DOMAIN NAME JURISPRUDENCE &
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COMMENTARIES ON UDRP DECISIONS

GERALD M. LEVINE
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Archives -- 2010 and 2011

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January 2010 NOTES , DATES ARE IN REVERSE ORDER

January 29, 2010

Higher Standard of Proof for Trademarks Composed of Surnames and Geographic Terms

Trademarks composed of a founder’s name, Bloomberg for example, that have significant market recognition internationally have a high level of protection regardless of the respondent’s residence, but if by coincidence the surname is also a geographic indicator the complainant’s proof of targeting – a sine qua non under the UDRP – must be concrete and persuasive. The Respondent in Leyton & Associés (SAS), Thésée (SAS), Leyton Consulting UK and Ireland Limited, Leyton Maroc, Leyton Belgium, Leyton UK Limited v. Drela Mateusz, Elephant Orchestra, D2009-1589 (WIPO January 20, 2010) registered <leyton.com>, the name of a place in the northern part of Greater London. The Complainant has offices in a number of countries but does not do business – or at least presented no evidence of business – in the Czech Republic, the Respondent’s residence.

Lack of evidence of targeting, of course, is a significant lacuna. In these circumstances, if there is to be benefit of the doubt it favors the respondent. “To sum up, there are no facts or compelling evidence in this proceeding indicating why the public should identify the term Leyton with the Complainant.” The Respondent alleged that he “acquired the domain name ... with the intention of building a website related to the Leyton area.” Though his intention is contemplated rather than actual – he presented no evidence of demonstrable preparations for a defense under paragraph 4(c)(i) – nevertheless it could not be said that the registration of the domain name was in bad faith. “It seems to this Panel at least as likely as not that the Respondent, who is doing online business in the United Kingdom, acquired the disputed domain name because of its generic meaning and not with a view to the Complainant’s possible rights, and in that sense, the benefit of the doubt on the present record must be afforded to the Respondent.”

The Panel in Leyton Consulting draws a distinction between domainers who register generic terms that are coincidentally used by third parties as trademarks and those who register terms that call into question the respondent’s good faith. The higher standard for domainers was introduced in Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006). The Panel proposed a test for the high volume registrants in the form of a set of questions. For registrants who regularly engage in the business of registering and reselling domain names, and/or using them to display advertising links, they must show that

– It makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
– The domain name in question is a dictionary word or a generic or descriptive phrase;
– The domain name is not identical or confusingly similar to a famous or distinctive trademark; and
– There is no evidence that the Respondent had actual knowledge of the Complainant’s mark.

However, being a “professional domainer does not automatically lead to the assumption that the disputed domain name was registered in bad faith ...; some evidence is required, and the standard tends to be somewhat higher in cases involving geographical identifiers and marks that are less distinctive.” It is true that in Mobile Communication the Respondent failed to explain its registration of <mobilcom.com>, but the principle is sound, that willful blindness to a third party’s rights in a distinctive trademark is evidence of bad faith. That is less pronounced with domain names composed of generic terms used by many businesses and monopolized by none. “After all, the registration of domain names because of their attraction as generic terms is a business model permitted under the Policy, and there is no general obligation under the Policy to conduct searches in order to find out whether a domain name might infringe third parties’ rights.”

January 28, 2010

Inattention to the Timing of Rights

Default in appearance is not an admission of any material facts under the UDRP, although letting the complainant make the record increases the likelihood that its facts will support its complaint. But even with that advantage there continue to be decisions that illustrate inattention by complainants to the timing of rights. The date of registration is significant in determining whether a respondent is guilty as charged. That a complainant has a trademark and the domain name is identical or confusingly similar to it does not by itself make a case for abusive registration. Standing is the simplest burden, yet in focusing on its own right a complainant can lose sight of the respondent’s right or legitimate interest in the disputed domain name. Jeremy Wiles v. Nadeem Qadir, FA0912001297673 (Nat. Arb. Forum January 25, 2010) is essentially a cookie cutter case but it is useful for instructional purposes.

It is not unusual for complainants of unregistered and later registered marks to locate their right prior to the domain name registration. Claiming a preexisting right, however, is only as good as the evidence that supports it. An owner of an unregistered mark has the heavy burden of marshaling evidence sufficient to prove that its mark was recognized by the consuming public as an indicator of its goods or services when the domain name was registered. This is equally true of registered marks that presently have great market penetration, but did not when the domain name was registered. Discussed in Note for January 22nd, eDreams, Inc. v. CK Ventures Inc., D2009-1508 (WIPO January 8, 2010).

Inattentiveness can be fatal to a claim. Except under unusual circumstances, later acquired trademark rights do not support a claim for relief. In Jeremy Wiles, the Complainant offered ample evidence of numerous clients and market activity sufficient to support its contention that its trademark CREATIVE LAB had acquired secondary meaning. However, it began its business four years after the Respondent registered the domain name and made no attempt to prove a prior existence. The Panel held that even “assuming that Complainant had enough evidence to support a finding that [it] had acquired common law rights in the CREATIVE LAB mark through a finding of secondary meaning, [its] rights would date back only as far as 2004.”

If a complainant is going to allege bad faith it must, first of all, place its trademark right prior to the respondent’s registration of the domain name and offer sufficient evidence that the domain name was registered with the trademark in mind. In Jeremy Wiles, the Complainant is in Florida and the Respondent in Bangladesh. Even if the Complainant had offered evidence to support an earlier common law trademark, geographic distance would not have supported actual knowledge. To leave a lacuna in the record, as did the Complainant in Jeremy Wiles, is tantamount to admitting that there is no evidence of bad faith registration and therefore a meritless case.

January 27, 2010

Spelling and Misspelling Variances to Trademarks

Varying the trademark in some minor way, or typosquatting as it is called generally involves misplacement or dropping of letters, adding or deleting the plural form, or inserting or removing dashes between words. But not all variances support a finding of bad faith even though the domain name may be confusingly similar to the complainant’s trademark and appear to the complainant to be a case of typosquatting. In Sears Brands, LLC v. Domain Asset Holdings, FA0912001298052 (Nat. Arb. Forum January 22, 2010) the minor variation substitutes for a “y” an “ies”, NORTHWEST TERRITORY and <northwestterritories.com>. Is this adventitious or infringing? It does not quite fit the typosquatting model because the variation spells out a recognizable location different from the trademark. Sears Brands’s trademark might at one time have been the title of a catalog advertising clothing and equipment for camping trips.

NORTHWEST TERRITORY is similar to other geographic trademarks associated with clothing in that it does not conjure any specific location. It could refer to anyplace and anywhere. In contrast, the domain name refers to a specific location: the “elements contained in the contentious domain name are common terms as they relate to a region of Canada whose official name is the ‘Northwest Territories’.”

Nevertheless, the domain name incorporates the trademark and is confusingly similar to it. Rights and legitimate interests and bad faith generally turn on either the timing of the registration or the active use of the website. Geographic domain names used as visitor websites are clear examples of legitimate interests when respondents actually use them in their generic sense. The Wonderful Copenhagen Foundation v. Nya Destination Stockholm Hotell & Teaterpaket AB, D2007-0296 (WIPO May 29, 2007) (<visit-copenhagen.com>). It can be less clear where the respondent uses the domain name as a link farm that allows Internet users to find goods or services similar to those offered by the complainant. “Complainant asserts that numerous links on Respondent’s website are directly related to goods associated to Complainant’s NORTHWEST TERRITORY Mark, as they relate to camping gears.” In “certain circumstances, such findings could greatly diminish Respondent’s claim of legitimate interests in a domain name, even in the presence of common terms.”

However, the respondent’s argument is strengthened where its website links are consistent with the domain name. The Respondent’s registration of <northwestterritories.com> could be abusive, unless absolved by the content of the website. There is no absolution where from the content it is clear that the domain name was chosen to piggyback on the complainant’s trademark. Greater Houston Convention & Visitors Bureau v. Jan Barta, FA0905001263850 (Nat. Arb. Forum June 29, 2009).

The Northwest Territories are a “vast area of wilderness where outdoor activities are a predominant feature.” The fact that there are links to camping equipment and related clothing is therefore not inconsistent with an Internet user’s expectations for the website. Consistency supports the respondent’s contention that it has a legitimate interest in the domain name and registered it in good faith; that is, that the variation is coincidental and not a case of typosquatting.

January 26, 2010

Predicate for Bad Faith, Competing Services Incorporating the Trademark

The Policy has built in protections for competitors whose Internet shingles bear a similarity to descriptive trademarks, but protection does not extend to competitors who incorporate the complainant's trademark. Many trademarks composed of common words while descriptive can also be distinctive. The Complainant in Fashion Career Center, LLC v. Resume Pro Writers Guild c/o Michael Hunt and Mercado, FA0912001296574 (Nat. Arb. Forum January 20, 2010) owns RESUME PRO. The disputed domain name is <resumeprowriters>. Where the dominant part of the domain name is the complainant’s trademark adding a generic term – here “writers” – does not make it distinctive. To “become distinctive as an indication of a single source [it must] not [be] simply viewed by the public as a description applicable to the goods or services from various sources,” Lincolns of Distinction Car Club, Inc. v. Joseph Detomaso, FA 538014 (Nat. Arb. Forum September 24, 2005).

The argument that “common and generic terms” cannot be found confusingly similar to a complainant’s trademark only applies to those cases in which the domain name may be similar to the trademark but not confusing, as for example Napoleon Hill Foundation v. pmweb, FA0907001275894 (Nat. Arb. Forum September 28, 2009) THINK AND GROW RICH and <flipandgrowrich.com>. “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,” David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007).

The Respondent in Fashion Career offered two other arguments. First, that offering resume writing services is a complete defense under paragraph 4(c)(i) of the Policy. However, the “problem with this argument is, of course, that the Disputed Domains are confusingly similar to Complainant’s Mark. As other Panels have repeatedly held, a respondent’s use of a disputed domain name to offer competing services on the resolving website is not a bona fide offering of goods or services” citing Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).

Respondent’s second argument points to its registration name. However, despite “the mere fact of its registration of resumeprowriters.com under the name RESUME PRO WRITERS GUILD, Respondent has failed to offer any evidence that it is commonly known by the Disputed Domains.” Paragraph 4(c)(ii) is construed to mean that the respondent was known by that name prior to the registration. “Tellingly, Respondent never even stated or claimed that it is or has been commonly known by that name. It offered no evidence of what the name RESUME PRO WRITERS GUILD is or represents.... If the Respondent were in fact using or were commonly known by this name ... records would be readily available, but no such evidence was offered.” Decisions are made upon a record; lack of evidence is fatal to the party with the burden of supporting its contention.

January 25, 2010

Descriptive Phrase, Confusing Similarity Between Trademark and Domain Name

Confusion appears twice in the Policy: “confusing similarity” in paragraph 4(a)(i) and “likelihood of confusion” in paragraph 4(b)(iv). A domain name may be similar and confusing from the standpoint of an ordinary observer, but that is only relevant for standing. However, the higher probability that there is a likelihood of confusion may never be reached because when the respondent is found to have a right or legitimate interest in the domain name it follows that it registered the domain name in good faith. This can come about because the trademark and domain name are both descriptive of the parties’ services. Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010) in which both parties are in the same business.

There is no prohibition against registering a domain name that describes the Respondent’s business, even if the similarity in identifying itself is confusing. This was seen also in Kim Laube & Company Inc. v. RareNames, WebReg, FA0910001291282 (Nat. Arb. Forum December 22, 2009) (<natureschoice.com> and <natures-choice.com>), despite NATURE’S CHOICE being a registered trademark. To “become distinctive as an indication of a single source [it must] not [be] simply viewed by the public as a description applicable to the goods or services from various sources,” Lincolns of Distinction Car Club, Inc. v. Joseph Detomaso, FA 538014 (Nat. Arb. Forum September 24, 2005).

The Complainant in Austin Area Birthing argued that it had an unregistered trademark in AUSTIN AREA BIRTHING CENTER and that the Respondent’s <austinbirthcenter.com> was piggybacking on its reputation. However, “[a]s the Respondent correctly asserts, the disputed domain names contain descriptive terms regarding its midwifery and birth center services in the Austin geographical area. These are perfectly legitimate business activities. Consequently, the Panel finds that the Respondent and the registrant of the second domain name are using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).” It is not uncommon that multiple purveyors of goods and services choose a descriptive phrase – generally not even registrable as a trademark – to represent themselves to the public.

However, the Policy was not intended to give to the first in the marketplace the power to prevent competitors from describing their services in language similar to the complainant’s trademark. “It must not be forgotten that domain name registration is basically a ‘first come, first served’ process and that the purpose of the Policy is not to adjudicate between parties who have some legitimate interest in using a particular domain name.” A frequently cited federal case, Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) holds that “[s]imilarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”

In Austin Area Birthing, the Respondent submitted sufficient evidence to prove that she had a meritorious defense under paragraph 4(c)(i) of the Policy. In so far as creating a full record, it is the obverse of the facts in Fashion Career Center, LLC v. Resume Pro Writers Guild c/o Michael Hunt and Mercado, FA0912001296574 (Nat. Arb. Forum January 20, 2010) which will be discussed in tomorrow’s Note.

January 22, 2010

Market Presence of Trademark at the Time of Domain Registration

Companies that are oaks today were acorns yesterday. A complainant’s market presence today can be a determining factor for a favorable finding on its prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. However, the same evidence is insufficient to prove respondent’s bad faith registration. eDreams, Inc. v. CK Ventures Inc., D2009-1508 (WIPO January 8, 2010). The respondent, on the other hand, focuses on continuity of good faith use of the disputed domain name. The future is only relevant to the extent that there is proof of “demonstrable preparations” and that relies on what the respondent has done not what it proposes to do. That is why in determining whether a respondent’s evidence is sufficient to rebut the prima facie evidence, “the Panel is entitled to prefer a specific allegation in the Complaint to a generalized denial in the response,” Id.

Paragraph 4(a)(iii) of the Policy operates from a different perspective. Now, the complainant must demonstrate that it was also an oak of yesterday. If it was merely an acorn it has a greater burden to prove that the respondent both had knowledge of its existence and that it registered the domain name with the complainant in mind. This is the principal teaching in eDreams. The Panel was unanimous in denying the complaint. The dissent found that there was no confusing similarity between EDREAMS and <edrams.com> and that the Respondent proved that it used the domain name for a bona fide offering of good or services. The majority focused attention on the issue of bad faith registration.

While there are certainly cases that hold that registering a domain name with “reckless disregard” of the existence of a trademark “even if the registrant did not have actual knowledge of the mark,” citing Grisoft, s.r.o. v. Original Web Ventures Inc., D2006-1381 (WIPO March 5, 2007) (however, a strong dissent that puts this proposition in perspective), “this inference can only be drawn where it is shown that the mark was widely used when the Domain Name was registered.” However, “[w]here the mark was not widely used at the date of the registration, it cannot be inferred that the registrant’s intended use of a corresponding domain name would give rise to a serious risk of confusion or diversion of Internet users through such links, and hence that the registration was effected with a reckless disregard for this risk.”

