Why didn’t the trademark holder just say what happened?

The Complainants in this UDRP should have explained the circumstances to the panelist.

Woman scratching her head in confusion
There’s more to this story, but the Complainant confusingly didn’t spell it out for the panelist.

I’m perplexed after reading a UDRP decision (pdf) for bewellbydrfranklipman .com.

The Complainant, Dr. Frank Lipman of Be Well Health & Wellness, filed the case against the domain in March. It cited a trademark registration filed in 2011, citing first use on May 25, 2011.

The domain was registered on March 23, 2011, two months before the claimed first use in commerce.

For some reason, the Complainant didn’t explain these dates. Why did someone register the domain two months before the Complainants filed this very specific trademark?

The domain owner didn’t respond to the case. So panelist Georges Nahitchevansky had nothing to go on to figure out the dates. He correctly assumed there was “more to the story,” but he needed the Complainant to show what the “more” was:

Nevertheless, it does not seem coincidental that Respondent registered the disputed domain name using the identical wording and name that appeared in Complainant’s BE WELL BY DR. FRANK LIPMAN trademark some two months before Complainant or its predecessor in interest began use of the mark. It thus appears to the Panel that there may be more to the story here than what limited evidence Complainant has provided. Notably, the Panel notes that Complainant (i) did not produce any evidence showing any actual use of the BE WELL BY DR FRANK LIPMAN mark since May 25, 2011 (the date of claimed first use of the mark), (ii) provided no explanation regarding the registration or past use of the disputed domain name, (iii) submitted no evidence tending to show that Complainant might have established common law rights in the BE WELL BY DR. FRANK LIPMAN mark or DR. FRANK LIPMAN name prior to the registration date of the disputed domain name, and (iv) made no proffer regarding the original registration of the disputed domain name or anything that might have happened with the disputed domain after its registration in March 2011.

A little digging around shows what happened. The Complainants registered the domain in March 2011. It started using it to promote its services a while after that. Then it let the domain expire last year. Because of the site’s history, it sold for $750 on GoDaddy auctions. The new buyer put up a site promoting CBD that mimics the trademark.

There. Was that so hard for the Complainant to explain? Perhaps it thought that the panel would say it lost its rights by letting the domain expire. But that’s not how it works; just because someone lets a domain matching their trademark expire doesn’t mean they lose rights to the trademark.

Nahitchevansky made the rare move of dismissing the case with prejudice, suggesting the Complainant refile with evidence that the domain transferred after it was originally registered. The Complainant’s lawyers at Brennan, Manna & Diamond, LLC would be wise to take him up on this offer and not bill their clients for the extra work.

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