UDRP Inheritance vs trademark in UDRP

[pb]

So, in theory, a generic domain hit with UDRP should be safe if its registration predates a trademark, unless it changed hands after the TM had been registered. But what if the registrant change was a result of inheriting the domain/portfolio? Will it be considered as a change "in good faith", unlike willfully purchasing a TM-colliding domain?

 

[cyberlawyer]

Yes it will still be considered as good faith, as long as no presumption can be drawn that you had actual or constructive knowledge of the registered Trademark.

Even in case of generic term, it will depend upon how famous a mark is, say Apple. So even if it is a part of portfolio... depending upon other factors UDRP may hold up the principle that it refer to as 'wilful blindness'.

Though in majority of the circumstances, it would be safe, given the generic meaning and how commonly it is in use by various other entities.

 

[jberryhill]

The question is not about what kind of domain name will survive a UDRP. The question is whether an otherwise unassailable senior domain name will retain seniority over a junior mark if the domain name changes ownership due to inheritance. There are two UDRP cases which have addressed this specific question.


Viking Office Products, Inc. v. Natasha Flaherty
NAF Claim Number: FA1104001383534
https://www.adrforum.com/DomainDecisions/1383534.htm

Respondent and her deceased husband (the original registrant of the disputed domain name) are/were commonly known by the disputed domain name as it is associated with their email addresses, <[email protected]> and <[email protected]>. […]

Respondent's husband, Paul Flaherty, originally registered the disputed domain name on August 10, 1997 and Respondent became the registrant of the domain name after his death on March 16, 2006. The domain name was used as her husband’s personal domain and hosted email for both Respondent and her late husband. Respondent contends that the <viking.org> domain name has strong sentimental value and represents the legacy of her deceased husband. Respondent says that the website resolving from the disputed domain name inadvertently went offline sometime after her husband’s death. However, Respondent also says that the disputed domain name has been continuously used for email services since 1997. Additionally, Respondent indicates that she restored the resolving website from archives on April 16, 2011 confirming its historic content and function.


Avomex, Inc. v. Tina D. Pierce Widow of Barry E. Pierce
WIPO Case No. D2011-1253
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-1253

In January, 2004, Barry Pierce registered the Domain Name with registrar GoDaddy.com. Tina D. Pierce Widow of Barry E. Pierce acquired the Disputed Domain Name after Barry Pierce died in 2006, receiving ownership through Barry Pierce’s estate. Barry Pierce / Tina D. Pierce Widow of Barry E. Pierce (“Respondent”) have continuously and properly renewed the domain registration during the period relevant here, but have not changed the registrant’s name to reflect the new owner.