The Complainant in eDreams offered no evidence from which a conclusion could be drawn that EDREAMS was any more than an acorn when the Respondent registered <edrams.com>. “There is no evidence that the Complainant’s EDREAMS mark was sufficiently widely used when the Domain Name was registered in 2003, so that automatically generated links would relate to the field in which this mark was used and would divert Internet users to the Complainant’s competitors.”

One can see eDreams as a cautionary tale for complainants generally with a similar history. In order to prevail the trademark “would need to have a strong reputation at that date to outweigh the fact that the Domain Name is not identical to this mark and is identical to a term which is widely used [in the computer industry] to refer to a completely different product. Such evidence as there is, namely the web pages recorded in 2005 and exhibited by the Respondent, supports the view that the reputation of the Complainant’s mark was not strong enough to result in automatically generated links to the Complainant’s competitors when the Domain Name was registered.”

January 21, 2010

Trademark Infringement Outside Scope of the Policy

Just as with current use of trademarks existing in different classes, a trademark holder and a domain name registrant can co-exist in cyberspace using identical or confusingly similar terms. Whether the respondent in a UDRP proceeding is an infringer in a trademark sense is outside the scope of the Policy. The Panel is limited to determining only whether the respondent is guilty of abusive registration of the domain name. The distinction is explored in Advanced Reading Solutions LLC d/b/a Urok Learning Institute v. Vrvv Inc., D2009-1418 (WIPO January 4, 2010). Although the Complainant’s trademark is composed of an unusual combination of letters, “urok” – “you are okay” or “you rock” – it is its badge or symbol in the marketplace; on the Complainant’s trademark application it notes that the English translation of UROK is “charm.” The term is also incorporated into the two disputed domain names, <urok.com> and <urokapparel.com>. Unusual though “urok” is there is another holder listed on the USPTO database in Class 16.

The Respondent in Advanced Reading is a second generation owner. It acquired <urok.com> by purchase from a third party in 2004. It subsequently obtained registration of a stylized version of UROK on the USPTO Principal Register in 2005, but lost it after a successful cancellation proceeding as infringing on the Complainant’s trademark in Class 25 (Clothing). Nevertheless, the Respondent has been “sell[ing] worldwide, through its websites accessible through both of the disputed domain names, rock and roll T-shirts, hoodies, and bell-bottomed jeans which bears its UROK mark” since 2004 (a paragraph 4(c)(i) defense).

There is no issue that the dominant term in <urok.com> is identical to the Complainant’s trademark and that the addition of “apparel” is confusingly similar to it. The question is whether Respondent’s continuous use of the domain names registered prior to the Complainant acquiring registration but after its application for the trademark establishes a right or legitimate interest in the domain names. Although the Respondent was aware of the Complainant in 2005 through the cancellation proceedings, it “first received notice of the present dispute [concerning the registration of domain names] when it received a copy of the Complaint” in 2009. The WIPO Final Report (paragraph 172) and UDRP do not condemn innocent or good faith registration where the respondent can show “through business plans, correspondence, reports, or other forms of evidence, that it had a bona fide intention to use the name in good faith.” This concept is built into the UDRP at paragraph 4(c)(i). In Advanced Reading, the Respondent was one better than “a bona fide intention” to use the disputed domain name; it operated a verifiable business.

Unless there is evidence that at the time of registration a respondent has actual knowledge of the complainant’s trademark and registered the domain name to piggyback on its reputation it cannot be said to contravene the complainant's rights. Although not commented on in the decision, the Complainant’s trademark history includes notices from the USPTO of abandonment of application in 2003 and 2004 before reviving the application in 2005. The USPTO accepted the Statement of Use in 2006. If there is an open question on trademark infringement, however, “it is not the function of this Panel to comment on any such issue.”

January 20, 2010

Transfer Between Commonly Controlled and Related Persons

A transferee cannot argue that it is untainted by its transferor’s male fide conduct during its ownership and use of a disputed domain name. The rule is that a respondent’s good faith is measured from its own not its predecessor’s acquisition of the domain name. Unless the evidence demonstrates otherwise, a transferee inherits only its predecessor’s bad and not its good faith. This is true as much for unrelated transferees as those related to the original registrant. However, for transfers between commonly controlled persons the Panel must also consider proof of a legitimate business purpose in transferring the disputed domain name. Schweizerische Bundesbahnen SBB v. Gerrie Villon, D2009-1426 (WIPO January 11, 2010) (<sbb.com>). This defense only works for a respondent who clearly sets out and proves the history of the domain name and its continuing use in its business.

Whether related or not a successor respondent is not entitled to capitalize on a complainant’s reputation in the marketplace on the theory that an earlier respondent (perhaps itself in another guise) registered the domain name in good faith when or even if at the time of registration no such trademark existed. In ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., D2009-0785 (WIPO August 5, 2009), for example, the only conclusion that could be drawn from the evidence was that the original registrant transferred the domain name to an entity in which he had an interest for the purpose of taking advantage of the complainant’s trademark. Although there are instances in which respondents have been unfairly deprived of their domain names, as a general rule registrants whose rights accrue from an internal transfer made for a legitimate business purpose do not lose rights accrued by their related predecessors.

The Panel noted that “the Complainant’s only potentially plausible argument for establishing lack of rights or legitimate interests on the part of Respondent is that the formal identity of the registrant of the disputed domain name was changed in March 2008 from Small Black Box, Ltd. to Gerrie Villon.” The theory for this argument is that “when the formal identity of the registrant changed all rights and legitimate interests in the disputed domain name that might have accrued on behalf of the transferor were extinguished, and that Respondent should now be treated as a ‘disinterested’ registrant of the disputed domain name seeking to take unfair advantage of Complainant.” The theory is applicable to an ehotel type of case, but not to the factual circumstances in the Schweizerische Bundesbahnen record.

In Schweizerische Bundesbahnen the Panel drew a lesson from the ownership of trademarks. It held that “[b]usiness enterprises commonly assign and transfer trademarks among commonly controlled entities for a variety of reasons.” And when they do, “the assignees and transferees of those marks do not generally abandon prior rights and interests that have accrued in those marks.” There is no reason to treat domain names differently. “In the absence of some exceptional circumstance, there is no reason to conclude that transfers of domain names between commonly-controlled entities extinguishes pre-existing rights or legitimate interests in those domain names.”

January 19, 2010

Disturbing the Careful Balance Between Trademark Owners and Domain Name Registrants

The Panel in Torus Insurance Holdings Limited v. Torus Computer Resources, D2009-1455 (WIPO January 10, 2010) is the first panelist to offer a detailed critique of the “retrospective bad faith” line of cases first announced in City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D2009-0643 (WIPO July 3, 2009) (complaint denied) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009) (transfer granted). See previous Notes for January 6, 2010 and December 22, 2009: if “retroactive bad faith” were to take hold – if it is not a dead end – it represents an entirely new direction for evaluating abusive registration. It means that the respondent either sticks to its original purpose for registering the domain name or is called to account if changing content is seen to cross the line to infringing the complainant’s trademark rights. “The issue which those cases raise is one of considerable substantive importance, so the Panel believes it is appropriate for the Panel to explain those doubts in this decision, even if this case falls to be decided on grounds which do not call for the application of the Octogen approach.”

At the moment, “retroactive bad faith registration” is a construction in search of acolytes. Both the WIPO Final Report and ICANN insist that the complainant prove bad faith in the conjunctive. This is a different model than the Anticybersquatting Consumer Protection Act and Country Code Policies. The WIPO Final Report recommended that “the domain name has been registered and is used in bad faith” (Paragraph 171[1][iii]). The UDRP makes a subtle change. It inserts “being” between “is” and “used.” Bad faith use can be found if the domain name is being used in violation of the Policy at any time after registration, but bad faith registration is different; it is localized in time. It is an intentional act that takes place at a particular moment in past time. Given the “legislative” intent, “this Panel doubts that the framers of the Policy could have intended that proof of bad faith use of the kind described at paragraph 4(b)(iv) of the Policy should always be deemed sufficient proof, on its own, that the disputed domain name has also been registered (possibly many years earlier) in bad faith.” “It rather seems to this Panel that such evidence of bad faith use would need to be found to co-exist with bad faith intent regarding the act of registration in order to satisfy the requirement of paragraph 4(a)(iii) of the Policy.”

While “the [e]volution of panel thinking in response to new developments in the domain name system is no doubt something which should be encouraged” it must be anchored to a persuasive interpretation of the Policy. The point of disagreement in “retrospective bad faith registration” is that it transforms that which was legitimate “when it occurred” to being a breach of the respondent’s warranty, thereby justifying a finding of male fide registration regardless whether it was bona fide at the time of registration. “If that registrant, some years later, decides to put the domain name to an additional use which falls within paragraph 4(b)(iv) of the Policy, the Octogen and Ville de Paris line of cases would appear to require a finding of bad faith registration, in circumstances where the domain name was manifestly not registered in bad faith.” To the Torus Insurance Panel, this “does not seem ... to be an attractive answer.”

January 15, 2010

Distributor Rights, Registering Variants of Complainant’s Trademarks

A distributor’s right or legitimate interest in a domain name depends upon the circumstances under which it acquired the domain name. In a number of early cases the complainant’s distributor agreement was silent on the issue of domain names. It makes it difficult to find “a violation of the Policy when there is no specific prohibition in a dealer’s registration of domain names incorporating the mark of the products it is allowed to sell,” Hexagon Metrology AB, and Hexagon Metrology, Inc. v. The Morgan Company / H.Morgan, D2009-1319 (WIPO January 6, 2010) self-citing Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, D2002-0936 (WIPO December 16, 2002). In Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, D2004-0426 (WIPO August 5, 2004) the Panel found that the “evidence shows that when Respondent registered the domain names and began initial use, there was no contractual prohibition on Respondent’s conduct.... That fact has not been contradicted by Complainant. Thus, there is no violation of a contract or published guidelines to support a finding of bad faith [registration].”

Either by silence or express authorization a respondent has sufficient interest in the domain name to avoid its forfeiture to the complainant. Urbani Tartufi s.n.c. v. Urbani U.S.A., D2003-0090 (WIPO April 7, 2003) (<urbani.com>) (domain name registered “with the evidence consent of Complainant at a time when Complainant and Respondent were in a business relationship.”) This can be so even after the formal termination of the agreement. Ivanko Barbell Company v. Syclone Corporation c/o Adam Auerbach, FA0805001191122 (Nat. Arb. Forum July 22, 2008) (<ivanko.com).

The facts in the earlier cases, however, are distinguishable from Hexagon Metrology in that the Respondent’s contract with Brown & Sharpe expressly restricted it from representing himself as ‘the Brown & Sharpe Distributor.’ Contrary to the Respondent's contention

[t]his does not ‘explicitly’ imply that he could register various forms of the company name as his own domain name. Quite the contrary. It implies that unauthorized of the company name or references to the relationship are not permitted.

Other facts both corroborate this reading of the parties’ agreement in Brown & Sharpe and establish the Respondent's bad faith registration and use. These include registering misspelled domain names that refer to Complainant and in one instance using a misspelled domain name – <brownandsharp.com>, omitting the ‘e’ – to ‘disrupt’ the Complainant by misleading Internet users that the Complainant’s website was ‘Down for Maintenance.’ “Internet users who mistakenly omit the ‘e’ while in search of Complainant’s site are likely to be hindered or deterred from doing business online with Complainant. We can find no good faith justification for this false, misleading and potentially disruptive statement.” Respondent's attempt at justification which includes an argument for laches is not properly grounded. The application of equity depends on bona fide use before notice.

January 14, 2010

Not All Confusion is Actionable

A trademark holder’s rights are prospective; they may reach back on proof of trademark use in the marketplace and consumer recognition predating its registration; but otherwise prior use of an identical or confusingly similar term by another as a domain name or identifier of its goods or services belongs to the person who got there first. The Complainant in Park Hotel Leipzig Theo Gerlach OHG v. Niki Chelu, D2009-1559 (WIPO January 10, 2010) stated that it had opened a “new steak restaurant [to be known as the ‘meatery’] in one of [its] several hotels... and plans to extend the steak restaurant concept to other hotels within the chain.” The only problem is that the Respondent registered <meatery.com> for its business years earlier than the Complainant’s German trademark registration. Nevertheless, the Complainant “wishes to use the disputed domain name ... in parallel with its <meatery.de> domain name so as to avoid confusing its guests.”

However, “wishing” to have a domain name is not a persuasive argument under UDRP. Neither is a respondent’s rejection of overtures to purchase the domain name persuasive. The Respondent in Park Hotel (a U.S. resident) “was never and is not [presently] interested in selling the disputed domain name ... or any of his other domain names.” It also is not persuasive for forfeiture that a domain name was inactive until shortly before the complainant filed its complaint and when it became it active it was redirected to another website. What is true for a mark higher on the classification scale is not true for descriptive words and phrases. If a respondent has rights or legitimate interests in the domain name it is irrelevant how it uses it. Neither is it persuasive that “the disputed domain name <meatery.com> is identical with the Complainant’s MEATERY trademark .. [and] likely to confuse the Complainant’s international guests.” Most likely it will be confusing! But when the harmful consequence is self-created it will not be actionable.

Having exhausted its armamentarium, the Complainant throws in an allegation of inference, namely that it believed that “the Respondent is holding onto the domain name because he wants to earn money by selling it for a higher price when the Complainant's EATERY trademark is successfully established.” See yesterday’s Note, distinction between allegations of fact and inference. The only evidence that gave the Panel pause was the redirection of the domain name to another website offering greenhouses for sale: “however, it is not necessary for this Panel to determine these issues as the Complainant has in any event failed to establish the third and final element of the test.”

The Respondent’s observation about the Complainant registering an English word for its trademark and restaurant that it failed to perform due diligence is apt because it spotlights the certification requirement that it have a meritorious claim (Rule 3[xiv] of the Rules of the Policy). Ordinarily, it is the respondent who must answer to its representation and warranty. Here, the Complainant clearly did not “check[] if the name is already in use.” The Respondent also notes that a “further search on Google will easily show that the name ‘meatery’ has been created by others many years ago and is in existence for very many years.” The Respondent evidently did not request and the Panel did not make a finding of reverse domain name hijacking.

January 13, 2010

Inferring from Circumstantial Evidence

Rule 14(b) of the Policy provides that if a party does not answer the complaint or comply with any request from the Panel “the Panel shall draw such inferences ... as it considers appropriate.” The Panel’s decision in MBS Consulting SPA v. mbsconsul inc. / web master, D2009-1505 (WIPO December 23, 2009) illustrates what is appropriate. “There is no direct evidence that the Respondent knew of the Complainant or its MBS CONSULTING trademark, or registered the disputed domain name for the purpose of selling it for a profit. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.”

