Predating and the UDRP: Timeline of Domains and Trademarks

In domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP), timing isn't everything—but it might be the most important thing. Understanding how dates interact can determine the outcome of a UDRP dispute.

Domain names and trademarks function like real estate in the digital world. Just as you'd want to know who laid claim to a piece of land first, the "who came first" question becomes crucial in these cases. This is where the concept of predating comes into play.

Consider a practical example: electronics company Mallard Inc. discovers someone has registered a domain name confusingly similar their trademarked string "Mallard". Before crying "cybersquatter," three critical dates need examination:

1) when Mallard first used their trademark in commerce,

2) when they registered their trademark, and

3) when the domain owner registered the confusingly similar domain name.

If the domain registration predates both Mallard's trademark use and registration, we're typically looking at a "good faith" registration, and good faith registration and use is a requirement under the UDRP. This makes logical sense–you can't be fairly accused of targeting a trademark that didn't exist when you registered your domain.

However, there are two important exceptions to this general rule.

• First, trademark rights can exist before registration through common law usage. If Mallard Inc. can prove they were using their mark in commerce before the domain registration, they might still have a case. But Mallard must affirmatively establish their earlier common law usage of the trademark under the standards that UDRP panelists require for establishing common law rights, including strong and serious evidence of use and of recognition by customers that the trademark is associated with Complainant’s goods or services.
• Second, and particularly interesting, is the "nascent trademark rights" exception. This applies when evidence shows the domain registrant knew about the trademark owner's plans to launch a brand or product and registered the domain to capitalize on the future trademark rights. This exception is narrow but important, particularly in cases involving product launches that were publicized before actual trademark use began.

Consider this timeline:

1) Mallard Inc. announces new product line of mobile phones: November 15, 2019

2) Domain registrant registers domain name including "Mallard" text: November 17, 2019

3) "Mallard" trademark first used in commerce: December 15, 2019

4) Trademark registered: March 1, 2020

Even though the domain registration technically predates the trademark use and registration, the registrant's knowledge of the impending product launch could defeat their "predating" defense under the exception for nascent trademark rights mentioned earlier. And note that a renewed trademark keeps its original priority date. It doesn't reset the clock.

For businesses considering a UDRP complaint, document your timeline meticulously. If the domain registration clearly predates your trademark rights and you can't prove nascent rights or common law usage, consider other options such as negotiation with the domain holder.

The key takeaway? When it comes to UDRP disputes, while the timeline often determines whether you have a valid case, context matters too. Understanding both the general rules about predating and their exceptions can save time, money, and the embarrassment of filing a doomed case.

For domain owners, maintaining good records of registration dates might serve as your best defense, but be cautious about registering domains when you know a trademark launch is imminent.

While dates can prove crucial, they're not the only factor in UDRP cases. However, they're often the first element examined and can determine a case's viability before deeper analysis begins. So check those dates, understand the exceptions, and document your timeline.