World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Imagine Solutions, Inc. v. Encapture.com, Privacy Services / Ravindra Kumar Lahoti

Case No. D2013-0268

1. The Parties

Complainant is Imagine Solutions, Inc. of Farmers Branch, Texas, United States of America (“US”), represented by Carstens & Cahoon, LLP, US.

Respondent is Encapture.com, Privacy Services of Vancouver, Canada / Ravindra Kumar Lahoti of San Diego, California, US, represented by Steven L. Rinehart, US.

2. The Domain Name and Registrar

The disputed domain name <encapture.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2013. On February 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 21, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 25, 2013.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2013. The Response was filed with the Center on March 18, 2013.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 4, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the owner of registration of the word trademark ENCAPTURE on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3,323,174, registration dated October 30, 2007, in international class (IC) 9, covering computer software for imaging purposes, as further specified, claiming first use and first use in commerce of November 30, 2005. Application for the aforesaid registration was filed on February 9, 2007, serial number 77-103,989. Complainant is the owner of registration of the word and design trademark ENCAPTURE, featuring a stylized arrow within a line-drawn circle to the left of the lowercase term “encapture”, on the Principal Register of the USPTO, registration number 3,396,052, registration dated March 11, 2008, in IC 9, covering computer software (as above), claiming first use and first use in commerce of November 30, 2005. Application for the aforesaid registration was filed on October 26, 2005, serial number 78-740,890.

Complainant was founded in 1998 and provides enterprise content management services. It develops and licenses computer software programs that assist its customers in digitizing, storing and managing electronic data content. In 2005 Complainant finished developing and began to sell ENCAPTURE branded software “which provides businesses with cost-saving means for processing content residing originally on paper documents or in electronic files point of contact. The ENCAPTURE software digitizes the content and routes it securely to the right systems, processes and people within the business for further use and storage”. Complainant has provided a copy of a detailed Installation Guide for ENCAPTURE software, version 2.1, with copyright date of 2005 (and shown as “First Edition (November, 2005)”). This installation guide uses the ENCAPTURE word and design trademark as the software logo, but also refers to the product as ENCAPTURE within the text of the installation guide. Complainant operates a commercial website at ‘’www.imaginesolutions.com’’, where it markets the ENCAPTURE “enterprise capture platform”.

According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to registration records provided by Complainant and confirmed by Respondent, the disputed domain name was registered by Respondent on February 18, 2007, following Respondent’s acquisition of the disputed domain name from Pool.com. From a Domain Tools WhoIs history provided by Complainant, it appears that the disputed domain name was originally created in late December 2004, although the identity of the original registrant and registrar is not on the record of this proceeding.

According to Waybackmachine screenshot archive records provided by Complainant, as of January 26, 2005, the disputed domain name resolved to a blank page headed by the disputed domain name, and indicating it had recently been acquired by Pool.com. A screenshot dated February 7, 2008, from DomainTools.com shows a link farm page with link references referring to digital photography, “photo editing software”, and “contract management software”, among various listings. A screenshot dated August 15, 2008, includes links to “computer software” and “free software downloads”. Screenshot captures from 2009 show random text and an email mechanism for contacting “encapture.com”. Screenshot captures for 2010 are largely similar, until September 26, 2010 when a more sophisticated link farm page appears, also showing various types of video and editing software, as well as contract management software. Screenshots appearing through April 24, 2011 indicate “Image Supplied by DomainTools.com”. There is an 800 number listed for contacting encapture.com as of April 24, 2011. As of May 8, 2012, the disputed domain name does not resolve to a server. As of June 18, 2012, a screenshot shows the heading “ENCAPTURE-To Capture”. As of August 12, 2012, a screenshot shows a variety of photographs with no discernible common thread posted under the heading “ENCAPTURE.COM”. A screenshot dated January 13, 2013, shows primarily pictures of restaurant food dishes.

By certified letter dated March 23, 2012, Complainant (through its counsel) transmitted a cease-and-desist and transfer demand to Respondent, offering USD 1000 for transfer of the disputed domain name. By an email-transmitted letter dated May 17, 2012, Respondent (through his counsel) advised Complainant of his belief that Complainant’s ENCAPTURE trademark was subject to cancellation because it was merely descriptive and had not acquired secondary meaning, and that Complainant had delayed in seeking relief if it considered that the disputed domain name had been registered in bad faith. Respondent made a counter-offer to assign the disputed domain name to Complainant for the sum of USD 50,000, or to discuss the matter further. Subsequent email exchanges between Complainant’s and Respondent’s counsel followed. Complainant’s counsel expressed the view of its client that a request for USD 50,000 was “extortionary”. Respondent’s counsel indicated that the sum might be reasonable depending on the business case, and that in any event the disputed domain name was worth “quite a bit more than $1000”. The parties did not reach agreement.