The following are the undisputed facts in MBS Consulting:

(a) the Complainant’s MBS CONSULTING trademark is specific to the Complainant in connection with its consulting services business; (b) the disputed domain name was registered almost three years after the Complainant began using its MBS CONSULTING trademark on the Internet and otherwise; (c) the Respondent used the disputed domain name for a single page website that stated, in relevant part, as follows: ‘This domain is for sale - USD1890 - (This price is strictly non negotiable)’; and (d) there is no apparent connection or relationship between the disputed domain name and the Respondent or its business or any other justification for the Respondent’s registration and use of the disputed domain name.

It can be inferred from these facts that the Respondent 1) had actual knowledge of the Complainant and its trademark – “The fact that the disputed domain name was registered before the Complainant registered its MBS CONSULTING trademark does not assist the Respondent, because the Complainant was using its MBS CONSULTING trademark on the Internet and otherwise for almost three years before the domain name was registered”; and 2) acquired the domain name to sell it to the Complainant – although the Respondent’s offer “to sell the disputed domain name is not directed specifically to the Complainant or its competitors it is identical to the Complainant’s MBS CONSULTING trademark and there is no evidence that the disputed domain name would be of interest to anyone other than the Complainant or its competitors.”

These inferences are reinforced in MBS Consulting by “the Respondent’s failure to provide any explanation or rationale for its registration and use of the disputed domain name.” Are the inferences “appropriate”? A distinction is drawn between “allegations of fact” and “allegations of inference.” An allegation of fact asserts the existence or non-existence of an act or circumstance, for example that the complainant did not grant respondent permission to register and use the disputed domain name. If a fact is not denied it is deemed admitted and absent evidence to the contrary is conclusive on the issue for which it is proffered.

Rule 14(b) has been construed to mean that allegations of fact unopposed that are reasonable, that is, more probable, may be accepted as true. When the burden shifts and the respondent fails to respond, either because it has not answered or offers no explanation if it has, the Panel will assume that “the evidence would not have been favorable to respondent.,” Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, D2000-0004 (WIPO February 16, 2000).

January 12, 2010

Respondent’s Burden of Production

Paragraph 4(a)(ii) of the Policy is the fulcrum test for both parties. If the respondent demonstrates that it has a right or legitimate interest in the domain name it concludes the proceedings regardless of the complainant’s trademark rights. But, to demonstrate a right or legitimate interest the respondent must either come forward with concrete evidence or the record is insufficient to establish the complainant’s prima facie case. Student Price Card Ltd. v. Victor Trasoff, FA0911001292958 (Nat. Arb. Forum December 23, 2009) (<spccard.com>), citing a string of cases from UDRPs first year of operation. The shifting the burden approach entered the UDRP vocabulary tentatively in April 2000 in two cases by the same panelist [EAuto, Inc. v. Available-Domain-Names.com, d/b/a Intellectual-Assets.com, Inc., D2000-0120 (WIPO April 13, 2000) and EAuto, L.L.C. v. EAuto Parts, D2000-0096 (WIPO April 9, 2000)]. It took several more months to solidify as a rule in the decision process [D2000-0252, 0270, 0374, 0624]. A complainant is not expected to prove a negative proposition – facts that are “uniquely within the Respondent’s knowledge and control,” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000). Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden shifts to the respondent to produce rebuttal evidence.

At its simplest a prima facie case requires the complainant to establish that in using the domain name the respondent is not making a bona fide offering of goods or services [paragraph 4(c)(ii)], is not commonly known by the domain name [paragraph 4(c)(ii)] and is not making a legitimate noncommercial or fair use of the domain name or otherwise justified in using the domain name on free speech principles [paragraph 4(c)(iii)]. If the respondent defaults in appearance the record is limited to the complainant’s submission, although it may be enlarged by an investigation undertaken by the Panel as was the case in General Electric Company v. Estephens Productions, D2009-1438 (WIPO December 17, 2009).

In Student Price Card as in many other UDRP cases the Respondent failed to answer the complaint. Even if it could be argued that each part of the domain name is generic or descriptive, the combination of “spc” and “card” is specific to the Complainant. In cases in which the complainant loses against an absent respondent the trademark or the combination of words are simply too common to charge the respondent with knowledge or if it did that it had the complainant in mind. Dependable Staffing Services, LLC v. Ramesh Prasad, D2009-1206 (WIPO November 12, 2009) (<dependablestaffingagency.com> and <dependablestaffingagency.net>).

The paragraph 4(b) examples of bad faith refer to both registration and use. Thus, if the respondent offers to sell the domain name to “anybody,” but in reality only the trademark holder can use it, it supports two conclusions, first that the respondent has no right or legitimate interest in it; and, second that it registered the domain name for a prohibited purpose. In Student Price Card, the Respondent’s website when active had contained hyperlinks to Complainant and Complainant’s competitors in the discount and credit card services industry, but was presently inactive. Passive holding is bad faith when by direct evidence or inferentially the trademark holder is the only party legally entitled to use the symbol, a legal principle laid down within the first month of UDRP’s initiation.

January 11, 2010

Trademark Consisting of or Incorporating a Geographic Indicator

The dissent in Loma Linda University Adventist Health Sciences Center, Loma Linda University and Loma Linda University Medical Center v. Development Services, StateVentures, LLC, D2009-1059 (WIPO December 18, 2009) agrees that geographic indicators do not qualify as a trademark right, but argues that “the name ‘Loma Linda’ should constitute an exception to the general rule.” [NOTE: The dissent was the sole Panel on an earlier Loma Linda case, Loma Linda University Adventist Health Sciences Center, et al. v. JM XTrade, Inc., Joseph Martinez, D2009-0036 (WIPO March 11, 2009) in which he found for the Complainant. A distinguished panel at the T.R.A.F.F.I.C convention voted the case the most poorly decided case in 2009]. Why the dissent in the more recent case should espouse the position he does is not clearly stated, except that the Complainant “literally put Loma Linda ‘on the map.” So too did the Complainant in Atlantic Station, LLC v. Dargan Burns III, FA0903001250592 (Nat. Arb. Forum April 26, 2009) put Atlantic Station on the map, but that is no compelling reason to support an exception to the general rule.

There are many examples of geographic indicators as trademarks, but holders are not entitled to capture domain names corresponding to them if the domain name is being used in its literal sense rather than for its trademark value or the respondent has made demonstrable preparations to use the domain name in a non-infringing way. For example, Neusiedler Aktiengesellschaft v. Kulkarni, D2000-1769 (WIPO February 5, 2001) (<neusiedler.com>), a lake in Burgenland (eastern Austria) and northwestern Hungary,); or Superga Trademark, S.A. v. Gilberto, Publinord S.r.l., D2008-1890 (WIPO February 24, 2009) (<superga>), a well-known place name, “a hill overlooking the city of Turin (Torino) and the site of an 18th Century basilica and royal tombs.” Both Neusiedler Aktiengesellschaft and Superga Trademark are on the equivalent of the USPTO Principal Register. Neither controls or has a monopoly on the geographic place name.

A combination of a primarily geographically descriptive term and a generic or merely descriptive term for the type of services provided also does not make the grade. National Association of Competitive Soccer Clubs v. Bruce Binler, D2009-0957 (WIPO September 7, 2009). Complainant’s US CLUB SOCCER is registered on the Supplemental Register and has no superior right to shut down or take control of <usclubsoccer.net>.

Even a geographic indicator that has metamorphosed into a famous trademark with an International reputation in the automobile industry can be vulnerable if, as in Loma Linda there was reality to the services the respondent was either presently or demonstrably preparing to offer. “Hitachi” for example is a geographical region of Japan,. The Respondent in Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. Hilaire Shioura, DWS2004-0002 (WIPO July 23, 2004) (<hitachi.ws>) claimed he registered the domain name to promote the region but offered no evidence of “demonstrable preparations.” Kabushiki Kaisha prevails not because it is a famous mark but because the Respondent fails to prove it is in the business of delivering regional information. The trademark holder prevails where the domain name is either passively held or actively directs Internet users to web sites whose content demonstrates lack of rights or legitimate interests and contravenes one of the elements of paragraph 4(b) of the Policy.

If there is to be an exception to the general rule as the dissent insists in Loma Linda it cannot be based on a naked indicator; it would have to be a non-descriptive string in which the geographic indicator is incorporated. Such insistence is out of harmony both with trademark law and UDRP. The dissent in Loma Linda was the sole Panel in an earlier UDRP case, Loma Linda University Adventist Health Services Center, et al. v. JM XTrade, Inc., Joseph Martinez, D2009-0036 (WIPO December 18, 2009), in which he awarded the domain name to the Complainant, and for which he cites no case law authority for the proposition that a geographic place name is protected. Unfortunately, as UDRP is presently constituted the majority in a second case cannot correct an error of law made in a first.

January 8, 2010

Non-Conflicting Use of and Equal Rights in Generic Terms

The general rule is that parties who utilize generic terms as trademarks or service marks (dictionary words, common phrases) cannot use the UDRP to bar others from using them absent proof that the respondent has targeted the complainant or its trademark for commercial gain. This extends to exotic and foreign words of uncertain meaning to an English audience but understood by an ethnic one. A case in point is Vartkes V. Marjik d/b/a Zankou Chicken, Inc. v. ArmenianMatch.com, FA0911001292651 (Nat. Arb. Forum December 23, 2009). The disputed domain name, <zankou.com> is confusingly similar to the Complainant’s U.S. registered trademark ZANKOU CHICKEN – “removal of the term ‘chicken,’ does not distinguish the disputed domain name from the mark, because the distinctive portion ‘zankou’ remains”. However, the Respondent operates a business in a different Class of service. A search for “zankou” solo brings up in declining order the Complainant’s restaurant, a fictional work having a character by that name and the Respondent’s Armenian dating service.

The parties share an ethnic background; both are located in California. “Zankou” appears to be an Armenian word (of uncertain meaning; could not find on an Internet search). The disputed domain name was registered (1998) after the trademark’s alleged first use in commerce (1984), but before the trademark registration (2003). There is no question that the Respondent’s website is the portal to its business. “Complainant alleges that the <zankou.com> domain name redirects to a website that sells social networking services,” which is a “purpose wholly unrelated to Complainant’s use of its ZANKOU chicken mark.”

First use in commerce, however, is not proved by assertion alone. “Although the Complainant asserts that it has used the ZANKOU CHICKEN mark since 1984, without evidence in the record supporting these assertions, the Panel cannot find Complainant had rights prior to those established through the registration of its mark. ” Since evidence of use of the trademark prior to its registration on the Principal Register is entirely under the Complainant’s control, its failure to submit proof of 14 years of commercial presence in the Respondent’s marketplace is insufficient to overcome the facts of record, namely timing of the registration of the domain name and the use of the website.

Although not discussed in the decision, the Respondent’s continued use of a domain name (over 10 years) incorporating the trademark “before any notice to you of the dispute” supports the affirmative defense under paragraph 4(c)(i) of the Policy. The UDRP recognizes that two parties can equally be entitled to the use of a term, Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) (<autocar.com). Different classes under these circumstances cannot (as required under paragraph 4(b)(iv) of the Policy) create any “likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”

January 7, 2010

No Priority Over Respondent’s Legitimate Interests

Registering domain names composed of dictionary words improves the likelihood of good faith even if they conflict with existing trademarks, Kim Laube & Company Inc. v. RareNames, WebReg, FA0910001291282 (Nat. Arb. Forum December 22, 2009) (<natureschoice.com> and <natures-choice.com>). If there are any “buts” they depend on the timing of the registration, the proximity of the parties and the contents of the websites. Layby Services Australia Pty Ltd. v. Chrisco Hampers Australia Ltd., D2009-1066 (WIPO November 3, 2009) (<hamperking.com>). As a general rule the more ordinary the words, the heavier the Complainant's burden to prove bad faith.

NATURES CHOICE is not exactly one of a kind. There are approximately 80 registrations on the Principal Register that either include the term or are composed of the two words (with or without the possessive). The Complainant in Kim Laube is a successor to an earlier registrant who allowed its trademarks to lapse. Those earlier trademarks were composites that included prominent and distinctive device elements. This led the Panel to query “which trademark Complainant is claiming long and continuous use.” The Complainant only applied for registration for NATURES CHOICE after its purchase of the name rights which was many years after the registration of the domain name. There are, of course, documented examples of holders inadvertently losing their trademarks and later re-acquiring them, but in contest with a domain name registrant a declaration of first use in commerce is insufficient (by itself) for priority of right.

To prevail on an argument of “extensive use of the mark” with all that that implies requires more than an assertion. Where knowledge of a fact is within the control of the party who asserts it the failure to offer supportive evidence undermines its truth. According to the Complainant it and “its predecessor in interest have been using the trademark NATURE’S CHOICE continuously for more than 22 years, since at least as early as November 21, 1986.” Further, it “states that it acquired the trademark in 2007, at which time the estimated value of the goodwill in the mark was approximately US$500,000 ... [and that] since 1986, the mark has acquired significant consumer recognition in the field of animal and pet products. Tens of millions of dollars in NATURE’S CHOICE products have been sold since the mark was adopted.” However, there is “no documentary support for the claim that in 2007, the value of the goodwill in the trademark was an estimated $500,000. There is no proof of the ‘tens of millions of dollars’ of product sold. There are no other indicia that the trademark has ‘acquired significant consumer recognition’.”

The basic principle in UDRP jurisprudence is proof that the respondent has actual knowledge of the complainant’s rights and intended to take advantage of the complainant or its trademark’s reputation. Intent is generally inferable from the surrounding facts and circumstances. “[F]or that reason a complainant must be assiduous to prove its reputation in, and the public awareness of, its trademark even when it has registered trademark rights. That onus rises when the trademark consists of descriptive elements, as in this case” (emphasis added). That a holder would like to have domain names corresponding to its trademark is not grounds to wrest domain names from the respondent first to register. The Complainant in Kim Laube “owns the domain names <natureschoiceshop.com> and <natureschoiceshampoo.com> which, albeit that they might not be Complainant’s first choice, nonetheless fully reflect its trademark.”

January 6, 2010

Registration in Good Faith; Subsequent Change of Use = “Retroactive Bad Faith”

I am returning to this issue of “retroactive bad faith” because it is beginning to receive attention from a number of panelists. It represents a new construction of the Policy that conflates the “and” and “or” of paragraph 4(a)(iii) so that bad faith registration rests on the respondent’s present use of the domain name where use has changed over time to infringe the complainant’s rights. It was first announced in City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D2009-0643 (WIPO July 3, 2009) (complaint denied) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009) (transfer granted). Essentially, “retroactive bad faith” holds the respondent to its representation and warranty for any subsequent (not only to its initial) use of the domain name. A change of use to take advantage of the complainant or its trademark supports a finding of abusive registration.

