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2.2 Legitimate Interest arising from a Registration prior to the Complainant’s Trademark Rights

Without evidence of a complainant’s trademark rights at the time of a respondent’s registration, there is simply no foundation to conclude that a respondent has no rights in the domain name. Logically, a Complainant cannot meet this initial threshold of showing that a respondent has no rights, if the Complainant itself had no demonstrable rights at the time of registration. Indeed, upon registration of the Domain Name, the only person who had any rights or legitimate interest in the Domain Name, was the Respondent since the Complainant had no trademark rights at that time.

Additional Information

Relevant Decisions

Csi Danışmanlık Ve Destek Hizmetleri Anonim Şirketi v. Ghadah M, WIPO No. D2024-2062, <shirvanhotels.com>, 3-member, Denied

From this correspondence, therefore, it appears that the Respondent had adopted SHIRVAN for its hotel more than one month before the Complainant filed its application to register the trademark in Guinea. The Complainant has not provided any evidence, either in the Complaint or its supplemental filing, which would provide a basis for the Panel to conclude the Respondent had somehow got wind of the Complainant’s plans before deciding to rebrand its Jeddah hotel. In these circumstances, there is no basis for the Panel to conclude that the Respondent adopted the name SHIRVAN HOTEL to usurp the Complainant’s rights.

Here, however, the Respondent’s adoption and use appears to have commenced before the Complainant’s rights. In light of the Respondent’s prior use, the Complainant has not, at least on the record before the Panel, sustained its burden of showing that the Respondent’s use was infringing and therefore not legitimate. In these circumstances, therefore, the Respondent has demonstrated it is using the disputed domain name in connection with a bona fide offering of hotel services

WEX Inc. v. Tom Soulanille, Forum FA2204001991413,  <wex.com>, Denied, RDNH

On those basic facts, Complainant has to show, prima facie, that Respondent has no right to the domain name and no legitimate interest in it. That seems to the Panel to be an impossible task; prima facie, the Respondent had every right to register the domain name as it was the first in time to come to the table and was clearly not copying another party, as no other party had registered a similar domain name.

Klir Platform Europe Limited v. David Hendrix, CIIDRC 15008-UDRP (2021), <klir.com>, 3-member, Denied, RDNH

The Panel finds the Respondent had a right and legitimate interest when he acquired the Domain Name in 2016, before the Complainant or any related entity had any rights or interest in the KLIR trademark or trade name, and continues to have a legitimate interest in the Domain Name.

Riveron Consulting, L.P. v. Stanley Pace Forum, FA1002001309793, <riveron.com>, Denied

Because the <riveron.com> domain name registration pre-dates Complainant’s trademark registration as well as Complainant’s first use of the  RIVERON mark, under Policy 4(a)ii and as discussed below 4(a)iii, Complainant logically needs to show either that it had common law trademark rights in RIVERON at the time the disputed domain name was registered despite the first use date reflected on its USPTO registration,  or show that Respondent’s  rights and interests in <riveron.com>, although ripe  at the time of registration, have since been vitiated.

Digest Commentary