concluded that no lawful use could have been made of the domain name. But in this case, the Panel had insufficient information to come to that conclusion. The Panel had no information upon which to conclude that back in 1998 (when the disputed domain name was registered) the Complainant’s trade mark was sufficiently well-known to merit the inference that the Respondent was targeting the Complainant when it registered the disputed domain name.
Uline, Inc. v. Hulmiho Ukolen, WIPO Case No. D2016-0065 (March 13, 2016)
About the Author: Evan Brown is a Chicago 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.