The Panel in Fundação CPqD - Centro de Pesquisa e Desenvolvimento em Telecomunicações v. Gary Lam. D2009-1403 (WIPO November 27, 2009) acknowledged the new construction, but concluded that since the Complainant “has not put its case in that fashion and the facts of this case are such that the adoption of a more conventional approach leads to a decision in the Complainant’s favour ... [t]his is an argument and discussion to be left for another day.” Leaving the argument “for another day” was not the view of the Panel in Ville de Paris v. Salient Properties LLC, D2009-1278 (WIPO December 3, 2009) <wifiparis.com>).

The prevailing construction of the Policy – the one that respondents have come to expect – gives the original respondent a pass, but nails the transferee. This is illustrated in HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (<creditkeeper.com> ) and even more tellingly in Daimler AG v. William Wood, D2008-1712 (WIPO February 25, 2009) a re-filing of the complaint – tellingly because the Respondent’s predecessor, its partner in the Internet business claimed that the change of registration was not really a transfer but intra-partnership. However, the point in both Daimler (conventional approach) and Octogen is that the websites changed over time; they may have started in good faith, but they metamorphosed to infringing.

If “retroactive bad faith” takes hold – if it is not a dead end – it represents an entirely new direction for assessing abusive registration. It means that the respondent either sticks to its original purpose or be called to account. It is more the model of the Anticybersquatting Consumer Protection Act which is less forgiving than the UDRP. The question is, Why is the new construction being offered at this time? It is, I think, a response to respondents changing course adventitiously and believing that as original registrants they are protected from forfeiture. The new construction puts respondents on notice that this is no longer an acceptable model even if they were the first to register a term subsequently found to be identical or confusingly similar to a newly acquired trademark.

January 5, 2010

Credibility as a Factor in Inferring Intent

It is perfectly rational to register a domain name for its income potential. Pay-per-click revenue can be respectable, but it shades into illegitimacy when the motive to create revenue is coupled with intent to take advantage of another’s trademark. While “generation of revenue from domain name parking activities is not necessarily activity in bad faith” it is mala fides to use a domain name “in the hope and expectation that ... similarity [to the Complainant’s trademark] would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page,” Fundação CPqD - Centro de Pesquisa e Desenvolvimento em Telecomunicações v. Gary Lam. D2009-1403 (WIPO November 27, 2009).

The assessment in Fundação CPqD “[e]ssentially ... boils down to the question; is the Respondent using the Domain Name with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?” Respondents conventionally deny having the complainant in mind when they registered the domain name. In many instances geographic distance makes the denial plausible. EURO DATA GmbH & Co. KG v. Excel Signs, D2009-0465 (WIPO May 5, 2009) (Germany and U.S.A.). Denial not plausible in Fundação CPqD or Credit Industriel et Commercial S.A. v. Demand Domains, Inc., D2009-1184 (WIPO October 19, 2009) (same Panel in both cases) because the apparent random strings of letters – “cpqd” and “escic” – correspond to the Complainants’ trademarks. Whatever may be appearance, the strings are not random, but referential or symbolic.

The Panel relies on a number of facts to support a finding of bad faith registration that are worth looking at. The Respondents in both cases have a history of UDRP findings against them for abusive registration. History undermines a respondent’s credibility in denying knowledge of the Complainant’s rights unless it gives a fuller account as to how it selected the letters. In order to succeed on such an argument the respondent has to show that its selection reflects its normal practice (generic words, 4 or 5 letter strings) and explain how it decided on the specific sequence it registers. Does it, for example, use an algorithm to select the sequence of letters? “Perhaps the [d]omain [n]ame is merely one of an extensive set of registrations by the [r]espondent all of which comprise similar ‘meaningless’ combinations of five letters.” But if that is the case, it needs to be fleshed out with evidence. Silence is construed against the party asserting a right.

In Fundação CPqD the letters sequenced as they are “have no obvious meaning in any language and are not associated with any person or business other than the Complainant.” The “only credible reason why an Internet user would type the Domain Name into a browser would be that he or she was seeking information about the Complainant or its activities.” The confusion element under 4(b)(iv) of the Policy means misleading the Internet user into believing that the website is that of the trademark holder – sometimes referred to as “initial interest confusion.” “It does not matter that when the Internet user arrives at the pay per click site that it then becomes clear that the website is unconnected with the trade mark holder.” The damage is already done because the respondent has achieved its goal of enticing Internet users to the website.

January 4, 2010

Reproducing Distinctive Part of the Trademark, Omitting Article: A Form of Typosquatting

SAVE THE CHILDREN and <savechildren>. Omitting an article, in this case the “the” but retaining the verb and subject, Save the Children Federation, Inc. v. Steve Kerry, North West Enterprise,Inc, D2009-1404 (WIPO December 9, 2009) does not create a distinctive new combination and has some of the earmarks of typosquatting; that is, a de minimus variation of the prototype. It is not the “the” that makes the trademark distinctive which means that the domain name is sufficiently similar to the trademark to pass the jurisdictional test. The trademark in its common law form is decades old; registration on the Principal Register dates back to the 1980's. The parties are both resident in the U.S. While the Respondent’s default deprives the Panel of direct evidence of its intention its motivation is clear, not to aid children but itself by generating pay-per-click revenue. But, how is a finding of bad faith registration generated from these facts? In many cases, bad faith use informs intention in registering the domain name. Bad faith use is readable on the surface – it either is or is not; bad faith registration is subsurface. From this can be inferred that. There is no doubt that the combination “save children” could be differentiated in use from the trademark but that depends on the content of the website.

It is generally true that silences as much as submissions contain clues of intention. There are electronic footprints; who the respondent is, its history and some informative information about its activities are either discoverable or deducible. In Save the Children the Respondent has a history of abusive registration that includes typosquatting which typically involves adding or omitting letters. In general, a respondent’s registration of a domain name that misspells a trademark, or is composed of added, substituted or transposed letters that varies the prototype, is not merely confusingly similar but implies knowledge and suggests targeting the trademark. De minimis changes “immediately raise[] suspicions and call[]or an explanation,” CareerBuilder, LLC v. Azra Kha, D2003-0493 (WIPO August 5, 2003) (<careeerbuilder.com>, an extra “e”).

The Save the Children Respondent left a larger than usual “silent record.” It was involved in a prior proceeding involving the same domain name, D2006-0388 (WIPO May 15, 2006). This suggests perhaps that the Complainant (or its counsel) has been less than vigorous in policing its trademarks. Nevertheless, as with the earlier proceeding, so in this one. Use of a “disputed domain name to direct Internet users to other charitable organizations is not a bona fide offering of services,” Id. The existence of an earlier proceeding – not mentioned incidentally in the later one – is evidence of actual knowledge of the Complainant’s trademark. (This is one of the rare instances – indeed, a solitary one – in which the same parties are arbitrating the same claim without reference to their earlier combat). In this later proceeding, the Panel apparently ignorant of the earlier proceeding, in essence, fell back on constructive knowledge: “Respondent either knew, or should have known, of Complainant’s SAVE THE CHILDREN mark when it registered the Domain Name insofar as, well before Respondent registered the Domain Name, the Mark had been in use (since 1939), the Mark was well-known in the United States and abroad.”

Omitting the “the” – contracting the trademark to its essence by eliminating the article – but leaving the distinctive elements in place could only be defended if a domain name is used to attract visitors for the value of the combined dictionary words. It does not do this. It is this failure that ultimately establishes the Respondent’s mala fides.

February 2010 NOTES , DATES ARE IN REVERSE ORDER

February 26, 2010

Exception to the Post Dated Trademark Rule

Putting aside the question as to whether a particular corporate name is registrable as a trademark, or is simply a trade name not actionable under the UDRP, the Panel in Applied Technology Holdings, Inc. v. u-Logic, Dan Stirling, D2010-0042 (WIPO February 17, 2010) held that the Complainant (ipso facto) owned a common law trademark in APPLIED TECHNOLOGY HOLDINGS. While it is clear that the Respondent – a former officer and director of Complainant – breached his fiduciary duty to the Complainant and has no right or legitimate interest in the domain name, less clear is jurisdiction under the UDRP. There is no doubt that jurisdictional space has grown to include abusive practices, and this may be the Panel’s rationale in Applied Technology for holding the case and deciding in the Complainant’s favor.

Ordinarily, a domain name registered prior to the complainant acquiring a trademark right cannot logically have infringed a right nonexistent at the time of registration. There is an exception to this rule set forth in the WIPO Overview at paragraph 3.1, which applies to a situation in which an insider takes advantage of a corporate opportunity: “In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”

The Respondent in Applied Technology argued “that its paying for registration and renewal of the disputed domain names creates such a right.” However, to succeed on this argument a respondent has the burden of proof on the issue of consent. The issue was specifically addressed in Igor Lognikov v. Web Ventures, Nerdec, Inc. and Charles Edmunds, D2009-1684 (WIPO January 29, 2010) (“If save for consent, the facts suggest that a domainname had been registered and used in bad faith, then it is the respondent that bears the burden of proof that the Complainant consented to that activity.”) Secret acts do not support consent any more than they would acquiescence.

Indeed, the Respondent in Applied Technology “offer[ed] no proof of ... such authority, nor any proof that Complainant was even aware of its registration of them in Respondent’s rather than Complainant’s name at any time during his service as Complainant’s officer and director.” And, “[w]ithout express consent to the contrary, Mr. Sterling’s registration of the disputed domain names in anything other than his beneficiary’s name was thus made in bad faith.” Unauthorized acquisition of a corporate opportunity by an officer and director imposes on that person a constructive trust in favor of the corporation.

February 25, 2010

Consequences of Disclaiming Exclusive Rights

World Publications, LLC v. GMW Digital, LLC, D2009-1737 (WIPO February 8, 2010) is a brief decision. The complaint was denied on the grounds that the Respondent had registered the disputed domain names – <privatemeetingssummit.com> and <privatemeetingsummit> – prior to (in fact, many years earlier) than the Complainant’s acquisition of a trademark right. I am limiting this Note to the discussion in Footnote 1 of the decision which briefly discusses the status of the trademark, PRIVATE MEETINGS SUMMIT. The Panel reviewed the automated records of the PTO and found, first, that the Examining Attorney had initially rejected the application, and when it was approved upon proof of continuous use for 5 years, required the Complainant to disclaim “summit.” Under 15 U.S.C. § 1052(f) a mark that has been rejected as merely descriptive may be registered on the Principal Register upon proof of acquired distinctiveness, or secondary meaning.

Although not the dispositive issue in World Publications, disclaiming words in the trademark can be fatal to a holder’s claim, as it was in Loma Linda University Adventist Health Sciences Center, Loma Linda University and Loma Linda University Medical Center v. Development Services, StateVentures, LLC, D2009-1059 (WIPO December 18, 2009) (<lomalinda.com>) where the Complainant disclaimed “Loma Linda” in its two trademarks, LOMA LINDA UNIVERSITY 1905 TO MAKE MAN WHOLE and LOMA LINDA UNIVERSITY TO MAKE MAN WHOLE CENTER FOR SPIRITUAL LIFE AND WHOLENESS. Similarly, Combined Insurance Group Ltd v. Xedoc Holding SA c/o domain admin., FA0905001261545 (Nat. Arb. Forum June 26, 2009) (<cheapautoinsurance.com>) where the Complainant was required to disclaim “auto insurance” in its descriptive trademark CHEAP AUTO INSURANCE.

The general rule is that “when descriptive or generic words are disclaimed in a registration on the Principal Register, the legal effect is that the registration does not evidence any trademark rights in the disclaimed words; rather, those words are protected only when used with the mark as a whole,” Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, D2008-1475 (WIPO December 11, 2008) (<religionnewsservice.com>). The Complainant disclaimed exclusive right to use of “news service” apart from the mark as shown. Its trademark RELIGION NEWS SERVICE is registered on the Supplemental Register and although the Complainant has been using the term for half a century was unable to persuade the Panel that it had acquired secondary meaning.

Even if there were not an issue of timing and the Complainant had not misstated the facts, World Publication’s PRIVATE MEETINGS SUMMIT suffers from the same disability as the other examples. It has no monopoly of a descriptive phrase, in this case used by the Respondent who demonstrated that it was in the same industry and provided similar services.

February 24, 2010

Failing to Make a Case for Confusing Similarity

Paragraph 4(a)(i) of the Policy sets forth the elements for jurisdiction. A complainant has standing to maintain a UDRP proceeding only if 1) it has an existing trademark to which 2) the disputed domain name is identical or confusingly similar. If the complainant either has no trademark or if it does but the domain name is not identical or confusingly similar to it the complainant has no standing to complain. As paragraph 4(a)(i) has come to be construed the trademark in which the complainant has a right is one that exists at the time the complainant commences the proceeding.

Of the seven disputed domain names in Igor Lognikov v. Web Ventures, Nerdec, Inc. and Charles Edmunds, D2009-1684 (WIPO January 29, 2010) the Respondent consented to transfer three, typographical variations of the trademark, TEMPLATE MONSTER; it contested four others of which three incorporated one of the words of the trademark, “template”, as in <templatetuner.com>, <template tunning.com> and templatestunning.com>. The fourth domain name was confusingly similar to the trademark by adding an “s” to “monster”, <templatemonsters.com>. The Complainant (represented by counsel) submitted a confusing complaint by omitting material facts including trademark information that was only presented in the response.

Although the Complainant alleged that only the “template” domain names were abusive, it offered no proof – indeed “made no attempt to address the issue of confusing similarity” in so far as the non-monster domain names were concerned. The Panel noted

If the Complainant is not prepared to make his case clear in this respect, it is not for the Panel to guess what that case might be. Therefore, so far as the “non-monster” Domain Names are concerned, the Panel finds that the Complaint has failed to make the requirement of “confusing similarity” as that term is understood under the purposes of the Policy.

For both “monster” and non-monster domain names, instead of relying upon its registered trademarks the Complainant appeared (inexplicably) to rest its claim for transfer on common law trademarks in <templatemonster.com> and <templatetuning.com>. However, the Complainant “does not identify where he claims ‘common law’ rights and mark. He simply asserts that the marks hav.e been used ‘in worldwide’ commerce.” The question here is whether a complainant residing in a jurisdiction that does not recognize common law trademark can be said to have a trademark right. In Igor Lognikov the Complainant was accorded ‘the benefit of the doubt’ because he appears to be based in the United States. The decision puts a class of complainants on notice. Making a case for common law trademark based on national jurisdiction is not an issue to be overlooked as the same panelist noted in one of his earlier decisions, Antonio de Felipe v. Registerfly.com, D2005-0969 (WIPO December 19, 2005) (“These rights derive from national laws and do not exist divorced from such laws.”) The answer may lie, as it did in Antonio de Felipe, with the market in which the complainant operates.

