There are a lot of people that buy aged domain names. By aged I mean domains that have an old registration date. You can buy these domains either directly from the previous owner or in expiring domain name auctions. Although you can buy some pretty good keyword domain names there is no UDRP advantage in buying these aged domains if a trademark already exists before you acquire them. A change in domain name ownership is considered as a new registration as far as UDRP is concerned. If a trademark was registered between the initial registration and your acquisition date then the domain name is not treated a being registered before the trademark registration in a potential UDRP. Only the previous owner could have used this as a UDRP argument. Of course there are other aspects to a UDRP that most a mentioned below. Just remember that every UDRP case is different.
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) may not be a law, as it’s name suggests. It is a policy. But nevertheless it is governed by a set or rules, it is not merely dependened on prior decisions. Complainants, Respondents and Panelists use past decisions to support their arguments but there are usually decisions that support both sides of an argument. There is no precedent in UDRP.
Of course on most of these issues, consensus or clear majority views have developed. For example the WIPO Arbitration and Mediation Center has produced its informal overview of panel positions on key procedural and substantial issues. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) was published in 2011.
That being said there is one rule in UDRP that has not been questioned by any Panelist and/or any serious Respondent: “A change in ownership is considered as a new registration as far as UDRP is concerned.”
This is clearly mentioned in 3.7 Question of the WIPO Overview:
“While the transfer of a domain name to a third party does amount to a new registration, […].”
This rule is only relevant when trying to prove or not the 3rd element of the UDRP and specifically if the Respondent registered a domain name in bad faith. This is only half of the 3rd element of the UDRP. (“the domain name has been registered and is being used in bad faith”)
If the registration date or the date of acquisition (whichever comes later) of a domain name is prior to the date of the trademark registration then it is clear that the domain was not registered in bad faith.
This rule does not work the other way around. It does NOT mean that if a registration or acquisition date postdates a trademark then the registration was done in bad faith. In this case other factors are then taken into account such as the location of the Respondent as related to the trademark registration region etc. And again this only relates to the first half of the 3rd element of the UDRP.
So if the registration of a domain name predates the date of a trademark registration then the UDRP complaint should be denied without going into much consideration of the other parts of the UDRP policy. And if many such cases reverse domain name hijacking (RDNH) has been found.
The only exception to the rule above is if you transfer the domain to maybe some other member of your immediate family (or in a case of death) or if a company changes names or is acquired as a whole by another company etc.
I also have to point that if a domain name is transferred to a new owner with a preexisting business and/or trademark then this case is generally not treated as an individual domain name transfer would.
So there is no UDRP advantage in buying aged domains if a trademark already exists. This is something that all registrants should be aware of. Of course as I always say the most important argument you can have in order to defend a domain name in a UDRP is usage. Use the domain name avoiding any new or old trademarks and you will be mostly safe.
I wrote this post because there is some wrong notion that this rule “While the transfer of a domain name to a third party does amount to a new registration, […].” is adopted by a small percentage of panelists. No, this is a rule followed by everybody involved in the UDRP process and has nothing to with legitimate use or bad faith usage. These are examined separately.
Finally, I have to say that I thought of providing some links to decisions that have followed this rule but I saw no point in that as I was not able to find a single case advocating the opposite. If anyone wants a few links just leave a comment.