July 3, 2009
Drake University is a major seat of learning. Drake State University is, What? “It is not accredited by any accreditation body recognized by the U.S. Department of Education, and the Respondent’s website serves merely to provide a veneer of legitimacy to an otherwise illegitimate service.” The Respondent in Drake University v. Drake State University, D2009-0460 (WIPO June 17, 2009) claims that “Drake” is the surname of the founder, but submitted no evidence that such a person or educational institution actually exists. The website at <drakeu.com> “represents that ‘Drake State University’ is an outreach organization headquartered in California.”
A goodly number of cases pit trademark holders against respondents genuinely having personal and surnames identical or confusingly similar to the trademark. There must be many “Drakes” in the United States who may legitimately register a domain name containing their surname, but only one “Drake University.” There are no States of “Drake.” The website to which the domain name resolves makes no mention of the founder an omission which suggests that he was created for convenience (out of whole cloth?) but by adding the letter “u” misleads Internet users into believing that the website is sponsored, affiliated, or endorsed by the Complainant. In fact there was evidence of actual confusion.
The Paragraph 4(c) defenses test the respondent’s credentials and by extension its existence, in fact rather than fiction. The Respondent in Drake did not deny the allegation that it was non-accreditated thereby by silence admitting its truth. It is not that alone of course that exposes a respondent’s intention. From the totality of circumstances in the record “the Panel is persuaded that the Respondent more likely than not” sought to take advantage of the Complainant’s trademark and, although, not expressly stated, there is no reason to believe that the founder has (or had) any corporeal existence.
July 2, 2009
Capturing an Inactive Domain Name
The scope of the UDRP may be widening in certain respects, the recent example of domain name hijacking and other cases of abusive conduct, but not to the extent of letting latter-day trademark holders capture an inactive domain name registered many years prior to the complainant acquiring its right. The Respondent in Success Bank v. ZootGraphics c/o Ira Zoot, FA0904001259918 (Nat. Arb. Forum June 29, 2009) registered <successbank.com> following its abandonment by a bank known before its merger with another financial institution as “Success National Bank.” The Complainant is unrelated to the former Success National Bank. It changed its corporate name in 2007 and in January 2008 obtained a federal registration for SUCCESS BANK.
There have been a number of cases over the past year in which complainants like Success Bank have sought to enlarge trademark holder rights by alleging either that the respondent lacks rights or legitimate interests in the domain name – no bona fide offering of goods or services or commonly known by the domain name – or non use currently or over a lengthy period of time. The Complainant in NETtime Solutions LLC v. NetTime Inc. c/o Chad Wagner, FA0810001230152 (Nat. Arb. Forum December 19, 2008) proposed that a respondent can lose its right to a domain name if
his company has been dormant for at least 10 years; that his use of the domain name has not been in connection with bona fide offering of goods and services; that the domain name has been crippled by its non-use; [and] that by ceasing to trade Respondent has extinguished his rights in the name.
The complainant misconceives UDRP if it believes that a domain name can be awarded to the trademark holder unless the respondent proves a superior right to it. It would shift the burden of proof. The Panel in Success Bank properly rejected this argument:
The Complainant relies on the argument that once a complainant shows good title in a mark, the burden shifts to Respondent to defend use and bad faith. Complainant seeks to stretch that argument to the extreme. While Complainant has some rights in the SUCCESS BANK mark, those rights are years junior to the rights of Respondent due to registration of the domain. To hold for Complainant would be to say that one could peruse the lightly used or parked domains, initiate a trademark registration application years after the a disputed domain name was registered and then claim UDRP rights in the domain under the first element of the UDRP.
Even if it were held that the respondent lacked rights or legitimate interests in the domain name, a registration of a domain name prior to complainant acquiring a trademark right (there being no evidence of abusive conduct) is prima facie good faith. A “later business cannot just register a trademark and then subsequently use this procedure to remove a website from the Internet that uses the same name,” Rohl, LLC v. ROHL SA, D2006-0645 (WIPO July 12, 2006). In Success Bank, the Respondent submitted evidence of demonstrable preparation to use the domain name and in any event “Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”
July 1, 2009
A complainant does not succeed on the strength of a valid trademark registration. It has to assemble a record. The Panel in Transport Exchange Group Limited v. Tiriazo Technology Limited, D2009-0541 (WIPO June 15, 2009) (<courierexchange.com>) noted that “[o]ne of the problems with this dispute is that the factual background is far from clear.” Why? Because “[v]ery few of the factual assertions in either the Complaint or the Response are supported by any documentation.” Since the onus is on the complainant to prove its case, any deficiency in the record undercuts its position.
It is evident from the record that the Respondent was not unaware of the Complainant. Indeed, the Respondent “stressed the lengths to which it has gone to obviate any risk of confusion.” However, the phrase “courier exchange” is not exactly on the suggestive, arbitrary or fanciful end of the scale and the Complaint did nothing to help the Panel:
The Complaint fails to establish with any degree of certainty the extent of the Complainant’s business under and by reference to the name, “Courier Express”. The Panel has been given no sales figures, no advertising figures and no examples of any business literature or press cuttings. For all the Panel knows, the business may have been miniscule for 6 or 7 years and only developed into a substantial business over the last two or three years. If, as the Respondent claims, it acquired the Domain Name several years ago, it may have been reasonable for the Respondent to have concluded that at that stage, while there was a risk of confusion between the Domain Name and the Complainant’s domain name, <courierexchange.co.uk>, this was purely down to the descriptiveness of the two names, not to any secondary meaning acquired by the Complainant through long and extensive use.
By failing to offer the kind of evidence necessary to establish distinctiveness from the time it commenced its commercial operation under a trademark registered only recently acquired was insufficient. Worse, the Complainant damaged its credibility by failing to disclose the full exchange of correspondence relating to an offer for the domain name:
A factor which has made the Panel less willing to make assumptions in favour of the Complainant was the Complainant’s failure to put before the Panel the full correspondence between the parties, choosing instead to rely upon the final letter in the correspondence, being a demand of £25,000 for the Domain Name made on behalf of the Respondent. If the Respondent is correct, the Complaint fails to make clear that this demand followed an approach from the Complainant. Whether or not this was the case and whether or not it is of any relevance is impossible for the Panel to assess without sight of the full correspondence.
Of course, neither did the Respondent divulge the full correspondence, but the Complainant made no attempt to deny that the “demand followed an approach from the Complainant” and the Complainant's silence was an affirmation that the allegation was true.
June 30, 2009
A Transferee Inherits Transferor’s Bad Faith Registration
A domain name is freely marketable, but a transferee should not conclude the transaction before undertaking some due diligence. Caveat emptor! MasterCard International is the trademark holder of PAYPASS. Even if a trademark search is not a requirement, PAYPASS comes up number one on a Google search. The Respondent (who did not appear) in MasterCard International Incorporated v. C W, D2009-0497 (WIPO June 16, 2009) is a transferee “rout[ing] users to websites offering goods or services of Complainant’s competitors.”
