Is trademark search necessary before registering a domain name?

Domain names play a huge role in a company’s branding. There can be possible cases where someone registers a domain name that might be infringing upon someone else’s trademarks and brand names. Hence a little search is always advised before registering a domain name. However, is it absolutely necessary? Let’s see what the WIPO has to say.

Delta Dental Plans Association is a company that works under the brand name DELTA DENTAL. However, along with DELTA DENTAL, it also owns the trademark rights over DELTALIFE. The related trademarks were registered on May 11, 2021. The Complainant presented a flyer as evidence where the mark DELTALIFE was associated with Term Life insurance and Short-Term Disability plans.

However, on May 11, 2021 the domain name was acquired by the Respondent at an auction. The domain name used to display PPE links related to Term Life Insurance Quotes, Whole Life Insurance Quotes, and Life Policy. After a receipt of this by the complainant, the respondent removed the PPE links. Respondent is a domain name investor and presents the domain name as a part of its several DeltaLife related acquisitions. Both the parties had a conversation about the domain name in 2022 also.

The panel found that the date of registration of trademark did precede before the registration of domain name. However, it must be established as to whether the respondent was supposed to look for related trademarks or companies, before registering a domain name. Both the parties had a conversation about the domain name in 2022 also.

The panel admitted that although Delta and Life are dictionary items, joining them gives it a uniqueness. The panel also observed that the Respondent is based in Korea while the Complainant is based in the USA. Under such conditions, another point emerges as to what would a Korean search over the disputed mark would result? Would it be the same as that of the US or different? 

The panel observes that the complainant hasn’t a very obvious digital presence. The panel decided that under the condition it could not be established that registering the said domain name would have been in bad faith. The complaint was thus denied.

Read the case in full detail here.


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