The National Arbitration Forum decision featured the disputed domain freegeek.com, which was registered by the respondent in 2001.
This predated the complainant's trade mark in Free Geek. However, in the January 31 decision, the three-person panel did consider whether the respondent's renewal of the domain after the mark Free Geek was issued by the USPTO in 2006 constituted bad faith registration.
The chair of the panel Glen Ayers wrote that he was "concerned that the Respondent renewed the registration after the trademark was applied for", but in this case the evidence of any other elements of bad faith were non-existent and so ruled out such considerations.
Ayers cited an earlier NAF decision made in October 2010, RapidShare AG and Christian Schmid v Fantastic Investment Limited, which considered the re-registration of the domain.
In that case, the domain rapidshare.net was registered before RapidShare gained its trade mark, but the domain was transferred to a different registrant after the mark was registered and this act was judged to have constituted a registration and use in bad faith by the respondent.
In the freegeek.com decision, however, one of the panel - the decision doesn't say who - disagreed with Ayer's approach of looking at the renewal of the domain. Ayer's approach appears to go against the consensus view set out in the WIPO Overview of Panel Views:
While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name.
In this case, freegeek.com was registered by the respondent in December 2001. The company Free Geek was set up in 2000, but any attempt to assert common law rights was quashed by the panel, who believed the complaint was not well known outside its locality.
During the intervening years the respondent, known as FreeGeek.com c/o Nameview Inc Whois Identity Shield, built up a site that contained pay-per-click links.
This was judged legitimate. "During the period before issuance of the mark, Respondent has clearly demonstrated that it acquired rights in the name by usage even if the usage has been limited to a 'pay-per-click' links page," wrote the panel.
The panel cited Kaleidoscope Imaging, Inc. v. V Entm't, a NAF decision from 2004, which said that the respondent used the "domain name for a bona fide offering of goods or services because the term was "generic" and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes".
On the bad faith question, the panel wrote that because by the time the mark was applied for by Free Geek and issued, the domain name had been in use and registered for many years and so no bad faith elements existed. This also was the determining factor, which ruled out any consideration of renewal of the domain.
The other panellists were Diane Cabell and Carolyn Johnson.