As the Panel notes in a footnote, “UDRP Panels generally treat acquisition in bad faith as equivalent to registration in bad faith, and ‘although the Policy requires both registration and use in bad faith, it is clear that for the purpose of the Policy ‘registration’ may include registration on acquisition by a new holder.” The consensus is that transfer = registration:
The Panel finds that Respondent itself acquired the registration with awareness of Complainant’s mark in a deliberate attempt to attract Internet users to its website for commercial gain.... The Panel concludes, therefore, that Respondent registered the domain name in bad faith for purposes of the Policy.
The transferee inherits bad faith registration; its use in bad faith is deduced (in this case) from the content of the website. Although it was not the fact in this case, registration in good faith metamorphosing to use in bad faith is also inheritable. A transferee does not inherit its predecessor’s good faith registration.
The Respondent also had another strike against it. It concealed its identity. “Panels may draw inferences about bad faith registration or use in light of the circumstances, including a respondent’s concealment of identity, a lack of conceivable good faith uses for the domain name, or failure to reply to a complaint.”
June 29, 2009
No Rights Accrue From an “Intent to Use” Application
Martha Stewart Living Omnimedia, Inc. filed an “intent to use” application to register EVERYDAY FOOD which was denied as descriptive, but acquiesced in its being registered on the Supplemental Register. Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009). Within months of the application the Respondent registered <everydayfood.com> and <everyday-food.com>. The Complainant presented a policy argument that an “intent to use” application ought to be treated as notice of its prior rights to the trademark as would a subsequent registrant for the same term in the same Class(s):
Since the Respondent is located within the U.S., he has notice of Complainant's prior rights to its EVERYDAY FOOD mark. The fact of (a) the prior pending intent to use application combined with (b) the fact that a search of the USPTO records prior to the date of the registration of the Offending Domains would have revealed Complainant's claim to rights and (c) the fact of the nature of the use of the Offending Domains to promote competing goods and services via a pay-per-click interface which makes direct reference to Complainant and its MARTHA STEWART and EVERYDAY FOOD magazine marks all support a finding of bad faith registration.
While this is undoubtedly a forceful trademark analysis that would exclude another applicant in the same Class from claiming priority it does not prevent a respondent from registering a domain name identical or confusingly similar to the requested trademark. Until a trademark registrant is successful in proving distinctiveness – establishing entitlement to be on the Principal Register – it is vulnerable to what Martha Stewart regards as an interloper stepping in front it:
Complainant alleges that this is a straightforward case that offers the Panel a stark choice between applying the plain language of the Policy or creating a safe haven for U.S. based cybersquatters to poach domain names based upon Intent to Use trademark applications....
However, in proposing a “stark choice” the Complainant mis-construes the Policy. Such a principle is not found in the UDRP. Trademarks and domain names exist on different strata, intersecting only when a complainant satisfies the jurisdictional requirement for complaint. Rather, the Complainant’s argument is essentially one based on an unenforceable moral code: a domain registrant shalt not poach from an “intent to use” application. Since the Complainant in Martha Stewart did not have a protectable right at the time the Respondent registered the domain names it could prove none of the paragraph 4(a) requirements.
June 26, 2009
Panelists may “independently visit the Internet in order to obtain additional light” on a case [InfoSpace.com, Inc. v. Hari Prakash, D2000-0076 (WIPO April 6, 2000)] and perform “limited modest factual research.” Paragraph 4.5 WIPO Overview of WIPO Panel Views on Selected UDRP Questions reads:
Consensus view: A panel may visit the internet site linked to the disputed domain name, order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.
However, it “is one thing for a panelist to view a web site to verify a parties’ assertions and quite another to embark upon an independent investigation as to what a complainant’s case may be,” Silvie Tomčcalová a.k.a. Sylvia Saint v. Juan Campos, D2006-0379 (WIPO May 5, 2006). Beyond the limited research permitted, panelists and judges alike are not permitted to make a party’s case any more than a judge in a civil action is authorized to grant relief not otherwise requested. If the Panel believes that the record is insufficient in reaching a decision it has the discretionary authority to obtain supplementary material through a Procedural Order.
In Pick ‘N Pay Retailers (Proprietary) Limited v. Dependable Internet LLC, D2009-0499 (WIPO May 28, 2009) the Panel issued a Procedural Order which the Respondent ignored and proceeded “to conduct a search of the internet archive in relation to the Domain Name.” In doing that he marshaled the evidence that was properly the Respondent's burden. Based on his research and not on the record before him he was able to find in the Respondent’s favor. Rule 10(d) of the Rules of the Policy reads: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence,” which means the evidence submitted by the parties. In Pick ‘N Pay, the Panel made the Respondent’s case which the Respondent was either unwilling or unable to make for itself and became the Respondent's advocate, thereby exceeding the Panel’s authority under the Policy.
June 25, 2009
Jurisdiction for Hijacked Domain Name
The definition of abusive registration is not so narrow as to exclude abusive conduct and practices. Unlawful hijacking through deception and thievery comes within the scope of the Policy. For obvious reasons respondents do not appear. In Bjorn Kassoe Andersen v. Direction International, D2007-0605 (WIPO June 27, 2007), the Complainant alleged without opposition that the Respondent had unlawfully hijacked the domain name. The most recent case in this class is AHI Invest GmbH v. Site Service International, Richard Sorensen, D2009-0561 (WIPO June 15, 2009). The Respondent is the registrant of a number of similar cases over the past two years all of which were transferred to the complainants. The Respondent surreptitiously arranges transfer of the domain into his name but for the nonce leaves the website active in the name of the Complainant with the obvious intent of holding it hostage when the Respondent decides to take it down.
Unless the victim checks vital statistics from time to time he would be unconscious that his property had migrated to a new registrar and registrant. “In October, 2006, without the knowledge or consent of the Complainant, a Company, named Direct Information PVT Ltd d/b/a PublicDomainRegistry.com became the Registrar and the Respondent the Registrant. Since June, 2008, a Company named Directi Internet Solutions PVT Ltd d/b/a PublicDomainRegistry.com became the Registrar.”
The Panel locates the bad faith violation as falling under paragraph 4(b)(iv) of the Policy. However, this confuses one theory with another. Identity theft and hijacking domain names without changing the content of the website and by all appearances being the complainant's Internet presence more comfortably fits into paragraph 4(b) under the catchall phrase “in particular but without limitation.” It is not commercial gain in the 4(b)(iv) sense; but extortion.
June 24, 2009
It is not targeting the same consumers that is prohibited, but deceiving them into believing that the complainant is the sponsor of the goods or services offered on the website. There was no issue in PLENTYOFFISH MEDIA, INC. v. Mr. Antony Tran/home, anh tran, D2009-0476 (WIPO June 12, 2009) that the Respondent lacked knowledge of the Complainant. The parties had already been involved in a withdrawn claim involving a <plentyoffishdatingnow.com> which was withdrawn following a settlement with the Respondent resulting in the transfer of that domain name. The enterprising Respondent then registered <freedatingfish.com>, the disputed domain name in the current proceeding which the Complainant contends is confusingly similar to its trademark PLENTY OF FISH.
