Because UDRP decisions are based on the three static criteria (similarity, legitimate rights, and bad faith) most of the arguments that a rights holder will make in support of their position to transfer or cancel a domain name are common and often recycled throughout UDRP law. However, every so often something new and imaginative will catch our eye. For this reason we would like to draw your attention to the decision in True North Media, LLC v. Good Universe Media, LLC v. 1soft Corporation.
The facts of the case are unremarkable. Complainant, True North Media, sought transfer of the domain name www.gooduniverse.com on the basis that it had rights in the mark GOOD UNIVERSE covering TV and movie production. True Media had filed an application with the U.S. Patent and Trademark Office to register the mark (Serial No. 85-610,955) but had not been using the mark in commerce when it filed the Complaint. On the other hand, Respondent had owned the domain name for years, though it had not developed the site beyond a Pay-Per Click ad site.
The panel determined that the Complainant could not meet the basic requirement of showing “similarity” under UDRP law, because (i) it simply did not have rights in the GOOD UNIVERSE mark; and (ii) that it could not prove bad faith. First, with respect to “similarity”, the panel stated:
“[t]his [the similarity requirement] may be deemed a low-threshold standing requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (citation omitted). Nevertheless, the Panel finds that the Complainants have not met even this standard. One of the Complainants applied to register the mark (comprised of two common English words) just a few months before this Complaint was filed, on the basis of a declared intent to use the mark in the future. The Complaint does not include evidence that the unregistered mark has in fact been used in commerce since then, much less that it has acquired distinctiveness in the marketplace such that is has become an enforceable, common law mark.”
With respect to the “bad faith” requirement, this is where the Complainant got creative. Specifically, although True Media had applied to register the GOOD UNIVERSE mark years after Respondent registered the domain name, it argued that “registration of a domain name containing meaningful combinations of commonly used words, which would likely have its rights acquired in the future, solely for the purpose of gaining commercially from confusion or from selling it to the future rights holder for a profit constitutes bad faith registration and use.” (Complaint, page 9). The panel noted that it had never heard argument before, but flatly rejected the idea that “bad faith” could be established based on this type of purposeful-prognostication argument, explaining:
“[n]othing in these precedents, in the text of the Policy itself, or in trademark law suggests that it is bad faith to register a domain name comprised of common words or phrases when it is possible that some unknown party in the future may decide to use those words as a trademark. The generic words used for the Domain Name in this case, ‘Good Universe’, could reasonably be considered relevant for a great many potential applications. It is always possible that someone will attempt to use virtually any word or phrase as a trademark. But speculating on the future commercial value of a domain name based on common words is simply a business risk, not an act in bad faith, unless the registrant has reason to know that a particular party has plans to use those words as a mark.”
Although the Respondent argued that True Media was attempting to “Reverse Domain Hijack” the www.gooduniverse.com domain from them (i.e., that the UDRP Complaint was filed as a means to harass the Respondent or as an attempt to abuse the administrative proceeding under 15(e) of the Rules) the panel found that there was no such abuse as it deemed the Complainant’s arguments as a sincere attempt to look at the grounds for a UDRP Complaint in a different manner and as an “extension of existing interpretations of the Policy.”
It should be noted however that the Complainant is probably very lucky that the panel did not find it guilty of Reverse Domain Name Hijacking. Fundamentally, it sought transfer of a domain name without having established rights. Further, the mark is a combination of common terms, and there is none of the indicia of “bad faith” purpose or intent (such as a party pre-emptively registering a domain name after a product launch, announcement, or the case where an employee leaves a company with knowledge of a forthcoming trademark and takes the domain before its former employer acts) that would show the Registrant was trying to infringe the trademark owner’s rights.