No bad faith where Respondent registered domain name years before Complainant’s trademark rights began

Complainant began using its mark in 2008. Respondent registered the domain name in 2001, and the record showed that Respondent maintained a blank page at the domain name. The Panel denied the complaint, finding there to be no bad faith registration:

There is no evidence in this record that Complainant — or anyone else in the world for that matter — held the slightest trademark rights in the term “movius” at the time Respondent registered the Domain Name back in July 2001. The record suggests that Respondent had the good sense or good fortune to register a short, catchy domain name in the “.com” space well before anyone else thought to register it as a domain name, or to use it as a trademark. As such, even those ardent adherents to the principle that a domain name registrant is under some type of affirmative duty to ensure that a prospective domain name would not violate another’s trademark rights could not quarrel with Respondent’s conduct in this case.

The Panel also addressed the notion of whether a more “holistic” reading of the bad faith element would support divesting Respondent of the domain name. In this analysis, the Panel soundly rejected Complainaint’s suggestion that the case should be likened to Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case unlike this one, the mark was established before the domain name was registered. Moreover, the TELSTRA mark was undoubtedly famous, whereas in this case there was not even any attempt to show Complainant’s marks was famous.

Movius Interactive Corporation v. Dynamo.comWIPO Case No. D2015-1717

About the Author: Evan Brown is a technology and intellectual property attorney in Chicago 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

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