What’s your duty to search for trademarks ahead of registering a domain?
The answer is nuanced.
You see a domain name in an auction that looks appealing. It’s comprised of a couple of dictionary words. You’re not aware of any trademarks that match it.
At this point, what’s your duty to check for trademarks ahead of acquiring the domain?
There’s no definitive answer, but there is some case history in UDRP. A recent case ads to this library of guidance.
In Delta Dental Plans Association vs. Kwangpyo Kim (pdf), the panel wrestled with this question over the domain name DeltaLife.com.
The Respondent purchased this domain for $3,555 in an auction in December 2021. The Complainant registered a U.S. trademark for DeltaLife earlier that year.
Kwangpyo Kim is a domain investor, and UDRP panels generally hold domain investors to a somewhat higher requirement to conduct due diligence ahead of buying a domain. The Respondent admitted that he had not searched for trademarks or Googled the term ahead of buying the domain. He only noticed that many other firms had registered similar domains.
But the panel looked at what he would have discovered had he searched Google ahead of registering the domain.
The Panel has reviewed the three pages of the Google search provided by the Respondent for “delta” and “life”. The Respondent states that it yields over 11,000,000 results for “delta life”, but, in fact, a search for the combined term, rather than for the separate words, yields approximately 44,000 results. The search reveals that “Delta Life” is used as a domain name by an insurance firm in the United States doing business under the domain name delta-life.com, a life insurance firm in Bangladesh using deltalife.org and a fitness franchise using deltalifefitness.com as well as (by way of example) other variants used for a book regarding life in river delta regions around the world and by a Mississippi delta clothing firm. Neither Party has identified any search result that identifies the Complainant or its use of “Delta Life” as a trade mark in any online search result. Indeed, the Complainant has failed to offer any evidence that its “Delta Life” mark is well-known anywhere.
In other words, even if the domain owner had searched ahead of time, he wouldn’t have found anything suggesting that the Complainant had a trademark for this term.
The Respondent is in Korea and wouldn’t necessarily need to search the U.S. patent database, where he would have found the trademark (among many other trademarks for Delta Life). Still, had all of the Google results for the search indicated that this is a famous trademark for a firm, the panel might have determined that the Respondent ought to have searched the U.S. database or not purchased the domain.
There’s one more wrinkle to this case. The pay-per-click parking page showed ads for insurance, which is what the Complainant’s trademark is for. But there are other insurance firms with this name, and, in fact, DeltaLife.com was once owned by an insurance firm. So the links might have been logical and not indicative of targeting the Complainant. The Respondent changed the links once he received the complaint and I question his judgment here: it now includes travel links. If there is a worldwide famous trademark for Delta, it’s for travel.
The three-person World Intellectual Property Organization panel found in favor of the domain owner but declined to find reverse domain name hijacking. I agree with both of these decisions.
