Bad-faith renewal insufficient to win back 'dinkybomb.com'

In Gamer.tv Limited v Bestinfo, a World Intellectual Property Organization (WIPO) panellist has refused to transfer the domain name 'dinkybomb.com' to the complainant, which owns a UK registration for the mark DINKY BOMB and was the former holder of the domain name. The panellist held that (i) the respondent had not registered the domain name in bad faith as it was unlikely that it was aware of the complainant's rights in the domain name at the time, and (ii) although the respondent had renewed its registration in bad faith, renewals do not fall within the scope of the Uniform Domain Name Dispute Resolution Policy (UDRP).

Gamer.tv Limited specializes in computer and video games, and operates an interactive website and produces television programmes aimed at gamers. Gamer.tv's most popular game is called Dinky Bomb, which it created in May 2002. Gamer.tv registered the trademark DINKY BOMB in the United Kingdom on December 13 2002. Gamer.tv registered the domain name 'dinkybomb.com' in November 2001, but inadvertently allowed the registration to lapse in November 2002. Bestinfo purchased the domain name a month later. Gamer.tv then attempted to convince Bestinfo to assign the domain name back to it. Bestinfo refused and renewed the registration in its name in December 2003. The domain name leads users to a Bestinfo website that provides a search engine and links to gaming, merchandising and gambling sites. Gamer.tv filed a complaint with WIPO.

Gamer.tv argued that Bestinfo's renewal of the domain name with knowledge of Gamer.tv's claims was in bad faith. Bestinfo responded that:

• Gamer.tv had abandoned the domain name;
  
  
• Gamer.tv secured a trademark registration for the purpose of recovering the domain name;
  
  
• Bestinfo had not acted in bad faith; and
  
  
• Gamer.tv was engaging in reverse domain name hijacking.

Panellist Ross Wilson denied the complaint, despite finding that:

• the domain name 'dinkybomb.com' is identical or confusingly similar to Gamer.tv's DINKY BOMB trademark;
  
  
• Gamer.tv owns rights in that trademark; and
  
  
• its motivation for registering the trademark was irrelevant.

Wilson also found that Bestinfo had failed to demonstrate any right or legitimate interest in the domain name, noting that Bestinfo owns other domain names that, as in the case of 'dinkybomb.com', it uses to provide links to other sites for referral business.

Gamer.tv's claim faltered on the issue of bad faith. Wilson observed that the registration of a lapsed domain name does not necessarily amount to cybersquatting. He emphasized that the DINKY BOMB common law trademark most likely would not have been considered a well-known trademark at the time Bestinfo first registered the domain name.

Wilson did not focus on Bestinfo's original registration of the lapsed domain name. Instead, he considered the renewal of the domain name, at a time when Bestinfo was aware of Gamer.tv's claimed rights in the DINKY BOMB trademark. Wilson framed the issue as whether a bad-faith renewal of a domain name - rather than the original registration - is subject to the UDRP. He noted that applicant representations and warranties in Paragraph 2 of the UDRP refer not only to registration of a domain name but also to its maintenance and renewal. However, relying on the fact that the UDRP does not later refer to renewal, Wilson concluded that the word 'registration', when used in Paragraph 4 of the UDRP, cannot be considered a collective word for both 'registration' and 'renewal'. He also relied on prior WIPO decisions rejecting application of the UDRP in situations where the original registration was in good faith, particularly Teradyne Inc Teradyne Inc [sic] v 4Tel Technology. Accordingly, he refused to order the transfer of the domain name.

However, Wilson declined to find reverse domain name hijacking, concluding that Gamer.tv's motives for commencing the proceeding were reasonable, particularly because it had lost its right to the domain name through an inadvertent lapse of the registration.

David S Fleming, Brinks Hofer Gilson & Lione, Chicago