Complainant has provided evidence that Respondent has been defendant in a U.S. federal court litigation regarding registration and misuse of domain names in which the trial court judge determined:

“DMV.ORG is not the only misleading domain name that Defendants have registered and exploited. Defendant SeriousNet, and by extension its owner Ravi Lahoti, have displayed a pattern of registering misleading domain names such as ‘lasuperiorcourts.org’, (Ravi Lahoti Dep. 48: 7–19: 19; 51: 16–54: 10), ‘USTREASURY.ORG’ and ‘USDEPARTMENTOFHOMELANDSECURITY.ORG’, (Id At 54: 11-55: 18) that redirect visitors to Defendants' own websites, including DMV.ORG, and other affiliates.” TRAFFICSCHOOL.COM v. EDRIVER, 633 F. Supp. 1063, 1081 (C.D. Cal. 2008) (rev’d and remanded on terms of overbroad injunctive relief, but requiring that defendants (including Responent) pay plaintiff’s attorneys fees as they had deliberately misled consumers, 653 F.3d 820 (9th Cir. 2011)).

Complainant has provided evidence that Respondent previously has been complained against under the Policy and has been found to have registered and used domain names in bad faith, particularly referring to Baccarat SA v. Serious|Net, WIPO Case No. D2003-0428; and also 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110.1

The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant contends that it has rights in the trademark ENCAPTURE as evidenced by registration on the Principal Register of the USPTO, and as substantiated by use in commerce in the United States at least as early as November 2005.

Complainant argues that the disputed domain name is identical to its trademark within the meaning of the Policy.

Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has no business relationship with Respondent, and has never authorized Respondent to make use of its trademark in the disputed domain name; (2) Respondent has not used the disputed domain name for a bona fide offering of goods or services prior to notice of the dispute, with most use either in connection with a pay-per-click parking site or a landing page with contact information; (3) Respondent has not been commonly known by the disputed domain name, and has concealed his identity through a privacy service; (4) Respondent has not made a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, and (5) Respondent has used the disputed domain name in an attempt to extract payment from Complainant. Complainant argues that it has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.

Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name nine days following Complainant’s filing of its second trademark application with the USPTO, a time period during which Respondent may have identified Complainant’s application through the USPTO electronic registration database (TESS); (2) Respondent responded to Complainant’s good faith offer to purchase the disputed domain name for USD 1000 by making a counteroffer for USD 50,000, suggesting that Respondent was seeking the highest price possible from Complainant; (3) Respondent is a “serial cyber squatter, who registers, uses, and traffics in domain names that are identical or confusingly similar to famous or distinctive trademarks owned by other parties”, establishing the pattern of conduct referenced by paragraph 4(b)(ii) of the Policy, and; (4) Respondent has used the disputed domain name in connection with a pay-per-click website “for most of time during his ownership of the disputed domain name”, and at least some Internet users ended up at Respondent’s website thinking they would be directed to Complainant’s trademark products.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent contends that he is a “domain name investor” who makes a living buying and selling domain names, and maintains “registrations on thousands of domain names incorporating generic, or quasi-generic, domain names, including the domain underlying this proceeding”. Respondent argues that he registered the term “encapture” because of its “generic meaning (to ‘capture’)”, speculating that it would have commercial value “as all generic domains do”. Respondent contends that trafficking in generic or descriptive domain names has been held to constitute legitimate use under the Policy. Respondent further argues that he had no knowledge of Complainant’s trademark when the registered the disputed domain name, and therefore using the dictionary word, generic or descriptive phrase, for advertising links may establish rights or legitimate interests.

Respondent argues that the term “encapture” appears in “numerous online dictionaries”, referring to “Wiktionary”, “Wordnik”, “Nice Definition” and “Defitions.net”. Respondent also refers to “hundreds of instances of it being used colloquially”, referring to five examples. Respondent contends that use of common words in domain names constitutes good faith registration and use if Respondent can show that he made demonstrable good faith preparations to use the disputed domain name.

Respondent contends that use of the disputed domain name in connection with a generic landing page that contains no references to Complainant does not constitute bad faith, and Respondent is not offering services similar to those of Complainant.

Respondent claims that during the six years he has owned the registration for the disputed domain name he did not offer it for sale until after Complainant threatened litigation. Respondent argues that it has “long been held by all UDRP panels that settlement offers made after the dispute is created are not offers for sale under the Policy,” and may even constitute evidence of good faith.

Respondent contends that passive use is not prohibited by the Policy unless the relevant term in the domain name could only be used with the trademark owner’s permission. Respondent argues that all passive holding is not evidence of bad faith. Respondent contends that it is possible to conceive of a use of the disputed domain name other than to interfere with Complainant’s business because “encapture” is a generic term. Respondent contends that Complainant’s trademark is not well known.

