Sony Pictures Television Inc. just its attempt to grab the domain name SharkTank.com which was registered in 2002, while the trademark was not filed for until 2008 and not granted until 2009.
However the Panel took a long way around and some interesting language to avoid finding Reverse Domain Name Hijacking
Here are the highlights of the three member UDRP panel of Alan L. Limbury, Sandra J. Franklin, and Paul M. DeCicco
“The two terms comprising SHARK TANK are generic and taken together, descriptive. “Shark Tank” has common meaning apart from any trademark value it may have acquired through its use in commerce. The registration of domain names that contain common words is permissible on a first-come, first served basis, and such registration establishes the Respondent’s legitimate interest, provided the domain was not registered with a trademark in mind.
Further, there is no indication that Respondent uses, or has ever used the domain name to exploit its trademark value in the category of goods and services covered by Complainant’s mark or otherwise. Respondent has provided evidence of his plans to use the disputed domain name and, despite Complainant’s arguments to the contrary, Respondent can take his time so long as there is no indication of bad faith (further discussed below).
These foregoing factors lead this Panel to conclude that Respondent has rights or interests in respect of the domain name pursuant to Policy ¶ 4(a)(i), despite the fact that Respondent is neither authorized to use Complainant’s trademark, nor commonly known by the
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
It is axiomatic that if a complainant does not have trademark rights at the time of a disputed domain name’s registration (even though it may have such rights at the time of the parties’ dispute), there can be no bad faith registration on the part of the domain registrant/respondent. Numerous decisions support this very logical proposition.
Respondent, through an associated company, registered the
Complainant filed for USPTO registration on Sept. 18, 2008, registered Nov. 24, 2009.
Notwithstanding the registration date of Complainant’s mark, Complainant might nevertheless establish it had pre-registration common law rights in the mark by submitting appropriate evidence that the mark acquired secondary meaning before the domain name’s registration.
Complainant does not contend that Respondent’s initial registration of the disputed domain name was in bad faith.
Its argument is that the subsequent renewals of the disputed domain name by Respondent with knowledge of Complainant’s trademark suffice to establish bad faith registration, citing several UDRP decisions to that effect, including Big 5 Corp. v EyeAim.com, FA 1513704 (NAF, Oct. 11, 2013). The attempt to equate renewal with initial registration has been rejected by numerous other UDRP decisions and this Panel does not accept the proposition that, as the Policy is presently worded, bad faith renewal can overcome and displace initial good faith registration. This Panel prefers the majority approach in A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800.
Given the foregoing, the Panel concludes that Complainant does not, and cannot, meet its burden regarding Respondent’s bad faith registration and use of the
Reverse Domain Name Hijacking
On the one hand, it appears that Complainant’s filing was certainly doomed to fail from the outset given the undisputed fact pattern showing that the disputed domain name was first registered prior to Complainant’s having any rights in its SHARK TANK trademark.
On the other hand, Complainant prevails under Policy ¶4(a)(i) and as discussed below it is not clear from the record that Complainant knew or should have known to a reasonable certainty that the Complaint would fail under either Policy ¶(a)(ii) or ¶(a)(iii).
While Respondent initially registered the
The fact that re-registrations of
While this Panel wholly disagrees with the minority position relied on by Complainant, Complainant’s reliance on such cases cuts against the Panel’s summarily concluding that Complainant knew, or should have known with a reasonable degree of certainty at the time it filed its complaint, that such complaint must ultimately fail.
Therefore, Complainant had a good faith basis to pursue a remedy via the UDRP and on balance the Panel finds that Complainant did not engage in RDNH.