February 23, 2010

Proving Common Law Trademark Rights by Showing Renown in a Particular Marketplace

However identical or confusingly similar a disputed domain name may be to a name used by the complainant if the name is not a trademark the dispute does not belong in a UDRP proceeding. Although it is not necessary for an alleged trademark to be registered, the complainant’s burden of proof rises in proportion to its classification. Generally, descriptive and suggestive words require more proof; arbitrary and fanciful less. To successfully assert common law or unregistered trademark rights, a complainant must show that its alleged mark has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. “Where a term is highly descriptive, even very extensive use may be insufficient to establish the requisite secondary meaning,” citing Canadian and U.S. case law, Jason Hachkowski v. Lucas Barnes, D2009-1800 (WIPO February 5, 2010) alleging common law trademark in AIDS-DRUGS-ONLINE.COM. 

The proof problem in establishing unregistered rights is also illustrated in Patricia Kelley v. Innovation HQ, Inc., D2009-1723 (WIPO February 6, 2010). The Complainant alleged that she has an unregistered trademark in <papersnowflakes.com>; allegedly infringed by the Respondent’s registration of <papersnowflake.com>. As stated by the U.S. Supreme Court and echoed in many ICANN cases, a trademark acquires secondary meaning when, “in the minds of the public, [its] primary significance is to identify the source of the product rather than the product itself,” Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 851, n.11 (1982). The Patricia Kelley Panel noted that ordinarily one “might expect details of users, markets, testimonials, annual advertising figures, annual business turnover details, detailed website statistics and any awards or public reports or commentary in relation to the business or website.” Explanation long on unsupported statements and short on facts has never been a winning formula. 

Moreover, “[m]ere evidence of use in relation to a website and a bare submission that there have been substantial website page views during that period is insufficient, even in relation to a not-for-profit business, in order to enable the Panel to infer the requisite degree of secondary meaning to support a claim of common law trade mark rights.” It is not even a matter of providing advertising expenses. For example, the Complainant in The College Network, Inc. v. IV-MEDIA, LLC, FA0811001234688 (Nat. Arb. Forum January 23, 2009) provided evidence of the dollar amount spent in advertising its products under THE COLLEGE NETWORK mark. However, it failed to offer “any evidence that the public at large has come to associate the mark with Complainant’s goods and services.” According to the 3-Member Panel “the focus of a secondary meaning inquiry should be on the public’s awareness of the mark, not just on a complainant’s sales or advertising data.” So, too in Patricia Kelley. While the Complainant alleged that “since 2000 … there has been 18,000,000 views of the website… [she provided no] other evidence of renown in any particular marketplace.”

February 22, 2010

Targeting as an Essential Element of Proof for Trademarks Composed of Generic and Descriptive Terms

Having a registered trademark buys standing but it is not sufficient to win a domain name if its composition is on the weaker end of the classification scale.  The Panel noted in National Gardening Association, Inc. v. CK Ventures Inc., FA0911001294457 (Nat. Arb. Forum February 16, 2010) that “it seems probable that the USPTO only found the marks [containing the words GARDENING WITH KIDS] to be distinctive enough to be registrable because of the stylized manner in which they were presented as well as the additional embellishment of the sunflower device.”  To prevail the complainant must also prove that the respondent had actual knowledge of its trademark and registered the domain name to take advantage of its reputation in the marketplace.

Timing is a critical factor in proving knowledge even with suggestive trademarks.  Holders of generic and descriptive trademarks cannot rely on their registrations. That a later acquired trademark has no priority over an earlier registered domain name is a well established principle imbedded as a consensus view in the WIPO Overview at paragraph 1.4.   In National Gardening, the record disclosed that when the disputed domain name was registered “Complainant’s earliest trademark was still pending and indeed was only advertised for opposition purposes some 3 weeks” after the registration of the domain name. “Admittedly [the application] was on file and [the trademark] had apparently been used since January of that year, but it seems difficult to attribute bad faith to Respondent when it could hardly have been aware of Complainant’s (only marginally) earlier rights.”

Generic and descriptive trademarks used by their holders in an essentially generic and descriptive way cannot prevent others from using the same combination of words to advertise their own goods or services.  This is the case in National Gardening and was also illustrated recently in Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010), AUSTIN AREA BIRTHING CENTER and <austinabirthcenter>. 

Even though the Respondent in National Gardening is using the domain name as an advertising portal and in that respect may lack any right or legitimate interest and even if the use of the domain name marginally directs Internet users to competitors of the Complainant it is not sufficient to prove abusive registration.  The Panel cited Société des Produits Nestlé S.A. v. Pro Fiducia Treuhand AG, D2001-0916(WIPO October 12, 2001) for the proposition “that where a respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, then lack of bona fide use on its own (i.e. all the features set out in paragraph 4(b) of the Policy), is  not sufficient to establish bad faith.”  This proposition is less convincing when applied to a suggestive or fanciful trademark, TATRA, a.s. v. Tatra Ltd., Tatra folks PO, FA0911001296249 (Nat. Arb. Forum February 5, 2010), denying the complaint (over dissent).  In National Gardening, there was no persuasive evidence that in registering the domain name the Respondent intended to piggyback on the reputation of Complainant’s trademark.

February 19, 2010

Default Not An Admission of Material Facts

Respondents default in appearance in a high percentage of cases and in many of them the complainant prevails. However, a complainant is not entitled to relief simply because it has a trademark and a respondent does not suffer forfeit of the domain name because it defaults. This was illustrated most recently in General Electric Company v. Estephens Productions, D2009-1438 (WIPO December 17, 2009) (<geentertainment.com>) in which the Panel found that the Respondent was legitimately operating under the name of “Global Executives Entertainment,” a Georgia business registered under the name of G.E. Entertainment, LLC.

It is not cybersquatting to register a domain name identical or confusingly similar to a complainant’s trademark, as long as it is not acquired to take economic advantage of a trademark pre-existing the registration of the domain name. Nor is it bad faith to speculatively register domain names for presumed future value. A holder of a future acquired trademark, for example, has no legal right to an earlier registered corresponding domain name. This principle is copiously applied, most recently in CruiseShipCenters International Inc. v. Leonard Brody, FA0912001297509(Nat. Arb. Forum February 10, 2010) (<cruiseshipcenters.mobi>) in which the complainant provided no “arguments or additional supporting documentation regarding the date Complainant first established common law rights in the mark.” 

To prevail a complainant must prove that the defaulting respondent has no right or legitimate interest [paragraph 4(a)(ii)] and that it registered and is using the domain name in bad faith [paragraph 4(a)(iii)]. In a small percentage of cases, as indicated in the General Electric and CruiseShip cases, the complainant is unable – in ignorance of the proof requirements – to marshal proof and the domain name stays with the respondent. In other, generally nondescript cases such as Philosophy Inc. v. 1-800-Therapist c/o Donald Hackett, FA0912001297666 (Nat. Arb. Forum February 2, 2010) Panels are authorized to draw inferences. Rule 14 of the Rules of the Policy reads:

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

Although default is not an admission of material facts, there are consequences. A respondent put to its proof cannot ignore allegations and evidence that it has no rights or legitimate interests in the disputed domain name. Rule 5(b) requires the respondent to “respond specifically to the statements and allegations contained in the complaint.” Failure to rebut allows the Panel to draw an adverse inference. The reasoning is that if there were evidence, the respondent would have presented it.

The settled rule is that the Panel “is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory,” Philosophy. The rule has been expressed in a variety of ways. Thus, if the respondent fails to respond, either because it has not answered or offers no explanation if it has, the Panel will assume that “the evidence would not have been favorable to respondent,” Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, D2000-0004 (WIPO February 16, 2000); again, allegations of fact unopposed that are reasonable, that is, more probable, may be accepted as true, Reuters Limited v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (“The Panel draws two inferences where the Respondent has failed to submit a response: (a) ‘the Respondent does not deny the facts which the Complainant asserts’ and (b) ‘the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts’). In Philosophy, the Respondent redirected the Internet user to his own domain name <1800therapist.com>). This constitutes bad faith under paragraph 4(b)(iv) of the Policy.

February 18, 2010

Insufficiency of Evidence; Benefit of the Doubt

Tatra, a.s. has national trademark registrations for TATRA in the United States and the European Community and is also the owner of a number of other TATRA and TATRA-family trademark registrations around the word, including the International Trademark Registry. It does not appear to have a trademark in Russia, the Respondents’ home jurisdiction in TATRA, a.s. v. Tatra Ltd., Tatra folks PO, FA0911001296249 (Nat. Arb. Forum February 5, 2010), but it sells trucks in the Russia market. The majority were not persuaded that the Respondent was targeting the Complainant when it registered the domain name <tatra.com>. I call this a “benefit of the doubt” case; the expression “not persuaded” translates into a failure to preponderate on the evidence. However, that being said, there are a couple of unusual features about the case.

The subdivisions of paragraph 4(b) set forth four non-exclusive examples of bad faith registration and use. It has long been established that panelists may consider the “totality of the circumstances” – coined in Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) – when conducting a review of the evidence, citing among other cases Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO March 7, 2000), “[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [paragraph 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”

However, “totality of the circumstances” is generally applied against the respondent. In Tatra the rule is reversed and applied in favor of the respondent. That is, just as there are circumstances from which an inference can be drawn of bad faith registration, equally the same circumstances can be read in respondent’s favor. The domain name was registered in 2001 and held passively since that date; passive, at least, to the extent that the domain name has no active presence on the Internet. However, the respondent “uses” the domain name as an e-mail address, “contact@tatra.com” in connection with its business communications with its business partners.

As the dissent points out, there is substantial law on what is called “passive use” stemming from Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The “fact that the domain name was used in connection with an email address before any notice to Respondent of this dispute does not, at least in my opinion, necessarily support the majority's conclusion on the bad faith element.”

However, the majority cites precedent that holds that “[a]lthough it may not be easy to discern whether a domain name is being used for e-mail, FTP services, or simply as a host, such uses are legitimate,” Thrive Networks, Inc. v. Thrive Ventures, Inc., D2003-0534 (WIPO August 26, 2003). There is certainly precedent for emails, but respondents generally register generic terms and common names for their vanity services. Tetra is different, in that the name is identical to the trademark.

The second unusual feature is that evidence that is unpersuasive to prove a right or legitimate interest in the domain name is held to be sufficient to avoid a finding of bad faith. “Whereas [the assertion that the use of ‘contact.tatra.com’ is legitimate] is not persuasive with respect to the analysis under [the] second element of the policy ... it is at least some evidence in its favor with respect to the issue of bad faith, where the Complainant carries the burden.”

February 17, 2010

Crossing Boundary Separating Denotative and Connotative

Yesterday’s Note discussed a dictionary word used misleadingly to confuse Internet users looking for the Complainant, but words can be used denotatively as well as connotatively. In ordinary usage, words often cross the boundary that separate them as a speaker weaves his or her sentences. In the dictionary, definitions are denotative. For example, defining the quality “virtue” or “vertu” is denotative. Trademarks on the other hand are connotative indicators; they add value to words by transforming the common into symbols of identity. Nokia’s VERTU is intended to suggest the quality attributed to one with “vertu” transformed to a cell phone. Geographic indicators are denotative in that they pinpoint location without having to cite latitude and longitude. Sometimes words are interchangeably denotative or connotative depending on the speaker’s intention. “Hayward” is a city in California; it is a surname; it is also the trademark for the Complainant in Hayward Industries, Inc. v. WebQuest.com, Inc., D2009-1493 (WIPO January 27, 2010).

The Respondent in Hayward alleged that it registered the domain name (as it has many others) for its geographic significance. It maintains a stable of domain names with geographic orientations. When domain names are appropriately used they qualify as bona fide offerings of services. It is with deviations from the denotative that respondents expose themselves. As with yesterday’s “vertu” so with today’s “Hayward.” Respondents gain credibility by showing their business plans for their geographic websites, Leyton & Associés (SAS), Thésée (SAS), Leyton Consulting UK and Ireland Limited, Leyton Maroc, Leyton Belgium, Leyton UK Limited v. Drela Mateusz, Elephant Orchestra, D2009-1589 (WIPO January 20, 2010) (<leyton.com>), but lose credibility by putting their websites to use in a non-denotative sense as in Hayward. Once the content of the website evidences a cross over to the connotative the registration of the domain name becomes suspect. “***PPC parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services,” Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008).

The trademark does not have to have wide currency. The question is whether it is targeted; whether the respondent is taking advantage of the connotative quality of the word or phrase. In Hayward, the proof is internal; evident from the content in that the website contained links to businesses competitive with the Complainant. This raised a question as to whether the Respondent violated paragraph 4(b)(iii) or 4(b)(iv) of the Policy. Commercial gain is fundamental to all the examples of bad faith although only explicitly expressed in 4(b)(iv). However, 4(b)(iii) requires proof that the respondent is a “competitor.” Paragraph 4(b)(iv) focuses on likelihood of confusion. A competitor “is a person or entity in competition with a complainant for the provision of goods or services, and not merely any person or entity with an interest oppositional to that of a mark holder,” Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001). In Hayward, the Panel was not convinced that Respondent is a “competitor” of Complainant.

Whether one is a competitor or not, at least ultimately, important, because the question is determined by the denotative vs. connotative divide. “[W]here ... the links are apparently to competitive websites, especially with no indication that the links are not sponsored by or affiliated with the relevant trademark owner, then such activity indicates bad faith under the Policy,” Wal-Mart Stores, Inc. v. Whois Privacy Inc., D2005-0850 (WIPO September 26, 2005). It is a contradiction in terms for a respondent to allege good faith – a denotative argument – and use the domain name for its connotative quality to direct Internet users to websites offering goods or services competitive with complainant.

February 16, 2010

Respondent Responsible for the Content of the Website

The general rule is that where a respondent uses a parking service to populate its website with links that redirect Internet user to goods or services competitive with complainant it violates paragraph 4(b)(iv) of the Policy. The underlying principle is that a respondent cannot evade its representation and warranty under paragraph 2 of the Policy by denying responsibility for the content of its website. Even though the owner of a parked domain name may not control the content Ait is ultimately [the] respondent who is responsible for how its domain name is used, State Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum November 20, 2007).

This well trodden ground is discussed in Nokia Corporation v. Ara Guloglyan, D2009-1739 (WIPO February 4, 2010). It is persuasive for a respondent to argue that it contracted the content of the website to a third party. A case can be made in respondent’s favor for dictionary words where the domain name is used in its lexical meaning, but a finding of targeting is particularly difficult to overcome where the content of the website supports a likelihood of confusion [paragraph 4(b)(iv) of the Policy]. The Complainant's trademark in Nokia is VERTU, spelled in English as “virtue” but “vertu” can also be found in the dictionary as a variant. It has a specialized meaning in literary and artistic studies, denoting an excellence of taste and discernment.