Respondent argues that Complainant did not have rights in its trademark in 2007, and “has not even alleged a common law trademark rights” as of that date, much less submitted evidence to support such a contention. Respondent contends that because Complainant did not have trademark rights at the time Respondent registered the disputed domain name, his registration could not have been undertaken in bad faith.

Respondent contends that the Complaint is barred by laches.

Respondent contends that Complainant’s ENCAPTURE trademark is generic or commonly descriptive and cannot serve as the basis for enforcement of rights.

Respondent requests the Panel make a determination of reverse domain name hijacking against Complainant because Complainant is “attempting to stomp on the rights of the Respondent”.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to the Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center notified the Complaint to Respondent and Respondent filed his Response in a timely manner. The Panel is satisfied that Respondent was notified of the Complaint and was afforded a reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of its use of the trademark term ENCAPTURE in commerce in the United States as early as November 2005, and of registration of the term on the Principal Register of the USPTO as a word trademark and a word and design trademark. Application for registration of the word trademark was made on February 9, 2007, and application for registration of the word and design trademark was made on October 26, 2005. Registration on the Principal Register establishes a presumption of validity and ownership of the trademark under the Lanham Act, though such presumption is subject to challenge, including on grounds that the trademark term is generic in relation to the relevant goods or services (15 U.S.C. § 1115(a)) (see generally Park ‘N Fly v. Dollar Park and Fly, 469 U.S. 189 (1985)).

Respondent has alleged that the term ENCAPTURE is generic in the sense of describing “to capture”. To begin with, the term “encapture” is not listed in the Merriam-Webster online dictionary2 or in The New Shorter Oxford English Dictionary,3 two standard reference works.4 This argues against consideration as a generic term, even as the term is defined in “Wiktionary” and “Wordnik” as stated by Respondent. More important for present purposes, Complainant has registered the term “encapture” as a trademark in connection with computer software used for imaging purposes. Respondent has provided no evidence that the term “encapture” refers to a type of computer program used for imaging as a genus or class of thing. Even assuming that the term “encapture” is generic or commonly descriptive of something (which premise the Panel does not accept), Complainant may still use “encapture” as a trademark term in connection with something for which it is not generic or commonly descriptive. See, e.g., Urban Home v. Technology Online LLC / Whois Privacy Service Pty Ltd., WIPO Case No. D2012-2437. The Panel rejects Respondent’s argument that Complainant’s ENCAPTURE trademark is generic and therefore may not serve a trademark function.

The Panel further rejects Respondent’s argument that, to the extent Complainant’s trademark term ENCAPTURE is descriptive, Complainant has failed to demonstrate secondary meaning in the term. Complainant has provided substantial evidence of long use of the term “encapture” in connection with the marketing and sale of a computer program.

The Panel determines that Complainant has rights in the trademark ENCAPTURE. Pursuant to the Lanham Act (15 U.S.C. §1057(c)), the filing date of an application for registration constitutes constructive use of the mark, conferring a nationwide right of priority, contingent on registration of the mark. See Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033. The Panel will revert to the date on which Complainant acquired rights in its ENCAPTURE trademark in the discussion of bad faith registration and use.

The disputed domain name is identical to Complainant’s ENCAPTURE trademark within the meaning of the Policy.5

The Panel determines that Complainant has rights in the trademark ENCAPTURE and that the disputed domain name is identical to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))

Complainant has argued that Respondent lacks rights or legitimate interest because: (1) Complainant has no business relationship with Respondent, and has never authorized Respondent to make use of its trademark in the disputed domain name; (2) Respondent has not used the disputed domain name for a bona fide offering of goods or services prior to notice of the dispute, with most use either in connection with a pay-per-click parking site or a landing page with contact information; (3) Respondent has not been commonly known by the disputed domain name, and has concealed his identity through a privacy service; (4) Respondent has not made a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, and (5) Respondent has used the disputed domain name in an attempt to extract payment from Complainant. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent contends that it has rights or legitimate interests in the disputed domain name because the term “encapture” is generic or descriptive, and that it has used the term in connection with a parking page, and to a link farm page directing Internet users to advertisers that are not competitors of Complainant. However, while Respondent’s website advertising links are no longer active and accessible, the subject matter of those links refers to providers of goods and services that may well be competitive with those of Complainant, including “contract management software” and “computer software”, part of the class of goods for which Complainant’s trademark is registered. This suggests that the algorithm creating advertising link results through the use of Complainant’s trademark term may have associated those links with products like Complainant’s trademark product. Absent the trademark usage, the term “encapture” might not otherwise be associated with contract management software or computer software in general. Under these circumstances, Respondent has failed to demonstrate that use of the disputed domain name in connection with a link farm advertising parking page establishes rights or legitimate interests.

