The Complainant is a United Kingdom company that offers a wide range of student discount products, both in the United Kingdom and internationally. It was established in March 2011 and maintains a website at “www.myunidays.com”. However the domain name in dispute <unidays.com> was created on January 21, 2005, with the Respondent having been the registrant since 2007.
You would think that at this point alarm bells would be ringing for the Complainant’s legal representatives as not only does the domain name predate the filing an subsequent registration of its UK trademark (September 25, 2012) but predates the establishment of its organization.
It would appear that Complainant’s legal counsel have misconceived the nature of the policy. Although successfully overcoming the first hurdle which simply requires a domain name to be identical or confusingly similar to a trademark in which the Complainant has rights irrespective of when that trademark was registered, the Complainant should be aware that they are not free from the issues concerning “pre-existing rights” and knowledge, in fact these are fundamental elements addressed in the proceeding paragraphs of the policy.
In fact the panel held in its Discussion and Findings;
“The Panel notes that the system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes. There is no evidence at all before the Panel to suggest that at the time the Domain Name was first registered, in 2005, or when the Respondent acquired it in 2007, any rights existed which might impugn the registration. Specifically the Complainant did not exist.”
Yes, a registered trademark that predates the registration of a domain name is not a requirement, there are many reasons as to why organizations fail or even choose not to register trademarks at the time they begin to operate and Yes, although the domain name registration system is based on a first come, first served allocation method this in no way provides the Registrant with a superior right to the domain name where that domain name has been registered for the purpose of taking advantage of a future right which he had (or was in a position to have had) knowledge of.
But it is clear from this case that no pre-existing right existed for the Complainant, in fact the Complainant did not even exist and therefore there could be no bad faith or malice “because the registrant could not have contemplated the complainant’s then non-existent right.”
The Panel found Reverse Domain Name Hijacking on the following grounds:
“No attempt was made to demonstrate the existence of any earlier rights or to address the issue arising from the disparity in dates. The disparity was mentioned in passing in the context of a submission that the actions of the Respondent, in offering the Domain Name for sale and in failing to use the Domain Name (which was incorrect, the Domain Name pointed to a pay-per-click webpage), somehow resulted in the Respondent registering and using the Domain Name in bad faith. Given the nature of the Policy and previously decided cases on this issue, this was an argument that had no reasonable prospects of success. The Complainant, which is legally represented, should have appreciated that it was commencing a proceeding that had no reasonable prospect of success.”
Firstly, trademark owners need to be aware that they cannot use the policy to dispossess legitimate domain owners of their domain names simply because the (in their view) the value placed on the domain name exceeds the costs they believe to be valid and reasonable. The Panel in Personally Cool Inc. v. Name Administration Inc. (BVI), FA1212001474325 held:
‘The offer to sell a domain name that a party otherwise has rights to is not bad faith; rather, that is nothing more than a legitimate effort to sell property properly owned by the party.’