Some respondents believe that registering lapsed domain names establishes a possessory right – a finders keepers attitude – invulnerable to a claim of abusive registration. This explains why in VIRBAC v. PrivacyProtect.org, Mantow Tian, Preventic China Systems, Isaac Goldstein, D2011-0026 (WIPO February 23, 2011) one of the Respondents is so indignant at being accused of bad faith. The “Center received an email from Mantow Tian informing the Center [that it] will contact Chinese authorities and courts if you steal our domain name.” But the indignation is is misplaced. Inadvertent lapse in renewing a domain name has no effect on trademark holders’ rights. There is no principle of law that bars a trademark holder from recovering a lost domain name; the only bar is the complainant’s inability to prove its case. In VIRBAC, the Respondent allegedly purchased the domain name from another named respondent who registered it after the Complainant inadvertently failed to renew its own registration. However, having issued the threat none of the Respondents appeared.
It should not be thought that the business model of registering lapsed domain names is in itself abusive. Domain names are abandoned all the time for who knows what reason. But domain names with heavy traffic signify the prior registrant’s market penetration thereby putting the new registrant on notice that the second level domain may be a trademark. The VIRBAC Complainant states that it “ranks today as the 8th largest veterinarian pharmaceutical group in the world. Its wide range of vaccines and medicines are used in the prevention and treatment of the main pathologies for both companion and food-producing animals.” The domain name is identical to the arbitrary trademark, PREVENTIC. As the Complaint points out “preventic” is “not a common word in English or in French.” Indeed, “[s]imple Internet searches under the Trade Mark immediately refer to the Complainant and its products under the Trade Mark.”
The governing principle on this issue began emerging quickly after the initiation of the UDRP. “Intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith,” Red Nacional De Los Ferrocarriles Espanoles v Ox90, D2001-0981 (WIPO November 21, 2001). Registrants of lapsed domain names cannot be blind to the possibility – are in fact expected to perform some due diligence under paragraph 2 of the Policy – that the lapsed domain name is a trademark.
Domain name registrants represent and warrant at the time of registration that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party,” Paragraph 2 of the Policy. The Panel in mVisible Technologies Inc v. Navigation Catalyst Systems Inc., D2007-1141 (WIPO November 30, 2007) held that “a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights,” adding that “a failure to conduct adequate searching may give rise to an inference of knowledge [of the complainant's mark].”
Whoever Mantow Tian may be, Isaac Goldstein is no stranger to UDRP proceedings; rather, a professional domainer as he states in his Twitter account: “I own many premium domain names, and I am currently investing in several coming web projects.” However, a domain name containing the trademark “preventic” will not be one of the “coming web projects.”