The issue is whether <freedatingfish.com> is confusingly similar to the Complainant’s trademark or similar but not confusingly so. The common element in both domain names is “fish” which has come to mean consumers looking for dates. The Complainant argued that the association of “fish” with “free dating” naturally brings to consumers’ minds its trademark. Ergo, the Respondent was deceiving consumers by trolling in off limits waters.
Judging domain names for similarity that may be confusing is generally straightforward. On a side to side comparison would the ordinary Internet user confuse one with the other? The Panel in Plentyof Fish identified two ways of analyzing the issue. “Some [Panels] have limited the test to determining the degree of resemblance of the domain name and mark at issue as to ‘sight, sound, and meaning’ [the ‘narrow approach’]. Others have considered the degree of resemblance along with factors such as the distinctiveness of the mark, how well-known the mark is, how long the mark has been used, and the nature of the goods and services with which the mark is used [the ‘broad approach’].”
Taking these approaches into account,
the Panel finds that the disputed domain name is not confusingly similar to the Complainant’s mark. On a side-by-side visual comparison there is little similarity. The only similarity is the use of the generic word ‘fish’. But the use of that word is combined, in each case, with entirely different words. In the Complainant’s mark it is preceded by the words “plenty of”. In the disputed domain name it is preceded by the words “free dating”. The use of those different words also mean that there is little aural similarity.
It is undoubtedly true that both parties are competing for the same consumers, but the fact that they use different cliches to net fishes looking for dates does not establish the kind of similarity that is confusing under the Policy. “The Complainant argues that ‘free dating’ is a “well known consumer impression” of its services; and that it “is very well known as the ‘free dating Web site Plenty of Fish’.” Even if consumer impression were measurable, “the Complainant provides little evidence to support these statements.” All these hackneyed expressions and associations are part of the ambiance of dating, not exclusively offered by any one of many other services.
June 23, 2009
Competing Rights to Domain Name
Arguing that names of parties in different businesses not in competition with each other ought not be considered confusingly similar is not a consideration under paragraph 4(a)(i) of the Policy. “While this analysis may be relevant to traditional arguments for trademark infringement, the analysis is not relevant to the concept of confusing similarity,” Vicini S.P.A. v. You Know, No One, D2009-0285 (WIPO May 13, 2009) (<vicini.com>). It becomes an issue under paragraph 4(c) of the Policy.
However, where there are competing rights the first to register is entitled to the domain name regardless whether it is identical or confusingly similar to a trademark. The competing right in Vicini is a patronymic used in connection with a family business in the Dominican Republic. Traditionally, there have been three types of competing rights. Businesses each entitled to the domain name and commonly known by it. In these cases, it makes no difference that the respondent’s right accrues from an unregistered trademark. The second type, respondents with trademarks (not necessarily used in the name of their business) registered in a different country. The third type is registration of a personal name (sometimes a nickname) for a website personal in content. Vicini combines business and personal name. In either case, Panels insist that the registration be in good faith under the subparagraphs of 4(c) of the Policy. Rejected, for example, is the Respondent’s explanation in Tower Laboratories Ltd. v. Eric Seltzer, FA0609000791325 (Nat. Arb. Forum October 16, 2007). He registered <bromoseltzer.com> allegedly in memory of his father’s deceased dog, Bromo. The Panel in held that:
[It] does not follow that registration of a nickname that is based squarely on a widely known and perhaps famous trademark vitiates against infringement when the mark is reused in another context by the Respondent. Notably the ultimate reason that Respondent registered the domain name was because of its commercial notoriety and that it contained Respondent’s surname.
Respondents who successfully rebut the complainant's prima facie case have a legal right to the domain name, not simply a legitimate interest. The distinction is an important marker of value. A respondent who is found to have a legitimate interest has an asset of lesser value.
June 22, 2009
Topical Notes (Proving Rights or Legitimate Interests)
Paragraph 4(c) instructs the respondent that
Any of the following circumstances [that is, the circumstances set forth in subparagraphs i-iii], in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii).”
In both in 4(a)(ii) and 4(c) the terms “rights” and “legitimate interests” are in the disjunctive and although they are typically treated as though they were interchangeable they in fact denote different claims and have different privileges. Words chosen with care “have to be given some work to do or they serve no purpose,” International E-Z UP, Inc. v. PNH Enterprises, Inc., FA0609000808341 (Nat. Arb. Forum November 15, 2006). Colloquially, a respondent who has a legitimate interest can be said to have a right to the disputed domain name, but it is a different quality of right than that possessed by a respondent with a legal right. A respondent's trademark in another country that predates the complainant's trademark has a legal right; “[o]ncethis threshold is traversed, it does not matter whether Respondent parked the Disputed Domain Name or began using the Disputed Domain Name only after Complainant began a worldwide marketing campaign,” ZPower, Inc. (formerly known as Zinc Matrix Power, Inc.) v. Kissan Battery House c/o Mr. Sachin, FA0903001254829 (Nat. Arb. Forum June 1, 2009).
It is true that the complainant must prove that the respondent has neither and respondent that he has the one or the other. However, most cases in which the respondent appears, argues and prevails involve proof of legitimate interest. Under paragraph 4(c) the “without limitation” catchall also pulls in such claims as nominative fair use, a commercial counterpart to paragraph 4(c)(iii) but resting on a different theory. A divided Panel in Sarasota Association of Realtors, Inc. v. Private Stuff, FA0806001213084 (Nat. Arb. Forum August 27, 2008) held that the doctrine of nominative fair use applies only when three requirements are met:
First, the product or services in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service, and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. [Citing New Kids on the Block v. New America Pub. Inc., 971 F.2d 302, 308 (9th Cir. 1992)].
11/20/08 – Reseller’s Legitimate Interest in Domain Name.
11/25/08 – Expanding the Scope (Opening up the Space) of the Policy.
2/10/09 – Coming to Terms with Nominative Fair Use.
2/20/09 – Legitimate Use of Another’s Trademark.
6/5/09 – Competing Rights.
Topical Notes for
4(a)(i); 4(a)(ii); 4(a)(iii).
4(b)(i); 4(b)(ii); 4(b)(iii); 4(b)(iv)
June 19, 2009
The basic principles for refiling a complaint were laid out in Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO November 10, 2000) and Creo Products, Inc. v. Website In Development, D2000-1490 (WIPO January 19, 2001). The Panel in Creo held that 1) the burden of establishing grounds for entertaining a Refiled Complaint rests on the complainant; 2) that burden is “high”; and 3) the complainant should clearly identify the grounds for entertaining the Refiled Complaint. The complainant has a prelusive burden to show either new acts occurring since the first decision or fresh evidence not available prior to the first decision. Application of res judicata does not apply when the factual circumstances change. Abt Electronics, Inc. v. Gregory Ricks, FA0701000904239 (Nat. Arb. Forum March 27, 2007). See, also the analysis of res judicata under the ACPA in Storey v. Cello Holdings, LLC., 347 F.3d 370, 385-387 (2nd Cir. 2003) (the district court erred by treating a registrant’s right to use a domain name as akin to a property interest, fixed by events that occurred at a specific point in the past, and shielded from subsequent attack by res judicata”).