Respondent has further argued that he acquired the disputed domain name as a generic or descriptive term in speculation that it would “eventually have commercial value as all generic domains do”. Because Complainant had trademark rights in the term ENCAPTURE when Respondent registered the disputed domain name, Respondent was not acquiring a generic or merely descriptive term. The value of that term did not reside in an inherent generic value, but rather in a value based on Complainant’s trademark product.

Respondent has failed to rebut Complainant’s prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel determines that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

Respondent has argued that he could not have undertaken registration in bad faith because Complainant did not have rights in the ENCAPTURE trademark when he registered the disputed domain name. The Panel does not disagree with the jurisprudential premise underlying Respondent’s argument; namely, that if Complainant did not have trademark rights when Respondent registered the disputed domain name then, as a general proposition under the Policy, Respondent could not have registered the disputed domain name in bad faith.6 It is not necessary to belabor the jurisprudential issue here because Complainant had rights in the trademark ENCAPTURE when Respondent registered the disputed domain name.

Complainant has provided substantive evidence of use of the ENCAPTURE trademark in commerce as early as November 2005 in the form of a detailed installation guide for its ENCAPTURE software product. Complainant has asserted date of first use in commerce in its trademark applications of November 30, 2005. An assertion of first use in an application for registration is not evidence of use, nor does it establish a presumption, (see, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033). However, the assertion here is supported by concrete evidence.

As noted earlier, the date of application for trademark registration serves as constructive first use contingent upon issuance of the registration.7 Complainant filed its application to register the word trademark ENCAPTURE on February 9, 2007, and the registration issued on October 30, 2007. Complainant’s priority rights date back to the date of application. Complainant has demonstrated constructive use of the trademark as of that date. The disputed domain name was registered by Respondent on February 18, 2007, after Complainant established priority rights in its word trademark. Furthermore, Complainant filed its application to register the word and design ENCAPTURE trademark on October 26, 2005. Registration of the word and design mark issued on March 11, 2008. The contingency of registration was fulfilled. Complainant established a nationwide right of priority in respect to use of the word and design trademark ENCAPTURE dating back to late 2005.

Complainant has established trademark rights prior to the date that Respondent registered the disputed domain name. There is no bar to a determination that Respondent registered and used the disputed domain name in bad faith.

There are several factors that point to bad faith registration and use of the disputed domain name by Respondent. As just noted, Complainant’s trademarked ENCAPTURE software product was on the market when the disputed domain name was registered by Respondent. Despite Respondent’s protestations to the contrary, the term ENCAPTURE is not commonly used in the English language. It is not listed as a defined term in standard English language dictionaries, including Merriam-Webster’s and The New Shorter Oxford English Dictionary. There is little foundation by which the Panel might accept Respondent’s argument that he registered this “generic” term in the expectation of future value based on its generic utility. While there is nothing in the Policy to preclude a domain name registrant from registering and speculating in the value of generic or descriptive terms, Complainant owned rights in the trademark ENCAPTURE at the time it was registered by Respondent. Respondent appears to have been speculating on the future sale of the disputed domain name to Complainant. In addition, there is evidence on the record from at least two prior UDRP proceedings that Respondent has engaged in a practice of registering the trademark terms of third parties. Had Respondent conducted a routine USPTO trademark database search prior to registration of the disputed domain name, he would have found two pending trademark applications in favor of Complainant, each of which would establish constructive use and priority in favor of Complainant when the registrations issued. Finally, Respondent used the disputed domain name to direct Internet users to a link farm page with links in the same class of goods as Complainant’s trademark product.

Based on this combination of factors, the Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.

Complainant’s action here is not barred by latches (see, e.g., Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560, and references therein).

The Panel will direct the Registrar to transfer the disputed domain name to Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <encapture.com> be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Date: April 17, 2013


1 The latter case identified through the Panel’s search of the WIPO Center index using Respondent’s surname.

2 Panel search of April 16, 2013, at http://www.merriam-webster.com/dictionary/encapture

3 Panel search of hardcopy 1993 edition, where the term would have appeared, were it defined, at page 813 (Oxford University Press).

4 The term also does not appear in the online Farlex Free Dictionary, at http://www.thefreedictionary.com/encapture. Panel search of April 16, 2013.

5 Addition of the generic top-level domain identifier ".com" is not relevant to the determination of identicalness in circumstances such as those present here.

6 Further to substantial precedent of panels rendering decisions under the Policy, including this Panel, a respondent may not be found to act in bad faith to register a domain name prior to the complaining party having established rights in its trademark (with some potential narrow exceptions not relevant here). See generally Diet Center Worldwide, Inc. v. Jason Akatiff, WIPO Case No. D2012-1609.

7 The U.S. Lanham Act provides: “Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing--(1) has used the mark; (15 U.S.C. §1057(c))”

 

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