Panel finds complainant lacks priority in carbwatchers dispute

In Labrada Bodybuilding Nutrition Inc v Glisson, National Arbitration Forum (NAF) panellist Peter L Michaelson has held that bringing an action to dispute a domain name when a complainant knows or should have known of the senior rights of the respondent constitutes bad faith and an attempt to commit reverse domain name hijacking.

Texas-based Labrada Bodybuilding Nutrition brought its complaint against Ohio resident Mike Glisson over his registration and use of the domain name 'carbwatchers.com'. Although Glisson's website only promised future content and had hosted no material since at least December 2001, Labrada claimed that the name incorporated its mark CARBWATCHERS in violation of the Uniform Domain Name Dispute Resolution Policy (UDRP).

On October 29 2001 Labrada filed an intent-to-use application for federal trademark registration of the mark CARBWATCHERS. In its complaint, Labrada contended that Glisson could have learned of this application as of November 2001 and that Glisson had not made any use of the disputed domain name since that time.

Glisson did not contest that the disputed domain name was identical or confusingly similar to Labrada's CARBWATCHERS mark. However, he asserted rights and legitimate interest in the disputed domain name, and rebutted Labrada's claims of bad-faith registration and use, based on the fact that his registration of the disputed domain name pre-dated Labrada's earliest federal trademark application by more than two-and-a-half years. Further, he charged that Labrada's UDRP complaint constituted reverse domain name hijacking and an abuse of the UDRP process.

Michaelson summarily denied Labrada's complaint based on the fact that Glisson's registration pre-dated Labrada's trademark application:

"[I]n order for a domain name to be registered in bad faith, a complainant must possess valid trademark rights, either through active registration or at common law, in that name or one confusingly similar to it at the time the [domain] name is registered. However, if no such trademark rights exist, as is the case here, then a respondent registrant can register that name with impunity relative to that complainant as the respondent simply has senior rights in that name and the complainant has no basis to question the respondent's registration by bringing a claim under the policy."

Additionally, Michaelson found that Labrada's complaint constituted an abuse of the Internet Corporation for Assigned Names and Numbers administrative process because "[i]t simply defies reason, and strains credulity, to think that [Labrada] did not know, prior to filing its complaint, that the respondent had senior rights in the disputed domain name". Labrada must have performed a Whois search before contacting Glisson because there was no other way that it could have ascertained who the registrant was. Labrada knew or should have known that Glisson's rights in the disputed domain name were superior to its own, yet it "persisted and intentionally filed its complaint". Michaelson found that Labrada used the UDRP process as a tool to try to wrest the disputed domain name and therefore brought its complaint in bad faith, committing reverse domain name hijacking.

This decision illustrates that if a respondent registered its domain name prior to a complainant establishing any trademark or common law rights in the name, the complainant will be unable to satisfy the requirements of the UDRP and prevail in its claim. Further, a complainant makes itself vulnerable to the charge of reverse domain name hijacking where it knows or should have known the respondent's domain registration date pre-dates any rights it might have.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC (with the assistance of Deena Braunstein, George Washington University)

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