The Respondent registered <vertuemail.com> and <vertumail.com>. He explained that “he purchased the disputed domain names in 2006 for the sole purpose of creating and maintaining virtual email websites for independent and amateur artists, the idea being to allow artists to be able to send emails, post and show to the world their creations, such as music videos, clips, paintings, sculptures and other art creations. The word “vertu” was chosen for its dictionary meaning of ‘Fine Arts & Visual Arts’, ‘The artistic way’.” A noble endeavor, but domain name rights and legitimate interests are locked into the present and in Nokia the Respondent’s explanation failed to meet reality. Virtual mail services of the kind the Respondent allegedly contemplated can be a bona fide offering of services, but the respondent has to establish its legitimate interest in rebutting the complainant’s prima facie case under paragraph 4(a)(ii) of the Policy.

The test is not what a respondent has in mind to do in the future but what he or she is doing in the present. Future oriented plans must be anchored by proof of “demonstrable preparations.” “It is by now well established that PPC parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii),” Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008).

In Nokia, the “Respondent provides not one piece of evidence to support his claimed plan to use the disputed domain names as a means to enable artists to show their works. The only evidence before the Panel shows that the domain names are being used to divert potential customers of the Complainant to its competitors, through sites designed to generate revenue in which the Respondent, as the owner of the disputed domain names, can be expected to share.” A respondent has two ways of escaping forfeiture, by either proving an affirmative defense or benefitting from the complainant’s inability to prove bad faith registration. Use in bad faith is generally evident from the content and also follows from a finding that the respondent lacks rights or legitimate interests in the domain name. But content also proves bad faith registration where a domain name incorporating a trademark piggybacks on complainant’s presence and reputation in the marketplace as explained in Ustream.

February 15, 2010

President's Day

Next Note will be posted on Tuesday, February 16, “Respondent Responsible for the Content of the Website.”

February 12, 2010

Correcting the Law in a Later Decision Wrongly Stated in an Earlier One

There is no intra-UDRP procedure for correcting a wrong decision. To state the case charitably, there are some decisions that deserved more than a single set of eyes, but the Policy provides no procedure for appeal. Recourse is to a national court, which in the United States would be a claim in district court under the Anticybersquatting Consumer Protection Act (ACPA). Either the law upon which a panelist rested his or her decision or his or her understanding of the law was grounded on a false premise. Such decisions are legal dead ends. Unfortunately, parties with small means are discouraged by the expense of a plenary action to mount a de novo challenge to a UDRP decision.

While it is no comfort to the losers of an earlier case, it does happen that the correct law is applied in a later one. An example of this is Loma Linda University Adventist Health Sciences Center, et al. v. JM XTrade, Inc., Joseph Martinez, D2009-0036 (WIPO March 11, 2009) in which the sole Panel determined that the Complainant had a superior right to <lomalinda.org> and <lomalinda.net> even though “Loma Linda” is a geographic location and not registrable as a trademark. The decision was recently voted the worst reasoned decision of 2009 by a distinguished panel at the T.R.A.F.F.I.C convention is Los Vegas.

The correction to “Loma Linda 1” came in a majority decision in “Loma Linda 2”, Loma Linda University Adventist Health Sciences Center, Loma Linda University and Loma Linda University Medical Center v. Development Services, StateVentures, LLC, D2009-1059 (WIPO December 18, 2009) (<lomalinda.com>). The dissent, no other than the sole Panel in Loma Linda 1, stuck to his original position that although “geographic indicators do not qualify as a trademark right ... [nevertheless] the name ‘Loma Linda’ should constitute an exception to the general rule.”

The majority in Loma Linda 2 rejected this position. “Complainant cannot rely on its United States registrations because those registrations specifically disclaimed any exclusive rights to the term ‘Loma Linda’.” And, in any event “the Complainant’s claim of secondary meaning in LOMA LINDA fails because over the years LOMA LINDA has become utilized by others in numerous contexts. Indeed, LOMA LINDA has become the name of a city with some 22,000 inhabitants.” The Respondent’s legitimate interest in the domain name rests on proof that it “is in the business of developing geographically-oriented websites featuring information and services about municipalities and other geographic regions.”

February 11, 2010

Contract Complaints Outside Scope of UDRP

The UDRP is a niche regime for arbitrating claims of abusive registration of domain names. It is not a stand-in for a court of law. The Complainant’s theory in IM Global LLC v. Intermedia Film Equities, Sterling Davis, D2009-1690 (WIPO January 24, 2010) was that the Panel could order transfer of the disputed domain name, <imglobalfilm.com> “on the basis of Respondents’ previous [contractual] consent without a review and analysis of the facts supporting the claim.” In support of this theory the Complainant submitted “a copy of a heavily redacted contract” highlighting one clause that appeared to obligate the Respondent “for no additional consideration” to transfer ownership of the domain name. Much is wrong with this theory of the case regardless of the forum.

Even if the complainant framed its claim under a UDRP theory in IM Global it failed to provide evidence sufficient to establish any trademark credential. It neither alleged under which national jurisdiction it claimed common law trademark rights or submitted any “evidence of usage of the trademark or evidence of knowledge of the mark among the relevant public so as to establish secondary meaning ... [or] alternatively provide a legal basis for the establishment of common law trademark rights in some jurisdiction.” Failure of jurisdictional proof is as fatal to a UDRP claim as it is to a claim in a civil court of law. The Panel in IM Global held that the Complainant had no standing, but nevertheless decided to “briefly address the other elements for the sake of completeness.”

In this case, the Panel rejected the Complainant’s invitation to expand the jurisdiction of the Policy to rule on a contract claim. It wanted “the Panel [to] ignore the requirements of findings under the Policy because a contract entered into prior to the dispute has not been carried out.” However, “Complainant has provided one clause of a heavily redacted contract in the apparent anticipation that the Panel will act as a civil court and enforce that clause as against Respondent. The Panel is not a civil court and, [even] if it was a civil court, it would not enforce a single clause redacted from a contract as presented by Complainant here.” Underlying the invitation is a construction of the Policy that would find bad faith registration based on the “totality of circumstances,” a perfectly good basis but not applicable to claims outside the scope of the Policy. As the Panel (ironically noted) “the Complainant has not persuaded the Panel to accept a new category of bad faith acts comprised of disappointing a contract buyer of a domain name registered in good faith, and passively holding while at the same time actively using a disputed domain name.”

February 10, 2010

Linguistic Analysis Rejecting the Conjunctive Bad Faith Construction of the Policy

This Note summarizes the linguistic analysis in response to the Octogen line of cases and the most recent rejection of the construction for “retrospective bad faith," Validas, LLC v. SMVS Consultancy Private Limited, D2009-1413 (WIPO January 20, 2010). The first case decided under the UDRP regime concluded that the complainant was required to plead and prove bad faith in the conjunctive. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, D1099-0001 (WIPO January 14, 2000). The Panel noted that “the WIPO report, the DNSO recommendation, and the registrars'group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO.” Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, submitted for Board meeting of October 24, 1999, para. 4.5, a.

The Octogen Panel had (he said) come to believe that “panelists, [himself included], seem to have largely overlooked the language of the Policy regarding the respondent’s representations and warranties. The question is whether the respondent’s representations and warranties should as a matter of policy “negate[] the temporal distinction suggested by 4(a)(iii) of the Policy,” Octogen.  According to the Validas Panel “this line of reasoning involves interpreting the Policy, paragraph 4(b)(iv) as deeming the particular form of bad faith use” to be conclusive of bad faith registration rather than merely evidence for it, citing PASSION GROUP INC. V. USEARCH INC., AF-0250 (eResolution Undated 2000). The Panel in Passion Group held that “[t]his contrasting language indicates that use of the kind described in 4(b)(iv) is to be taken as evidence of bad faith registration as well as evidence of bad faith use. But this evidence is not necessarily conclusive. Furthermore, the panel is not required to assign substantial weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved.” 

If “retroactive bad faith” or “unified concept” were the law “the clearly conjunctive language of paragraph 4(a)(iii) could be too easily circumvented,” Hertz System, Inc. v. Kwan-ming Lee, D2009-1165 (WIPO).  It “would in effect turn ‘and’ into ‘or’, which would be inconsistent on its face with the plain meaning of those words,” Validas.  In the view of this Panel, the only permissible way for this to be achieved is for ICANN to amend the Policy, paragraph 4(a)(iii) by changing “and” into “or”. Until then this Panel believes that (unsatisfying as it may be in its practical effect in the small number of cases in which it has been an issue) the view should prevail.

The difference in construction turns on the language in paragraph 4(b), which introduces the non-exclusive examples that support bad faith registration and use. Paragraph 4(b) contains language that suggests that if any of the non-exclusive examples are demonstrated, “in particular but without limitation ... [they] shall be evidence of the registration and use of a domain name in bad faith.” However, it is a mistake to interpret this language as justifying a lower standard of proof for bad faith registration. “[P]aragraph 4(b) merely deems these circumstances 'evidence' of the registration and use in bad faith ... thereby making it clear that the expression in paragraph 4(b) 'registration and use of a domain name in bad faith' is mere shorthand for the expression in paragraph 4(a)(iii) 'the disputed domain name has been registered and is being used in bad faith',” Validas.

February 9, 2010

Retrospective Bad Faith, Revisited

To this observer, the most significant decisions in 2009 disputes were those in which Panels lined up on opposite sides in construing paragraphs 4(b) and 4(b)(iv) of the Policy. Those arguing for retrospective bad faith construe the paragraphs in a matrix that includes the representation and warranty provision of the Registration Agreement, paragraph 2 of the Policy (which reiterates the representations and warranties) and Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The principal mover for the new construction explained his position in two cases City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D2009-0643 (WIPO July 3, 2009) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen eSolutions, D2009-0786 (WIPO August 19, 2009) (the “Octogen line of cases”). According to this construction, “A party can register or acquire a domain name in good faith, yet use the domain name in the future in such a way that the representations and warranties that the registrant made as of the time of registration are violated. If a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be retroactive bad faith registration.” 

The Octogen line of cases has subsequently been endorsed by two or three other panelists, notably in Ville de Paris v. Salient Properties LLC, D2009-1278 (WIPO December 3, 2009) <wifiparis.com>). A three-member Panel in Denver Newspaper Agency v. Jobing.com LLC., FA0908001282148 (Nat. Arb. Forum October 16, 2009), resting its decision on Telstra and citing the Octogen line of cases, held that “registration and use” is used in the policy as a “unified concept.” The expression “unified concept” does not appear in Telstra. The Denver Panel could have exercised some judicial restraint because on the Denver record it was unnecessary to make such an exotic ruling. 

The rejecters of this new construction, call it either “retrospective bad faith” or the “unified concept” focus their analysis on the language of paragraphs 4(a)(iii), 4(b) and 4(b)(iv) to demonstrate what was thought to be settled law that the complainant must allege and prove, separately, bad faith registration and bad faith use. The new construction disregards the difference between conjunctive and disjunctive; and by doing so aligns UDRP more closely with the Anticybersquatting Consumer Protection Act. Rejecter panelists simply do not buy this; or in the words of the Panel in Torus Insurance Holdings Limited v. Torus Computer Resources, D2009-1455 (WIPO January 10, 2010) it “does not seem ... to be an attractive answer.”  It also is not an attractive answer to the Panel in Validas, LLC v. SMVS Consultancy Private Limited, D2009-1413 (WIPO January 20, 2010) who made it clear that if domain name law was to take a new direction it should rest on an amendment to the Policy. Validas will be discussed further in tomorrow’s Note. 

Unquestionably, there are certain types of uses that are either so obvious or egregious that bad faith registration is concomitant. I mentioned two instances in Friday’s Note where respondents were obviously targeting the complainant's trademark, passing off for advertising and phishing. Telstra is justly “seminal” – the word used by the Denver Panel – in explicating another circumstance, where the respondent incorporates a famous trademark in a domain name and holds it passively. But, not all domain names withheld from active use violate a complainant's trademark rights.  It depends on a number of factors. Denver did not present such a situation; the domain name was both active and competitive with the Complainant.  

Central to the issue sought to be resolved in the Octogen line of cases is whether subsequent bad faith use of a domain name registered in good faith satisfies the high proof requirement for violation of paragraphs 4(a)(iii) and 4(b), particularly 4(b)(iv) of the Policy. Before Octogen, the settled law – as expressed by the Panel in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000) – was that it did not: “registration of a domain name that at conception did not breach Rule 4(a)(iii) but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii).”

February 8, 2010

Complainants have to have rights in a trademark to maintain a UDRP proceeding and demonstrate the source of those rights, by registration, license or common law. They must also certify that there is merit to the claim pursuant to Rule 3(xiv) of the Rules of the Policy, which reads

Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.

At best the trademark right alleged in Zenni Optical, LLC. An Oregon LLC v. DNS Administrator / Cykon Technology Limited, D2009-1594 (WIPO January 29, 2010) was equivocal – there was some evidence of a license, but suspiciously dated – “the assertions in [the] Complaint were [not] warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” The Rule essentially expands on “the duty of candor by legal counsel incorporated in ABA Model Rules of Professional Conduct 3.3,” General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com, FA0602000651676 (Nat. Arb. Forum May 26, 2006. The Panel stated that

A party can be misleading either by making affirmatively false or incomplete statements, or by intentionally or negligently omitting material facts that would significantly change the interpretation of events by the tribunal or panel trying or arbitrating a case.  All these rules have as their goal a fair and complete decision on disputed matters before the tribunal.  This fair trial cannot be accomplished if a party does not follow the procedural rules in good faith, or presents information which is not complete nor accurate in its pleadings or briefs, or in the exhibits attached to pleadings.

There is a reciprocal rule for respondents at Rule 5(b)(xiii). Compare, Rule 11 of the Federal Rules of Civil Procedure.

On the issue of trademark rights in Zenni Optical, there “are obvious weaknesses.” As the Respondent pointed out and the Panel concurred “the license agreement is signed and dated in September 2002. At the same time, the agreement refers to the marks registered in 2008 and 2009. From this alone, it is self-evident that the agreement cannot, in fact, have been made in September 2002 but that, at the earliest, it must have been made after the registration of the second trademark in March 2009.” This was obviously an attempt to place the timing of the alleged right at or around the time of the registration of the domain name. It then supplemented its attempt by claiming that the mark was used in “‘experimental’ ways before the launch of the ‘www.zennioptical.com’ website and so ‘zenni’ was a searchable term.” The allegation lacks plausibility because nothing is defined and no evidence is submitted to support prior use in commerce.