The Complainant in GetMore A/S v. Sooyong Kim, D2009-0357 (WIPO June 2, 2009) denominated its complaint “refiled” even though the current Respondent did not have the same name as the prior one. As the Panel pointed out there is precedent where the current Respondent is the earlier respondent’s alter ego or their relationship is such that the two are essentially the same. Whether this was so in GetMore was unclear, but since the Complainant treated the case as a Refiled Complaint “the Panel will do the same” and he poked around in the record for the “new” evidence.
The alleged new evidence was of several types but none that could not have been found prior to the earlier complaint. One piece, however, is interesting because it involves Respondent’s transfer of the registration to a Korean-Language Registrar. “This is a new fact that did not exist as of the date of the Prior Complaint.” However, “Complainant has failed to meet its burden of showing that this new fact is important evidence that is likely to change the result.” In fact, the proffer is a canard because the Respondent transferred the domain name “after the Prior Decision denying transfer was issued, and before the Refiled Complaint was filed” (emphasis in original). By the way, the domain name is <getmore.com>.
June 18, 2009
Trademarks composed of acronyms, initials and abbreviations that more than one business uses to identify itself are hard to protect. Except for the famous, there has to be more than coincidence of letters or numbers. The league that includes IBM, VW and HP is relatively small and symbols on the stock exchange are not necessarily interchangeable as trademarks. BioDelivery Sciences International, Inc. v. HLK Enterprises, Inc. c/o Domain Admin, FA0804001175189 (Nat. Arb. Forum May 19, 2008) (<bdsi>). The fact that the company was publicly traded on the NASDAQ exchange with those initials was not a relevant factor. The registration of <lh.com> was ordered transferred, but the complaint for <lv.com> was denied. Even with proof that the respondent lacks rights or legitimate interests in the domain name, the complainant must still show that the respondent had actual knowledge of the complainant’s trademark and that its registration of the domain name was intended to piggy back on its market place recognition.
Detectable violation depends on the composition of the domain name, the use to which the respondent puts it, the coincidence of content and the locations of the parties. The Respondent registrant of <lv.com> had previously used the domain for information on Los Vegas, thereby undermining the Complainant’s argument that the domain name was registered in bad faith to take advantage of its trademark. The proof difficulty can be seen in two cases, one of which the Complainant was successful and the other not.
To take the “not” first, Reckitt Benckiser Plc v. Eunsook Wi, D2009-0239 (WIPO May 20, 2009), the Complainant’s trademark consisted of two letters “r” and “b” as in <rb.net>. The Panel found that it had a protectable unregistered right in RB based on its commercial activities and its symbol on the FTSE 100. However, the parties reside on opposite sides of the world and the Complainant offered no evidence that it was known by the acronym when the Respondent registered the domain name. Its FTSE symbol although apparently effective before the registration of the domain name did not become effective until many years later. Timing is clearly a significant factor as is geographical location.
The second case, Smith Travel Research, Inc. v. Victor An, FA0904001259999 (Nat. Arb. Forum June 15, 2009) involved a three letter acronym “str” which is a U.S. registration on the Principle Register. The Respondent defending his legitimate interest pointed out that the acronym was “a very popular abbreviation and has been used by many businesses.” In fact, the USPTO database lists 95 alive and dead registrations that include “str”, but the content of the Respondent’s website trafficked in the same business as the Complainant thus offering a clue to the Respondent’s intention in registering those letters. Acronym and initials can be used by anyone but once the evidence shows that the domain name targets a particular complainant it becomes suspect. “Despite Respondent’s protestations to the contrary ... the Complainant and the Respondent both compete in the travel business.” Because there was no other explanation the Panel concluded that the “Respondent was clearly trying to associate its offerings with the goodwill of Complainant’s well-known mark.” Why would the Respondent register just those three letters if not for that reason?
June 17, 2009
The headline is prompted by a lengthy well reasoned dissent in favor of reverse domain name hijacking in Shoe Land Group LLC v. Development Services c/o Telepathy Inc., FA0904001255365 (Nat. Arb. Forum June 9, 2009). The majority held that because the Complainant proved it had a trademark albeit acquired after the registration of the domain name– that is, satisfying one element of the Policy – it escaped a finding that it was using the UDRP abusively. In my Note of June 2 I reported on another Panel who stopped short of finding RDNH although he “would not have hesitated” had the Complainant been represented by counsel. These conclusions suggest an amorphous standard.
Should a complainant who succeeds on the first element of the Policy be let off even though it has no case? What if the complainant also proves that the respondent lacks rights or legitimate interests but its trademark dates many years after the registration of the domain name? The number of years intervening between the registration and the trademark and the geographic remoteness or nearness of the parties should make a difference in the outcome. The dissent in Shoe Land was in no doubt that the complainant’s conduct was abusive. “Obviously, a panel should not lightly make a finding of Reverse Domain Name Hijacking against a complainant, but nor should it shy away from making such a finding in a clear case.” He concludes that the “present case is not a borderline but a clear case and the finding therefore should be made.” The clear case was based on, among other things, the falseness of the allegations: the Complainant “then alleged that the Respondent must have registered the domain name in bad faith, ‘purposely’ to divert ‘Internet users searching for Complainant’s services’, an allegation that could not have been true [since] ... the domain name was registered 7 years before the registered trademark was applied for” etc.
The majority saw no bad faith in bringing the complaint without explaining why the number of years intervening and the remoteness of the Complainant from the Respondent could possibly be justified on the theory that the “complainant did not know and should not have known that one of the three elements in the Policy ... was absent.”
June 16, 2009
Pretending To Be Who One Isn’t
Some misrepresentations on the Internet are accepted as protected speech when, for example, as part and parcel of criticism the respondent appropriates the complainant’s trademark for its domain name, sometimes but not always with an additional term of opprobrium. There is a split view on the propriety of initial deception that draws Internet users’ interest to websites resolving from domain names identical or confusingly similar to a complainants’ trademarks. In Monsanto Company v. Decepticons, FA0110000101536 (Nat. Arb. Forum December 18, 2001) the Respondent posed as the Complainant within the website and in the Complanant's voice made critical statements about its products, such as “Monsanto cares about ‘your’ health and ‘your’ cancer, and we hear your concerns. That’s why we’ve gotten rid of our EqualTM and NutrasweetTM divisions—these products have been thought to be carcinogens for several years, even by our own scientists.” In these kinds of cases the pretense is motivated by delivering a message or taking a position that the complainant would not itself take or say. A similar deception is at work with the Clinton domain names discussed in the Note for June 9th by a respondent who called himself “Web of Deception.”
There are also deceptions of the phishing variety, National Westminster Bank plc v. Bryant Smith, FA0806001209998 (WIPO July 28, 2008) (<natwestbusinessbanking.com>, the ubiquitous “Mr. Smith” did not appear but his “website resolving from the disputed domain name attempts to imitate Complainant’s official website in order to obtain Internet users confidential financial information.”
