Article by Sophie Cliquet
In a recent case, the World Intellectual Property Organization (‘WIPO’) has confirmed that the “passive use” or non-use of a domain name may support a finding of bad faith.
Both parties in this domain name dispute were baby goods’ retailers.
The Complainant was a New Zealand company that had been operating in New Zealand since 1995 and in Australia through its New Zealand website since 2010. Additionally, it had registered its name as a trade mark in Australia in 2009.
The Respondent was an Australian company who had also been operating since 1995.
The dispute arose when the Complainant discovered that its business name and trade mark was registered as a domain name in Australia since 2006 by the Respondent.
The Complainant filed a complaint at WIPO requesting the transfer of the domain name. Under paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, to obtain a transfer order the three following elements must be proven:
1. the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2. the Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Domain name identical or confusingly similar to a trademark or service mark
The first element was easily evidenced as the domain name was exactly the same as the Complainant’s trade mark.
The Panel also noticed that “The fact the Complainant did not obtain its rights in the Trade Mark until after the date of registration of the disputed domain names is immaterial for the purposes of the first limb under the Policy”.
Rights or Legitimate Interests
As the Complainant had prior rights in the Trade Mark in New Zealand which preceded the Respondent’s registration of the disputed domain names by many years, the Panel found that there was a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. Therefore, the Respondent had to rebut the presumption that it had no rights or legitimate interests in respect of the domain name.
The Respondent argued that domain names are registered on a “first come, first served” basis and a registered trade mark does not confer any better entitlement to a domain name than a registered company or business name, however because the Respondent had not been using the domain name since its first registration in 2006, the Panel found that the Respondent had failed to show that it has acquired any genuine trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services.
Registered and Used in Bad Faith
On the question of whether the domain name had been registered in bad faith, the Respondent argued that it was not the case as it did not know the existence of the Complainant while first registering the domain name in 2006. The Complainant argued that the Respondent had renewed the registration of the domain every two years since 2006 and that, because the Parties had personally met in 2007, it could not be said that the renewal of the registration had been done in good faith.
Finally, on the question of whether the domain name had been used in bad faith, the Panel decided notwithstanding the fact that the Respondent had not used a website using the domain name, the registration of the domain by the Respondent constituted “passive use” of the domain name. In the circumstances, this “passive use” was done in bad faith.
The Panel ordered the domain names to be transferred to the Complainant. The Respondent has no rights of appeal.
The case is available to read at this link:
 Baby Factory (N.Z.) Limited v. Sydney’s Baby Kingdom Pty Ltd.
Case No. DAU2020-0014