The lesson, for surely there is one, is that there is no low lying fruit under the UDRP. Zenni Optical was represented by counsel who clearly was unaware of Rule 3(xiv) and evidently had no understanding of domain name jurisprudence. The Respondent requested and the Panel granted a reverse domain name hijacking ruling. “The Complainant should have known its case was fatally weak…. The significantly prior registration of the disputed domain name, in comparison to the Complainant’s trademark registrations, might have called for evidence of alternatively common law trademark rights. However, the Complainant provided no such argument or evidence.”

February 5, 2010

Passing Off, Pretending to be Complainant or Known by the Domain Name

Registrants have tried a number of ploys to avoid having the disputed domain name forfeited to the complainant, including passing themselves off as the complainant or pretending to be commonly known by the domain name. The Respondent in Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum January 13, 2003), for example, called itself “Neiman-Marcus.” The Panel in Alain-Martin Pierret d/b/a Bordeaux West v. Sierra Technology Group, LLC., FA 0505000472135 (Nat. Arb. Forum July 1, 2005) explained that “[m]ere ownership of a domain name is not sufficient to show that a respondent has been ‘commonly known by the domain name’; if it were, every domain name registrant automatically could claim protection under paragraph 4(c)(ii) of the Policy.”

The settled law is that “paragraph 4(c)(ii) requires evidence that Respondents had rights prior to and not merely following from the use of the Domain Names,” Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., D2004-0324 (WIPO June 18, 2004) (<etsworldwide.com>). Respondents contended that they adopted “ets” because it was the natural acronym of their trade name Educational Training Service. The Panel held that this contention “misses the point.” They may have been known prior to registration by their full name “Educational Training Service” but not by the acronym ETS which is a registered trademark of the Complainant.

This issue of passing off is revisited in National Westminster Bank PLC v. Nathaniel Westerly, FA0912001299106 (Nat. Arb. Forum February 2, 2010) (<natwest-inc.com>). A defaulting Mr. Westerly was caught “phishing” for personal information from the Complainant’s clients. Using the domain name for criminal purposes is tantamount to bad faith registration, Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) and Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004); both cases involved attempts to capture through fraud client information. In Capital One, the respondent was using the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients. That is, the inference from such use is that the registration was intended to target the Complainant by mimicking its trademark and composition of its landing page for the purpose of hoodwinking its clients.

February 4, 2010

Marshaling Evidence For and Against Exclusivity of Generic Terms

There is an interesting choreography between trademark holders and domain name registrants when the prize is a combination of two or three dictionary words both covet. The former must set out with specificity their historical presence in the market place – prove targeting – and the latter must emphasize the commonness of the words and their lack of knowledge of the trademark. Slickdeals, Inc. v. Chad Wright a/k/a WebQuest.com Inc., FA0910001289878 (Nat. Arb. Forum January 29, 2010) (<slickdeals.com>). The greater the geographic distance between the parties the less the respondent’s hurdle, and vice-versa. The dance is particularly intense when the trademark is registered in a national registry different from the location of the respondent and the complainant has no presence in the respondent’s market, Starmail Distributors Inc. v. Xedoc Holding SA aka domain admin, FA0911001296166 (January 27, 2010) or the trademark is unregistered and local, Trade Me Limited v. Vertical Axis Inc, D2009-0093 (WIPO April 7, 2009) (<trademe.com>).

Some arguments have nowhere to go, Alexis C. Le Hara v. Vertical Axis, Inc c/o Domain Administrator, FA0809001225832 (Nat. Arb. Forum November 26, 2008) (<sellersmarket.com>), citing Bag Boy LLC v. Chad Wright & WebQuest.com, Inc., FA 530334 (Nat. Arb. Forum September 15, 2005) (<bagboy.com>) stated:

Complainant seems to believe that only the owner of a registered trademark can use that mark within a domain name. This is of course not the case. Ownership of a trademark does not confer the exclusive right to all domain names containing the mark. And using a domain name for commercial gain is not, per se, a bad faith activity prohibited under the Policy.

The Respondent in Factory Mutual Insurance Company v. Valuable Web Names, D2008-1014 (WIPO August 19, 2008) is “my risk” (<myrisk.com>) argues that a Google search reveals a multiple of domain names incorporating the generic term and that as first registrant its ownership trumps the complainant’s. The Panel summarizes the Respondent’s argument as follows:

Complainant’s marks consist of two common dictionary words that make up a common everyday phrase. On the Internet this phrase appears on more than 200,000 third-party websites “wholly unrelated to Complainant,” and Complainant has no exclusive right to it. Because the words are “generic” or the phrase is used often in everyday English, “Respondent, ipso facto, has rights and a legitimate interest” in it.

Whether the registration of a generic term that a complainant claims is identical or confusingly similar to its trademark is legitimate depends on the factual circumstances. The Policy is not prescriptive as the Respondent in Factory Mutual supposes. Thus,

The simple gist of Respondent’s defense is that anyone who is first to register has a right to an available domain name that consists of or includes a common word or phrase, regardless of trademark rights of others. That is simply not true. (Emphasis added).

The “primary rule in relation to domain name registrations is ‘first come, first served,’ to which the Policy provides a narrow exception,” Bradley D Mittman MD dba FRONTRUNNERS® v. Brendhan Hight, MDNH Inc., D2008-1946 (WIPO March 16, 2009) (<frontrunners.com>), that the registration is not for an illicit purpose. “The Policy was not intended to permit a party who elects to register ... a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.”

This brings us back to Slickdeals. When the music stops, the Complainant has the chair, for three reasons: first, the trademark has and had national exposure in the United States where both parties reside from prior to the registration of the domain name; second, the domain name is identical to the trademark; and third, the Respondent is using a domain name to offer links to third-party websites that offer services similar to those offered by the Complainant. It is not out of the question that <slickdeals.com> could have been used for the bona fide offering of goods or services, but the circumstantial evidence supports targeting.

February 3, 2010

Consolidation and Language of the Proceedings

The Policy authorizes either party to petition to consolidate “multiple disputes ... before ... the first Administrative Panel appointed to hear a pending dispute between the parties ... provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN” [Paragraph 4(f)]. The Complainant in Farouk Systems, Inc. v. QYM, D2009-1658 (WIPO January 19, 2010) commenced 11 separate cases; petition for consolidation granted. The procedure is the twin to a single case against multiple respondents who are shown to be alter egos of or controlled by a single domain name holder [Paragraph 3(c)].

In either case the Panel must find an existing relationship among the respondents, Deckers Outdoor Corporation v. Karen McDougall, Frances Kirwan, Richard Abbots, Nicola Hammill, Sadika Ekemen, Stephen Gould, Christina Papadaki, Felicity Poole, Wang Changgui and [redacted], FA0908001281082 (Nat. Arb. Forum November 30, 2009) and in the absence of an existing relationship will – as the Panel did in Deckers Outdoor – dismiss the complaint against unrelated parties.

The Panel in Farouk Systems granted the Complainant’s petition on proof that “the Respondents share the same identical address, telephone number, fax number and e-mail address ... notwithstanding the use of different initials in respect of the owner’s registration details for the disputed domain names.” The Respondent did not answer and there was no counter evidence to contradict the Complainant’s proof. There was also a similarity of design and details on each of the websites to which the domain names resolved.

A complementary issue in Farouk Systems involved the language of the proceedings. All of the disputed domain names were registered with a Chinese registrar. Ordinarily, the language of the proceedings is dictated by the language of the Registration Agreement, but the Panel is authorized “to determine otherwise, having regard to the circumstances of the administrative proceeding” [Rule 11(a) of the Rules of the Policy]. The Complainant adduced the following persuasive proof that the Respondent would not be prejudiced by the proceedings being conducted in English since it

– used English to “promote and sell its unauthorised and/or counterfeit products on the Websites;
– “advertises and accepts US dollars as the currency for payment;
– states in its “Conditions of Use” that “any activities or transactions occurring on the Websites will be resolved by arbitration in the State of Victoria, Australia”;

These expressions of sale and legal recourse indicate that the intended market for the goods offered on the website was English speakers. This “suggest[s] the likely possibility that the Respondent is conversant and proficient in the English.” In view of this “it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceedings.” And, prejudice not being foreseeable the Panel adopted English to review the record and write his decision.

February 2, 2010

Pay-Per-Click Websites and Legitimacy

“Something more than the operation of a landing or PPC page is required to show lack of bona fide use,” Starmail Distributors Inc. v. Xedoc Holding SA aka domain admin, FA0911001296166 (January 27, 2010). The “something more” balances the strength of the trademark with the content of the website. The higher the classification of the trademark the more proof required from the respondent to satisfy its 4(c)(i) defense. If the respondent populates its website with links or advertising consistent with the goods or services offered by the complainant the domain name is inferentially capturing Internet users looking for the complainant; therefore it has no right or legitimate interest in the disputed domain name and likely, although not conclusively, violates paragraph 4(b)(iv) of the Policy. However, if the respondent prevails on the second branch, the Panel looks no further; the complaint is denied. This was recently seen in Sears Brands, LLC v. Domain Asset Holdings, FA0912001298052 (Nat. Arb. Forum January 22, 2010) (<northernterritories.com>) and is also the result in Starmail.

Not unusual in cases that stop at the second branch is discussion of an element generally reserved for the third branch analysis, namely the respondent’s knowledge (or lack thereof) of the complainant or its trademark. Alternatively, Panels skip the second branch and incorporate their findings under the third branch, as in Leyton & Associés (SAS), Thésée (SAS), Leyton Consulting UK and Ireland Limited, Leyton Maroc, Leyton Belgium, Leyton UK Limited v. Drela Mateusz, Elephant Orchestra, D2009-1589 (WIPO January 20, 2010) (“In the light of the Panel’s finding below ... it is not necessary for the Panel in this regard either to come to a decision.”)

It is said that knowledge is “an essential part of the bad faith analysis,” Russell Frey d/b/a edHelper v. International Services Company SA c/o Administration Dom, FA0910001288396 (Nat. Arb. Forum December 8, 2009). In Starmail, the Panel performs the “knowledge” analysis in the second branch, making it unnecessary to separately consider bad faith, while the Panel in Leyton Consulting considered the issues of bad faith registration and use separately under paragraph 4(b) of the Policy. Eliding the second and third branches in the 4(c) analysis tends to blur the proof requirements, and even though it may make no difference to the outcome, the requirements should be treated separately.

The unusual situation in Starmail is that <starmail.com> was not available to the Complainant when it commenced its business and had to represent itself on the Internet with another, less desirable domain name. The original registrant abandoned the domain name in 2006 and it was immediately picked up by the current Respondent, a holding company located in Luxembourg. The Complainant has a registered trademark for STARMAIL in the U.S. and Canada; it has no trademark registrations in Europe. The “question for the Panel to decide ... is whether Respondent’s prior use [that is use before notice of the dispute] was bona fide.” The answer depends upon the Respondent’s knowledge of an existing trademark when it acquired the domain name. In this case “the record shows that the term ‘starmail’ is widely used as part of domain names and of trade names owned by numerous third parties.” The Complainant offered no proof that it conducted business in Europe and there was evidence that the Respondent could have known or in registering the domain name was targeting the Complainant.

February 1, 2010

Common Word Trademarks Defensible By What Respondent is Offering

Respondents registering common words that spell the name of a business or charitable entity state a good defense only if they use the domain names in the generic sense of the words and are not competitors. We saw this in Fashion Career Center, LLC v. Resume Pro Writers Guild c/o Michael Hunt and Mercado, FA0912001296574 (Nat. Arb. Forum January 20, 2010), RESUME PRO (registered trademark) and <resumeprowriters>, competitors and abusive registration; and, Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010), AUSTIN AREA BIRTHING CENTER (unregistered trademark) and <austinbirthcenter.com>, competitors but not abusive registration. While both domain names are confusingly similar to the Complainants’ trademarks the first incorporates the precise wording of the trademark, while the second is descriptive of the services offered by the Respondent.

In The Law Society v. S.H. INC, D2009-1520 (WIPO January 22, 2010) the Respondent registered <lawsociety.com>; the trademark registration is THE LAW SOCIETY. Taking advantage of the recognition that a complainant has created for its mark is not a bona fide offering of goods or services, but there has to be proof of targeting not simply an allegation, Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum May 25, 2004) (<target.org>, the links “relate to target practice, hunting, archery, and other sports equipment.”). Pay-per-click domain names are not prohibited under the Policy and can support a legitimate interest. But while good faith registration is not inconceivable no legitimate interest is established for a pay-per-click website offering links to information that an Internet user may expect to find on the complainant’s website. Such use violates paragraph 4(b)(iv) of the Policy and by inference was registered in bad faith.

The Respondent’s claim that it is only using generic terms – how can anyone in his right mind claim a monopoly on “law” and “society”? – is measured against the “critical question of whether the Respondent registered (and has been using) the domain name in order to profit from the claimed generic value of the expression, or whether its intention was to take advantage of the Complainant’s rights in the expression.” The Panel noted that the Respondent is “clearly not a law society.... Why else would an entity which is not a law society, and has no apparent connection with any law society, choose the disputed domain name” if it were not to attract Internet users looking for the Complainant’s website?

The decision in The Law Society also touches on an issue that respondents should pay attention to, namely that the Respondent “has elected not to provide information which was within its exclusive control, relating to the date and circumstances of its acquisition of the disputed domain name, and the circumstances in which the United Kingdom links came to be placed on the Respondent’s website.” In the absence of explanation “the Panel can only sensibly infer that the relevant intention must have been to create confusion with the Complainant’s mark, with a view to commercial gain (in the form of increased ‘pay-per-click’ or other advertising revenue).” While inferences in favor of a respondent can be drawn where there is evidence to support it, inferences against it will be drawn where it fails to make the necessary offering.

March 2010 NOTES , DATES ARE IN REVERSE ORDER

March 31, 2010

Listed and Additional Circumstances of Bad Faith

Paragraph 4(b) of the Policy comes into play when the respondent fails to marshal a defense for rights or legitimate interests in the disputed domain name. It reads: “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith...” (Emphasis added). The four particular circumstances listed do not presume to cover the universe of bad faith. They are “intended to be illustrative, rather than exclusive,” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Unidentified are other abusive practices covered under the catchall phrase “in particular but without limitation.” “It does not matter that the facts ... may not fall within any of the circumstances described at paragraph 4(b) of the Policy,” Fox News Network, LLC v. Sam Solomon, D2005-0022 (WIPO March 25, 2005). If not any one of those examples the Panel can rule on the “totality of circumstances,” Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000). The presence of circumstances, listed or otherwise, is “evidence” (not necessarily conclusive) of bad faith. This construction is compelled by the language in paragraph 4(a)(ii) of the Policy which requires proof in the conjunctive of registration and use. There is a hierarchy of acts, more or less egregious, the less being unpersuasive of bad faith. An example of this was noted in yesterday’s case, Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010) which had a link on its webpage to competitors of complainant.