Then there are deceptions for which the purpose is not in plain view but it is a variety of identity theft. The Complainant in Jim Williams v. Louis Smith, FA0904001257389 (Nat. Arb. Forum May 28, 2009) provides hurricane information on his website <hurricancity.com>. The Respondent registered <hurricancity.net>, <hurricancity.org> and <hurricancity.info> and copied content from the Complainant’s website. The pretense in this case is not to express a point of view critical of the Complainant, but “to pass itself off as Complainant” no doubt for some future skullduggery. Although the Respondent – another member of the ubiquitous “Mr. Smith” clan – did not respond substantively he e-mailed an objection to the process without otherwise disclosing his motivation for the registrations.
June 15, 2009
Registering Personal and Surnames
Personal and surnames are generic terms. The question is not whether a respondent has rights in the domain name but how it is using it. F. Hoffman-La Roche AG v. Domain Admin Tucows.com, D-2006-1488 (WIPO February 27, 2007). A respondent who “builds its domain around a surname that has acquired the protection of trademark status, and uses that domain merely to operate a click-through advertising scheme” with links to the complainant’s competitors will not likely be found to have any right or legitimate interest in the domain name, Cargill, Incorporated v. RN WebReg c/o Rare Names, Inc., FA0904001260307 (Nat. Arb. Forum June 12, 2009). The Panels in both Hoffman-La Roche and Cargill cite vanity e-mail services as an example of legitimate use.
It is also legitimate to register a domain name if that is the name by which the respondent is commonly known. In Mattel, Inc. v. Gopi Mattel, FA0411000372847 (Nat. Arb. Forum February 15, 2005) (<mattel.org>) the Complainant argued that “Mattel is not a proper surname and was likely adopted by Respondent for the purpose of asserting rights in the domain name.” However, the Panel held that it was not for “Complainant to deem what is a ‘proper’ surname simply because it owns a trademark on the same name in conjunction with the sale of certain wares.” A similar conclusion was reached in Ken’s Foods Inc. v. kens.com, D2005-0721 (WIPO September 11, 2005) (<kens.com>):
Notwithstanding the Complainant’s contention that the KEN’S mark is distinctive in relation to the particular category of goods and services for which the mark is used, it is nonetheless a personal name – “Ken” – which is also the Respondent’s given name.
In Harrods Limited v. HDU Inc., D2004-0093(WIPO April 27, 2004) the Respondent demonstrated that she had been in the solon business under her surname for ten years prior to registering the domain name. A different result, however, when the respondent although properly surnamed diverts the domain name to another website, Harrods Limited v. Harrod Exclusive Realty Service, D2006-1061 (WIPO November 6, 2006).
In all these cases use or use coupled with personal history determines legitimacy. The Cargill Respondent argued that it had a legitimate interest in <cargills.com> because the “domain name is comprised of no more than the plural or possessive form of a common surname widely used by numerous parties.” However, the question in assessing bad faith is “whether the formation of a plural or possessive form of the mark” which under some circumstances could be legitimate becomes illegitimate when its use creates a likelihood of confusion with the Complainant's trademark. Applying the principle – it is “the use to which the name is put” – to the facts in Cargill revealed that the Respondent did not operate the domain name as a vanity e-mail service but used it “to display third-party click-through links, including advertisements for Complainant’s business competitors.”
June 12, 2009
New Comment, LexisNexis Trademark Blog:
Geographic Remoteness and Nearness in Proving Knowledge
Although trademark holders are not limited territorially in maintaining a proceeding under the UDRP – a “complainant’s showing of secondary meaning within a limited geographical area will be sufficient to invoke all of the rights and protections of the Policy,” Party Maniacs, Inc. v. Michael Kuklinski, FA0904001258597 (Nat. Arb. Forum June 2, 2009) – the location of the parties’ respective home residences may influence the Panel’s decision in answering the question of respondent’s knowledge. Geographic remoteness may support a respondent’s allegation that....
June 11, 2009
Disingenuousness Destroys Credibility and Supports Bad Faith
Credibility is most generally judged – and a case won or lost – by appearance, dress, speech and presentation. It is no less a factor for paper submissions, although we use different words to express the elements of appearance: selection of material rather than dress, writing rather than speech, and disclosure and silence rather than presentation. AVON is an iconic trademark; it is also a generic term. The respondent in Avon Products, Inc. v. Mary Ultes, D2009-0471 (WIPO June 3, 2009) disingenuously denies any infringement of the Complainant’s trademark by spinning out a fantasy on the word “avon” in its generic sense:
The word “Avon” has meanings unrelated to cosmetics and beauty, including for example the well-known river in England, and it is a relatively common name for cities and towns in the United States (e.g., Avon, Colorado). The word also carries a Shakespearean connotation: the English town Stratford-upon-Avon is widely known as the birthplace of William Shakespeare, often referred to as the “bard of Avon.” Respondent’s purpose for using the disputed domain name is to promote her writings and poetry.
The final sentence in the paragraph is a gem:
She deliberately chose the word “Avon” and the original “Avon L.T.D.” registration name (an acronym for “let them drink,” which Respondent contends is a reference to the River Avon) for its Shakespearean associations.
But take away the veil of fantasy the record contains no support for the Respondent’s use of “avon” in its generic sense. In fact the domain name, <startavon.com> is tied to AVON through the Respondent’s daughter’s association with the Complainant as an “independent sales representative.” Anything that the Respondent has to say that departs from the undisputed facts undercuts credibility. In response to the cease and desist letter the Respondent “refused to transfer, asserting her belief that her ownership of the disputed domain name was lawful.... [She, however] also invited Complainant to make an offer to purchase the disputed domain name.”
The invitation to make an offer violates paragraph 4(b)(i) of the Policy. Respondent also acknowledged that the website redirected web traffic to the Complainant’s recruitment web site, potentially benefitting the daughter, a violation of paragraph 4(b)(iv). Post hoc suggestion to use the website for a noncommecial purpose “does not provide a defense under the Policy.”
June 10, 2009
One can for legitimate reasons call oneself (almost) anything. Archibald Leach called himself Cary Grant. Victoria Woo (also in the film industry but operating on a less elevated and more exposed level) calls herself “kianna dior”. The problem is that DIOR is a famous trademark and CHRISTIAN DIOR COUTURE is not amused that “Kianna Dior Productions” which is in the business of producing adult films advertises Ms. Woo’s work on <kiannadior.com>. Ms. Woo’s counter argument in CHRISTIAN DIOR COUTURE v. Kianna Dior Productions, D2009-0353 (WIPO May 24, 2009) is that she “ (as an individual, business, or other organization) has been commonly known by the domain name.” In this particular case “the Panel has applied the Policy to the facts, and that includes paragraph 4(c)(ii).” Ms. Woo succeeds in keeping her website because “Kianna Dior” is her stage name (since 2001 and operating the website since 2002). Other successful stage names mimicking a brand include the Respondent in Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO October 16, 2003) (<lexusmichaels.com>, although not resolving to an adult site. If Christian Dior has a remedy it is not under the UDRP. Kianna Dior illustrates the limits of a complainant’s right when it conflicts with a respondent’s legitimate interests under paragraph 4(c)(ii) of the Policy.
