While many of the Le Shark Trade Marks above marks are logo or figurative marks, UK mark No. 2302742 and CTM E2734788 are word marks for LE SHARK. I am therefore satisfied that the Disputed Domain Name is identical to these marks.
The key issue in this dispute is bad faith. This requirement is derived from Paragraph 4(a)(iii) of the Policy:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that: . . . (iii) your domain name has been registered AND is being used in bad faith. (emphasis added)”
Traditionally this was interpreted as requiring a conjunctive approach –so that bad faith was required at the two distinct points in time. There was authority that inferences could be drawn as to one of the periods —see e.g.Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. However more recently, some authorities have adopted a “unified“ analysis so that bad faith registration could be established “retroactively” by subsequent bad faith use. See City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786. These authorities and developments were discussed in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688. I refer to the excellent and able analysis in that decision. I cannot improve on it. Suffice to say that in that case, a different approach was taken –and I will adopt it here.
In Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688 the Panel considered that the undertaking at Paragraph 2 of the UDRP (incorporated by reference into the registration contract) could be interpreted as a representation as at a series of successive discrete dates;-
“By applying to register a domain name, or by asking [a registrar] to maintain or renew a domain name registration you hereby represent and warrant to us that . . . (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
On this basis that Panel found a renewal of a domain name may be equivalent to a new registration in appropriate circumstances. That case concerned a change of use. While I have some reservations about the potential for such an approach to negatively impact the delicate balance the UDRP strikes between the ‘first come first served’ domain name system and the genuine interests of rights owners and consumer protection—I agree with the principle (cited in Eastman Sporto) discussed in PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338 (“the benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in ‘possession' long after the original registration would have expired”).
I also note the cases where transfers of ownership among related entities have been found to be new or fresh registrations, see ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785.
Bad Faith Registration
The WHOIS data shows the Disputed Domain Name was registered in March 1997. We do not know the identity of the Registrant in 2005 or previously nor whether it was transferred between 2005 and 2007 and this would have been helpful. This information was requested from the parties but was not forthcoming. The Complainant’s case as to the sale and transfer of the Le Shark Trade Marks and goodwill in 2005 and covenants given at that time was not disputed and so I accept those facts as proved although I note that the Sale Agreement was not submitted. I find each renewal by the Respondent of the registration of the Disputed Domain Name after 2005 in bad faith in breach of the undertaking in Paragraph 2 of the UDRP.
Bad Faith Use
The Respondent has admitted its current use of the Disputed Domain Name for email and I find this is use in bad faith and a conscious and deliberate attempt to confuse. This certainly crosses the line delineating generally acceptable honest commercial behaviour.
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