Rights in mark need not predate domain name registration under UDRP

In Clear!Blue Holdings LLC v NaviSite Inc, a National Arbitration Forum panel has issued a decision under the Uniform Domain Name Dispute Resolution Policy which confirms that a complainant need not necessarily show that its rights in its mark predate the registration of the disputed domain name in order to satisfy the requirements of the UDRP.

The complainant, Clear!Blue Holdings LLC, is the owner of several US trademark registrations protecting CLEAR BLUE for communication services. These registrations were applied for in 2001. It has also owned the domain name 'clearblue.biz' since March 2002.

The respondent, NaviSite Inc, is a technology company providing a variety of technology services. It apparently acquired the domain name in dispute in 2002 some six years after it was initially registered. NaviSite was using the domain name for over 60 different email addresses and, when accessed, the domain name redirected the user to NaviSite's website.

After Clear!Blue Holdings initiated proceedings with the National Arbitration Forum on January 12 2007 NaviSite contended, among other things, that Clear!Blue Holdings had failed to prove prior rights in the CLEAR BLUE marks and that Clear!Blue Holdings did not have exclusive rights in the term 'clear blue' as it was generic.

Notwithstanding the prior registration of the domain name, the panel held that (i) Clear!Blue Holdings could still establish rights in the CLEAR BLUE mark, especially since NaviSite did not furnish any proof of use of the domain name prior to the acquisition in 2002, which was after Clear!Blue Holdings' registered its trademarks in 2001; and (ii) the domain name at hand was confusingly similar to Clear!Blue Holdings' marks.

Therefore, Clear!Blue Holdings had met the first prerequisite of the three-prong test in Article 4 of the UDRP, namely the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The panel also concluded that Clear!Blue Holdings had made a prima facie case showing that it had rights or legitimate interests in the disputed domain name since it had not authorized NaviSite to use the CLEAR BLUE marks. Furthermore, NaviSite's assertion that 'clear blue' amounted to a generic term was dismissed on the grounds that the trademark registrations withdrew them from the public domain with respect to the claimed services. Other invalidity grounds needed to be made through a petition for cancellation or through court action.

However, the complaint was eventually dismissed on the grounds that Clear!Blue Holdings failed to prove the requisite bad faith. The panel held that mere knowledge of the existence of the CLEAR BLUE marks did not engender the level of intent required for bad faith. This could only be the case if the CLEAR BLUE marks were indeed famous and widely used, but this was not proved by Clear!Blue Holdings. Furthermore, Clear!Blue Holdings did not allege that NaviSite was a trafficker in domain names.

This decision is particularly interesting since it once more emphasizes the fact that the wording of Article 4(a)(i) of the UDRP does not imply that the rights to a trademark need always to have existed prior to the domain name registration. The World Intellectual Property Organization has come to the same conclusion on this issue in its "Overview of WIPO Panel Views on Selected UDRP Questions", which provides, in relevant part, that the "[r]egistration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity". However, junior rights to a trademark may prevent a finding in favour of the complainant due to the bad faith element under 4(a)(iii) of the UDRP. The fulfilment of this element then might usually be limited to cases where the respondent had actual knowledge or should have been aware of the mark, for instance where the mark was well known or widely used.

Marco Bundi, Meisser & Partners, Klosters