Attention is called to Kianna Dior Productions because the Panel distinguishes it from two other Dior cases in which the Complainant successfully proved abusive registration, Christian Dior Couture v. Paul Farley, D2008-0008 (WIPO February 8, 2008) (<annadior.com>) and Christian Dior Couture & Chloé v. Konstantinos Zournas, D2008-1440 (WIPO December 22, 2008) (<chloedior.com>). Farley argues that he is an admirer of “Anna Dior” – she “offers bondage, discipline and sado-masochism services ... to customers in the San Francisco Bay and Washington D.C. areas of the United States – but she is not he and it is not her domain name or web site. In fact there is a question as to whether “Anna Dior” or “Ms. Anna” (as Farley styles her) is not invented to direct Internet users to adult sites.
The other Respondent Zournas admits in his answer that “he has no greater right or legitimate interest in the name ‘Chloe Dior’ [an alleged stage name] than the Respondent himself.” He claimed to have registered the domain name to operate a fan website but Chloe Dior makes no appearance on the website. Rather, the links go to “unrelated adult content.” Adult websites are not per se illegitimate and neither is redirecting Internet users to other sites from the disputed domain name. The “essence of bad faith in cases such as this lies in the capacity of the confusingly similar domain name to tarnish the relevant mark” (Farley, 2008-0008). “There is no suggestion anywhere in the evidence that the word ‘Dior’ would have meaning to the great majority of Internet users, other than as a reference to the Complainant’s DIOR mark.” It has to be clear that the trademark is targeted. Anna by herself is less sought for alone than adding “Dior.” Chloe imitates another trademark but is also enhanced as a distination by adding “Dior.”
June 9, 2009
Self Advertising: Mr. Web of Deception
A complainant can protect his unregistered personal name under the UDRP if the name is recognized as the source of goods or services. In just the past few months a number if celebrities have been successful complainants. Politicians and those running for public office eminent though they may be in civic life or in business are not producers of goods or providers of services and cannot look to the UDRP to capture disputed domain names, although they may qualify for standing as authors. Some pseudonymous person who calls himself “Web of Deception” (hereinafter referred to as “Mr. Web of Deception” real name undisclosed) registered a number of domain names containing in various combinations the name of President Clinton.
The Panel in William J. Clinton and The William J. Clinton Presidential Foundation v. Web of Deception, FA0904001256123 (Nat. Arb. Forum June 1, 2009) states that he “[r]eluctantly ... concludes that President Clinton has established a common law mark in his name” and reveals a skeleton in his closet which is that he “is partially responsible for the problems created by allowing common law marks in personal names, having been the Panelist that wrote Mick Jagger v. Denny Hammerton, FA7000095261 (Nat. Arb. Forum September 11, 2000)].” The Panel gives himself away with the adverb. By September 2000 Panels had already construed the Policy to include unregistered trademarks and the author of Mick Jagger concurred whatever his second thoughts in 2009 may be.
Nevertheless the Clinton Panel finds that Complainant does have standing and that the Respondent lacks rights or legitimate interests in the disputed domain name. That leaves the question of bad faith which the Panel answered by stating that the “Respondent’s conduct in registering, acquiring and utilizing these domain names is simply not within the UDRP definition of bad faith.” He does not give us readers the benefit of his reasoning as to why the registration is “not within the UDRP definition of bad faith.”
Whether or not President Clinton made his case, the Panel reached his destination without telling us how he got there. A decision without reasoning is a useless exercise. Mr. Web of Deception registered the domain names and directed them to an official website of the Republican party. He is either a tease, has some unrevealed parodic intent or by registering the names he receives an undisclosed benefit. It is the paradox of the known liar who claims to be telling the truth. Paragraph 4(b) of the Policy gives four examples of bad faith. They do not purport to cover the universe of bad faith conduct as the Clinton Panel appears to suggest; they “are no more than examples.” The Panel in Fox News Network, L.L.C. v. Kenneth A. Young, D2003-0407 (WIPO July 17, 2003) in construing what is meant by “examples” stated
[i]t does not matter that the facts in this case may not fall within any of the circumstances described at paragraph 4(b) of the Policy. Those circumstances are no more than examples of bad faith registration and use, and do not in any way limit the ability of panels to find that circumstances other than those described at paragraph 4(b) can amount to bad faith registration and use.” (Emphasis in original.)
The question is, Why did Mr. Web of Deception register the domain name unless there was some benefit to someone, perhaps himself even if not in money terms? It would “probably [be] ... drawing too long a bow to conclude, within the meaning of sub-paragraph [4(b)] (iv), that the Respondent was trying to attract users to his site for ‘commercial gain’,” Asset Loan Co. Pty Ltd v. Gregory Rogers, D2006-0300 (WIPO May 2, 2006). However, not all “gain” is “commercial” in a strict sense, but a benefit still comes within the prohibition of 4(b)(iv) of the Policy. Mr. Web of Deception self-servingly stated that “he registered domain names of famous persons in part to make a point concerning the ease of registration of such domain names. He further notes that he has never sold a politician’s domain name. He also states that he has worked with Senator Hatch and others to promote the idea that some domain names deserve protection under the federal statutes, including the names of famous places and politicians.” Bully for Mr. Web of Deception! In Asset Loan the Panel concluded (by inference) that the Respondent’s purpose was “to leverage a settlement of the litigation.” It would have been useful (whatever the Panel's bias) to have the benefit of the Panel’s legal reasoning in Clinton as to why directing a domain name to another site in competition with the Complainant’s political or philosophical world view is not an abusive registration when explicit in the Respondent’s cognomen is “deception” and implicit benefits very likely to be enjoyed for registering the domain names despite his pious and self-righteous denial.
June 8, 2009
Anti-Dissection Principle Applied to Domain Names
“Party” and “maniacs” are both dictionary words; generic terms separately but distinctive together. The Complainant in Party Maniacs, Inc. v. Michael Kuklinski, FA0904001258597 (Nat. Arb. Forum June 2, 2009) owned a common law trademark in PARTY MANIACS. The Respondent, a former employee claimed to have found other companies using PARTY MANIACS and a dictionary that carried a definition of the combined term. He also argued that because he “has over 10,000 customers nationwide and even outside the country, whereas Complainant provides services which are limited both in geographic scope and in the number of services offered” he had a legitimate interest in the domain name.
On the issue of generic terms, the Panel held that “even if the component words of a mark or phrase may be generic or common, in combination, they may still form a protectable mark,” citing David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”) The “alleged dictionary definition which Respondent claims to have found for “party maniac” is actually the definition for ‘party animal.’ ‘Party maniac’ is not in the dictionary cited, further indicating that the combination of the component words is uncommon and not generic.”
The argument that a respondent can trump a trademark holder on the theory that he has a larger market has no merit. Gettysburg Flag Works, Inc. v. Precision Marketing Solutions, Inc. and Jeffrey Reynolds, FA0804001179369 (Nat. Arb. Forum June 10, 2008) (U.S. parties) (<gettysbergflags.com>):
[Although the] Respondent may have a larger geographic market than Complainant ... the geographic scope of the parties’ respective markets are in fact defined by the Internet, which is by its very nature worldwide, and as such, the scope of the respective geographic markets for purposes of the Policy are not different.
The Panel’s perspective in Party Maniacs is that “the Policy makes no distinction between widespread and localized trademark rights, and a complainant’s showing of secondary meaning within a limited geographical area will be sufficient to invoke all of the rights and protections of the Policy.” Bad faith is posited on facts undisputed by the Respondent, that he was a former employee in the same niche business as the Complainant and in the same geographic area. The Panel inferred that the Respondent registered the domain name intentionally to disrupt a competitor’s business by diverting Internet users looking for PARTY MANIACS to the Respondent's company that offered similar services.
June 5, 2009
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent lacks rights or legitimate interests in the disputed domain name. The terms “rights” and “legitimate interests” are not interchangeable. The “words have to be given some work to do or they serve no purpose,” International E-Z UP, Inc. v. PNH Enterprises, Inc., FA0609000808341 (Nat. Arb. Forum November 15, 2006). “Rights” means a legal right to a name which is the dominant feature of the disputed domain name. In contrast a legitimate interest is an interest acquired over time that trumps the right of a complaining trademark holder. Disputing over <ainet.com> for example, the parties in American Information Corporation d/b/a American Information Network v. American Infometrics, Inc., FA0105000097339 (Nat. Arb. Forum July 19, 2001) both had a right to AINET or AiNET as trademarks. The Respondent proved that it was the senior, albeit unregistered trademark holder. In Kelly v. Qsoft Consulting Ltd., D2003-0221 (WIPO April 30, 2003) both parties had “homonymous trademark rights to the GAYDAR mark.”
As it is irrelevant in considering the jurisdiction of a complainant’s rights in relation to the location of the respondent so it is of a respondent’s rights. A trademark granted to a respondent in a different country can only be disregarded if there is evidence that the registration was fabricated to circumvent the Policy. For example, the Respondent in Madonna. In Ciccone, p/k/a Madonna v. Parisi and “Madonna.com,” D2000-0847 (WIPO Oct. 12, 2000) had the same nationality as the complainant, he was not located in Tunisia (the country where he obtained the trademark registration), and he admitted that he had obtained the trademark registration to protect his interests in the domain name.
However, the registration cannot be disregarded if the evidence favors the respondent, as in ZPower, Inc. (formerly known as Zinc Matrix Power, Inc.) v. Kissan Battery House c/o Mr. Sachin, FA0903001254829 (Nat. Arb. Forum June 1, 2009). No abuse can be found where the respondent has registered its “own trademark, duly registered in one county, in a domain name, even if doing so results in a domain name that is identical or confusingly similar to another entity’s trademark that has also been duly registered, but in an other country.” Similarly, in Angels Baseball, L.P. v. Lee Dongyeon, FA 925418 (Nat. Arb. Forum May 14, 2007) (<angels.com>) the Panel found that the “Respondent obtained the [trademark] registration before he received any notice of the dispute ... [and] without any opposition from Complainant [who had trademark registrations in South Korea]”.
The Complainant in ZPower argued that the disputed domain name created a likelihood of confusion as to sponsorship and affiliation and that the website was dormant for a period of time. However, a finding that the respondent has rights or legitimate interests in the domain name moots these arguments. “Once this threshold is traversed, it does not matter whether Respondent parked the Disputed Domain Name or began using the Disputed Domain Name only after Complainant began a worldwide marketing campaign.”
June 4, 2009
Uniform Rapid Suspension System
ICANN's Implementation Recommendation Team (IRT) has recommended a new proceeding to filter abusive registrations to be known as the Uniform Rapid Suspension System (URS). The URS would be “mandatory for all new generic Top Level Domain[s] (gTLDs)[] implemented through the new gTLD registry agreement, which would in turn bind registrars supplying new gTlds to the marketplace.” It “is intended to supplement and not replace the UDRP” and “designed to provide a faster means to stop the operation of an abusive site.” The Report is available at http://icann.org/en/topics/new-gtlds/irt-final-report-trademark-protection-29may09-en.pdf.
Implementing a new remedial tier separate from the UDRP is necessary (according to the IRT) because
Many brand owners face thousands of infringing websites per year. Often these websites monetize off the value and goodwill of a brand, distribute counterfeit goods, malware and other malicious software, phishing attempts, and adult content. Cease and desist letter often go unanswered and brand owners are forced to spend large amounts of money drafting and filing UDRP complaints.
The contemplated procedure calls for freezing the disputed domain name and suspending the registration rather than cancelling or transfering it to the complainant. The UDS would only “address cases of abusive use of trademarks where there is no genuine contestable issue as to the infringing or abusive use.” The standard of proof warranting suspension will be “clear and convincing” rather than preponderance of the evidence as it is for the UDRP. Where there is any genuine contestable issue the complaint will be denied without prejudice to other avenues of redress, that is the UDRP or court proceeding.
The IRT gives the following example of what is and is not a genuine contestable issue: “[I]f the trademark in question is BRANDXYZ for use in connection with computers and the domain name in question is brandxyz.[gtld] and is used in connection with an abusive pay-per-click site, the site would be frozen. If the domain name is brandxyzcomputers.[gtld] and the record shows that it is a bona fide retailer who legitimately sells BRANDXYZ computers, the URS complaint would be denied.”
There are (as there are for the UDRP) procedural safeguards. The IRT also recommends an appeal procedure together with a procedure for vacating the suspension upon proof of rights or legitimate interests in the domain name (applying paragraph 4(c)(i-iii) factors).
June 3, 2009
Lacks Rights or Legitimate Interests; But No Bad Faith
Lacking rights or legitimate interests in a disputed domain name is not determinative that a respondent registered or is using the domain name in bad faith. It would be a fundamental misunderstanding to conflate lack of rights or legitimate interests with bad faith. “Bad faith is not proven by showing that Respondent lacks any rights to or legitimate interests in the Domain Name,” Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000), although lacking either may be a factor in finding bad faith. The facts will often be common to both requirements,” FabJob Inc. v. Compana LLC, D2006-0610 (WIPO August 16, 2006). The Policy “separates the requirements in Paragraph 4(a) into three distinct elements, and provides separate examples (Paragraphs 4(b) and 4(c)) of how to satisfy the second and third factors,” Document Technologies.
The Respondent in EURO DATA GmbH & Co. KG v. Excel Signs, D2009-0465 (WIPO May 5, 2009) (<eurodata.com>) “did not show any of the circumstances mentioned in paragraph 4(c) of the Policy, but rather claimed that it is not illegal to offer a domain name for sale or to connect the Domain Name to a commercial parking site.” These are legitimate business models “but [they] do not create a right for the Respondent in the Domain Name, nor do they explain why the Respondent would have a legitimate interest in the Domain Name as a result thereof.” A domain name composed of generic terms “euro” plus “data” “being widely used and hardly distinctive does not per se create a right or legitimate interest of the Respondent either.”
However, the question of bad faith hinges on other factors, foremost that in registering the domain name the Respondent had knowledge of the Complainant and intended “to profit from or harm [its] trademarks.” The Complainant argued that offering the domain name for sale was determinative. The Panel noted that while it
appreciates that offering a domain name for sale to the general public may in some cases constitute proof of bad faith, [it] generally only [applies] if the Complaint shows some form of additional “wrongdoing” or mala fide intent on the part of Respondent, such as knowledge of the trademarks of the Complainant, or evidence of the Respondent habitually selling domain names which incorporate third parties’ trademarks. The Respondent does not appear to have had findings of abusive registration practices made against it in previous WIPO UDRP decisions.
The only response to “the Respondent should have known” is How? There is no short cut to proving a contention:
The Complainant ... failed to show how exactly the Respondent should have known, in view of the Respondent’s claim that the term “eurodata” is not very distinctive, fanciful or arbitrary as such, is widely used by many others than Complainant and that the Respondent is unfamiliar with the Complainant and its trademarks.
There also was no tell-tale linking to competitors to support the Complainant’s supposition of bad faith registration or use. It must demonstrate “how” with proof not argument, otherwise it fails to sustain its claim.
June 2, 2009
Less than Reverse Domain Name Hijacking, But Abuse of the Administrative Proceeding
Against a complainant who brings a complaint in bad faith the only penalty in a panelist’s armory is to find that the complainant’s conduct “constitutes an abuse of the administrative proceeding,” Rule 15(e) of the Rules of the Policy. The Rule gives two examples of sanctionable abuse, “an attempt at Reverse Domain Name Hijacking” (RDNH) and “brought primarily to harass the domain-name holder.” The full text reads:
[I]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The two examples, related but different, are generally merged into a finding of RDNH, although there is no reason why they should be. Rule 1 of the Rules of the Policy defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel in LaFrance Corp. v. David Zhang, D2009-0415 (WIPO May 15, 2009) took into account that the Complainant appeared pro se and found abuse of the administrative proceeding for bringing a complaint “primarily to harass the domain-name holder.” Not only were the “Complainant’s contentions under paragraphs 4(a)(ii) and 4(a)(iii) ... woefully inadequate” it “provides no evidence of cybersquatting, nor of Respondent’s having selected the disputed domain name to take advantage of Complainant’s mark.” Ordinarily this “should suffice for RDNH.” The Panel stated that it “would not have hesitated to make an RDNH finding” had the Complainant been represented by counsel.
The decision raises an issue about complaints prepared by counsel and its responsibility for certifying allegations in support for an order to transfer registration of the domain name. Rule 3(b)(xiv) (having some similarity in language to Federal Rules of Civil Procedure Rule 11) provides that “[t]he Complainant certifies that the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate […] and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” In Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., D2007-1598 (WIPO January 28, 2008) the dissent (concurring on dismissing the complaint but dissenting on a finding of RDNH) noted that “it is the responsibility of counsel to put every argument on behalf of the client that is reasonably open on the evidence, that in the present case the argument advanced by counsel was reasonably open and that accordingly the certification was appropriate.” The majority, however, believed otherwise and rebuked counsel on its certification that “the assertions in this Complaint are warranted” when they were not.
June 1, 2009
NOT A Bona Fide Offering of Goods or Service
It is not the business model that is abusive but the respondent’s conduct and its motivation for registering a domain name. Selling domain names or using them for click through revenue is perfectly legitimate but not when the disputed domain name is identical to the complainant’s trademark, has been registered to disrupt the complainant's business or take advantage of its trademark and certainly not when the respondent is in the same niche and populating the website with links to complainant’s competitors.
Such were the facts in Freer Auto Body & Accessories Inc. v. Andys AutoBody c/o Andy Batchelor, FA0904001256658 (Nat. Arb. Forum May 28, 2009). The Respondent’s explanation in support of keeping the domain name is (as summarized by the Panel) the following:
Respondent contends that it registered the disputed domain name with the intent to resell it, and that this is a bona fide offering of goods or services.
Respondent claims that it has not taken any action to disrupt Complainant’s business, and is only advancing its own rights and interests in the disputed domain name.
Respondent contends that its intent to resell the domain name is evidence of Respondent’s good faith use and registration of the disputed domain name.
The Respondent is clearly less than fluent in domain name law although creditably candid.
A similar comic disregard of the law with equal candor was noted in Inmobiliaria Carso S.A. de C.V. v. RusliCyber.com and Trisakti University, Mr. Ahmad Rusli, D2008-1767 (WIPO January 5, 2009). Note for January 20, 2009. Less candid and more smug are complainants who believe that their later acquired trademarks entitle them to capture domain names composed of the same word or words because they are inactive, Notes for December 29, 2008 and May 11, 2009.
May 29, 2009
Domain Name, Geographic Term; Trademark, Geographic Term Plus Descriptor
How similar does a domain name have to be to a trademark to be confusing? A respondent incorporating a complainant’s trademark into its domain name generally has to explain and justify its choice where the additions “merely compound the confusion created by the incorporation of the Complainant’s trademark,” Fairmont Hotel Management L.P. v. Puts, D2001-0431 (WIPO May 17, 2001) (adding “hotel” and “resort” to form <fairmonthotels.com> and <fairmont-resort.com>) (transferred on default). The situation is different when the respondent registers the geographic term alone without a descriptor.
This issue of similarity without confusion arose in Jumeirah International LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc, Domain Administrator / Jumeira.com, D2009-0203 (WIPO May 21, 2009). The Complainant based its trademark right on JUMEIRAH BEACH HOTEL. It seeks to monopolize JUMEIRAH on the grounds that its trademarks predated the registration of the domain name. The record, however, disclosed that the Complainant had been unsuccessful in obtaining trademarks on the Principal Register. The disclosure came from the Registrant not the Complainant which prompted the Panel to note, “[s]ignificantly, [the Complainant] does not mention being on the Supplemental Register.” The Respondent included hyperlinks on its website to hotels in Jumeirah beach, but edited the website after receiving a cease and desist notice.
The Complainant had no trademark for JUMEIRAH standing alone, only in combination with the descriptor BEACH and HOTEL. While the domain name is similar and even with respect to the geographical location identical it is not confusingly so in either case. The Panel explained its thinking by analogy:
one might ask, would there be confusion in the minds of members of the public between “British” and “British Airways”, between “Huddersfield” and “The Huddersfield Choral Society”, or between “Bodega Bay” and a hypothetical “Bodega Bay Gas Station”? The Panel takes the view that it is highly unlikely and similarly unlikely that a domain name comprising “Jumeira” (in either spelling) standing alone would normally be confused with the Complainants’ businesses.
The Complainant’s contention that it was confusingly similar was not persuasive. Although the Panel took up the issues of rights or legitimate interests and bad faith, th