Defined most broadly bad faith is registering a domain name identical or confusingly similar to a complainant’s trademark and using (or holding) it to gain an economic advantage. A respondent can be shown to lack rights or legitimate interests in the disputed domain name but still not to have registered the domain name in bad faith. Of the four listed examples of bad faith the first three are written in the past tense and focus on the respondent’s intention in registering the domain name: “you have registered the domain name” primarily for purposes inimical to the complainant’s interests and its rights. From the evidence is to be inferred the intention.

In contrast, the fourth example of bad faith [paragraph 4(b)(iv)], is written in the present tense, but implies a continuum of (if not current) predatory conduct in using the domain name. Other abusive practices generally concern the use of the domain name, such as phishing for example, or if registration, illicit transfer by hacking the registrar’s database or pretending to be the trademark holder. In one sense, the conjunctive requirement under paragraph 4(a)(iii) can be satisfied without separate proof of registration and use. To have registered the domain name for ransom (for example) satisfies the conjunctive requirement regardless whether there is an active website. Whether active or not the respondent’s conduct violates paragraph 4(a)(iii) of the Policy. Some panelists have taken the phrase “evidence of the registration and use” in combination with paragraph 4(b)(iv) to mean that the very fact of bad faith use – the facts not otherwise in contradiction – presupposes or infers bad faith registration. Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009).

In most instances, the Panel analyzes the facts of use first to determine whether the record is sufficient from which to infer registration in bad faith. There is no per se rule. In the line of cases stemming from Octogen bad faith use warrants a finding of abusive registration, but this construction has not found any significant support and is being criticized in a number of recent decisions, BioClin B.V v. MG USA, D2010-0046 (WIPO March 22, 2010) and Camon S.p.A. v. Intelli-Pet, LLC, D2009-1716 (WIPO March 12, 2010). The BioClin decision will be discussed in a later Note because in denying the complaint the Panel incidentally highlights the difference between the evidentiary demands under the UDRP and those under the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125 (d) for injunctive and legal remedies for trademark infringement.

March 30, 2010

Continuing Legitimate Interest in Domain Name After Termination of Business Relationship

A respondent’s right to continue using a trademark in its domain name after termination of its business relationship with the trademark holder is a contract issue, but under the right factual circumstances refusing to relinquish the domain name is actionable under UDRP. Ordinarily, permissive registration is conclusive against the complainant in a UDRP dispute because it disables the complainant from proving bad faith registration. Invariably in these situations the respondent’s post-termination business competes with the complainant’s, but whether a dispute of this kind is properly within the scope of the Policy depends on the existence or absence of language in the contract.

Where the contract is silent about post-termination rights the dispute is outside the scope of the Policy. In Re-Bath LLC v. Northern Nevada Bath, FA1002001305824 (Nat. Arb. Forum March 23, 2010) the parties failed to address the issue of post-termination rights in their contract. Hence, the question of rights becomes a trademark rather than an abusive registration issue. This is made clear by the Panel noting in obiter dicta the rule of law that applies under the UDRP, namely that since the disputed domain name was not registered in bad faith the complainant cannot satisfy its burden of proof. Obiter dicta, too, is offered on the issue of use: “[g]iven that the Respondent … is now using the contested domain name to point to a web site that provides factual information on the situation (namely that the Respondent is no longer a distributor for the Complainant), it would not appear that the present use of the contested domain name could be considered to be in bad faith in the sense of the Policy.”

In contrast, where the contract addresses post-termination rights in the domain name, the dispute is within the scope of the Policy. Former franchisees have no legitimate interest in a disputed domain name even if they registered it with permission. ERA TM LLC and ERA Franchise Systems LLC v. Era Sierra Properties, FA0812001239255 (Nat. Arb. Forum February18, 2009) and RE/MAX International Inc. v. NCR Northcoast Realty, FA0906001266756 (Nat. Arb. Forum August 4, 2009). Forfeiting a domain name permissibly registered may appear in contradiction to the Policy, but the theory is sound. Although the respondent appeared to have registered the domain name in good faith – it represented and warranted as such in its registration agreement – its refusal to relinquish the domain name on termination demonstrates that it never really intended to do so, therefore it must have registered the domain name in bad faith. Since permission was conditional, default in relinquishing the domain name warrants such an inference. The look-back can be seen as a variant of that line of cases that holds that respondent can be charged with retroactive bad faith.

March 29, 2010

Calibrating Trademark Holder’s Reputation Outside its Jurisdiction

That any aggrieved trademark holder can institute a claim against any respondent however distant their countries of residence means only that the former has jurisdiction to maintain the proceeding. To advance its cause the complainant has to demonstrate that at the time the domain name was registered its reputation extended to the respondent’s country of residence with at least circumstantial proof that the respondent was aware of its trademark. However well-known a complainant’s trademark may presently be is not evidence of its strength in the past. Even if the disputed domain name is identical to the complainant’s trademark there is no presumption in favor of the complainant, although more explanation is expected from the respondent as the trademark rises on the classification scale from generic and descriptive to the arbitrary and fanciful.

Two cases illustrate this point. The trademark in Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010) is AEROMAR, not a word commonly found in a dictionary of the English language but nevertheless chosen by the U.S. Respondent for its domain name, <aeromar.com> and appropriate if used in a sense that captures the meaning of “aero.” The Complainant “offers passenger, charters, mail and parcel flight, primarily within Mexico.” The Respondent’s website is a portal for things relating to aircraft, but the Respondent is not a carrier. The second case, involves a word not defined in the Merriam-Webster Dictionary on my desk but with an understandable meaning in English, “intermesh”, Indiamart Intermesh Limited v. Portmedia Inc. / Intermesh.com, D2009-1804 (WIPO March 15, 2010). “Intermesh” is defined in Merriam-Webster On Line as “to mesh together; interlock.” The website is populated with dating links.

In Aeromar, the parties are respectively located in Mexico and California, not a great distance but the Complainant offered no evidence that at the time the domain name was registered its reputation had traveled to the United States. Its argument was also undercut by two facts. First, that its trademark registration in the United States post-dated the registration of the domain name; second, that it waited 14 years to commence a proceeding to capture the domain name. The Respondent did not argue laches, but the time lapse is nevertheless a significant factor in weighing evidence for and against legitimacy. “The fact that the Respondent’s domain name and associated website have existed for more than 14 years, apparently without complaint, also weighs in favor of the legitimacy of the Respondent’s conduct.”

In Portmedia, also, the domain name had been registered for a substantial period of time, since 2001, and although the Complainant showed that it had a significant international presence today, it offered no proof that it had such a presence when the domain name was registered. A complainant’s naked assertion that its trademark is famous or well-known has weight only to the extent that it coincides with the registration of the domain name. “The rapid growth of Complainant’s advertising supports the inference that nine years ago ... the level of international advertising and scope of secondary association globally was fairly limited.”

Respondents violating third party rights generally give themselves away by the content of their websites. However, suspicion that many years earlier respondents chose names corresponding to complainants’ trademarks is not evidence of bad faith registration; merely a non actionable coincidence.

March 26, 2010

Exercising Self Help to Effect Settlement of a Claim

Nothing could be easier for a registrar owed money (or, in the case herein discussed, the reseller of a registrar) to simply change the registration of the domain name into its own name and hold it for ransom. Grace From Fire, LLC v. ConnectDomain.com Worldwidedomains, Inc, D2010-0143 (WIPO March 9, 2010) (<jackjackass.com>). But, is it legal? Removing property is either conversion civilly or larceny criminally. Holding a domain name for ransom is condemned as an act of bad faith under paragraph 4(b)(i) of the Policy. These acts fall into two classes of cases: respondents known to the complainant – former employees, partners, consultants and agents – and those unknown who have hijacked the domain name by fraudulently arranging for a transfer of registration. Grace From Fire is in the first class. Taeho Kim v. Skelton Logic, FA1002001305934 (Nat. Arb. Forum March 22, 2010) is in the second class.

Of course, in order to maintain a proceeding the complainant must be a trademark holder. In Taeho Kim, alas, the Complainant alleged that his “GoDaddy.com account was hacked ... and the domain names [<recent.net>, <they.net> and <than.net> ] were sold to a third party and re-sold to Respondent. Thus, Complainant alleges that Respondent purchased stolen domain names.” In Grace From Fire, the Respondent took “self help” in improving its bargaining position on a non-payment dispute by taking control of <jackjackass.com>. The Panel in Takaso Rubber Products Sdn Bhd v. Selim Tasci and Tasci Dis Tic. Ltd. STI, D2006-1263 (WIPO December 16, 2006) noted that the “demand by Respondent for ... a business concession in exchange for transfer of the disputed domain name constitutes an offer to transfer the disputed domain name for valuable consideration.”

Although there may have been an issue in early cases whether disputes with former employees, partners, agents, etc. were within the scope of the Policy, the consensus is that they are, essentially equating tortious and criminal conduct with cybersquatting. Leverage and extortion cases are generally treated as violations under paragraph 4(b)(i) of the Policy. Examples cited in Grace From Fire include Birinyi Associates, Inc. v. Convert, D2001-0395 (WIPO June 20, 2001) and Robilant & Associati Srl v. POWERLAB snc (ROBILANT6-DOM), D2006-0991 (WIPO October 5, 2006).

A claim for alleged past due amounts on service contracts does not justify taking possession of another's property. “Respondent’s rather frank admission that he intends to use the disputed domain name to leverage compensation for copyright materials allegedly taken from his website suggests that the motive was to use the domain name as a bargaining means for another dispute. This is improper and in the Panel’s view is a clear illustration of bad faith,” Coppertown Drive-Thru Systems, LLC v. R. Snowden, FA0605000715089 (Nat. Arb. Forum July 17, 2006); also, Nexxt Development Corp. v. Richard Spence, D2008-0530 (WIPO May 29, 2008): “passively holding the domain names for use in possible settlement negotiations of the dispute between the parties constitutes use of the domain names in bad faith.” Ultimately, “non-payment of fees by the Complainant to the Respondent does not establish rights or legitimate interests in the disputed domain name in the Respondent.” Ecoyoga Ltd. siteleader.com, Siteleader Hosting, D2009-1327 (December 11, 2009).

March 25, 2010

Taking Unfair Advantage of the Complainant’s Trademark

Ordinarily, a trademark must have been in existence before the registration of the domain name for a finding of bad faith registration, but this is not invariable and depends on factors other than timing. The issue is addressed in paragraph 3.1 of the WIPO Overview, which states:

Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

This is then qualified to account for those circumstances in which the respondent has taken unfair advantage of the complainant by anticipating accrual of its right:

However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.

The WIPO Final Report at paragraph 23 identifies two types of “predatory and parasitical practices”. The consensus refers to the second type, registering domain names “simply to take unfair advantage of the reputation attached to those marks.” The fairness issue has been discussed in a number of recent decisions. It makes no difference that the complainant has no registered trademark or has an application pending at the commencement of the proceedings, as long as its right is incipient: “any rights that may arise from the complainant’s enterprises.”

In Body Accounting, Inc. v. Affinity Domains, Energy First, D2009-1419 (WIPO December 11, 2009) there was evidence of “connections between the two [parties] that pre-date the registration of the Domain Name.” “The fact that the complainant actually acquires local law trade mark rights in the future is important for the purposes of paragraph 4(a)(i) of the Policy. ... However, whether or not it is apparent at the time of registration that they will necessarily come into existence is not important so far as the paragraph 4(a)(iii) assessment is concerned.” It is sufficient that the respondent “had knowledge that trademark rights would soon arise through use or registration of a mark by the Complainant,” General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, D2003-0845 (WIPO January 15, 2004).

Although not involved in Body Accounting because the complainant resides in a common law jurisdiction, this construction of the Policy allows a complainant in a non-common law jurisdiction to maintain a proceeding even though it does not have a registered trademark, citing St Andrews Links Ltd v Refresh Design, D2009-0601 (WIPO June 22, 2009): “So far as possible, the concept of bad faith should be interpreted in such a way that it has its own separate meaning under the Policy and is not dependent on the laws of the country in which the complainant or respondent operates.” This means in practice that a complainant can establish jurisdiction for an unregistered right regardless of its national residence.

March 24, 2010

Uncovering and Confirming Knowledge

The basic ingredients for bad faith are knowledge and intention.  Denying is more common than admitting them, and although having knowledge of a complainant and its trademark is not necessarily prejudicial to a respondent’s right or legitimate interest in the disputed domain name, proof of intention must be met by counter proof.  While the foundation documents expressly excuse respondents from having to perform trademark searches – the fact of registration does not give rise to constructive notice – respondents are not excused from willful blindness to a holder’s trademark rights.   The concept of “willful blindness” is expansive.   Respondents cannot plausibly deny knowledge easily obtainable through Internet searches.  Hayward Industries, Inc. v. WebQuest.com, Inc., D2009-1493 (WIPO January 27, 2010):  “[n]otably, the Panel has independently observed that the most prominent organic search result for “hayward” leads to a website for Complainant (at www.haywardnet.com), so, as in Mobile Communication Service [D2005-1304 (WIPO February 26, 2004)] “even a cursory search [by Respondent] on search engines like Yahoo! and Google would have shown that [this word] is a trademark.”  

Paragraph 2 of the Policy reads that by “applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that ... (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” (Emphasis added).  “Knowledge is important since without knowledge (and in the absence of willful or Nelsonian blindness of the type described above) it will be difficult to show that a respondent has the necessary intent for bad faith,” Aubert International SAS and Aubert France SA v. Tucows.com Co., D2008-1986 (WIPO March 17, 2009). 

“Actual” knowledge is construed to mean “awareness” of the complainant and its trademark.   So, for example, denial of knowledge where the complainant markets its goods or services in the same geographic community or to the same group of consumers becomes increasingly implausible if the content of the respondent’s website contradicts its assertion of ignorance.   In Dex Media, Inc. v. c/o DexLocal.com and Domain Manager MediaVision, D2009-1766 (WIPO March 4, 2010) the Respondent argued that because the Complainant did not file a trademark application for DEXLOCAL it was “fair to presume that [it] did not want to register the name <dexlocal.com> or use the term ‘dexlocal’” as a trademark.  The argument was revealing “because it is consistent with awareness on the part of the Respondent of the Complainant’s DEX mark when the disputed domain name was registered.” 

The content of the Respondent’s website in Dex Media supported this conclusion.  When “coupled with the use of the disputed domain name for a website offering local listings of a directory nature, leads the Panel to conclude that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s DEX mark as to the endorsement of the Respondent’s website or of the services on its website.”

March 23, 2010

Domain Names Composed of Geographic Indicators

Regions, Cities, Municipalities and Towns may wish to control the use of their names on the Internet but there is an insuperable barrier, namely that naked geographical indicators are not covered under the UDRP and protection under trademark law for geographic terms is uncertain. Nevertheless, there have been a number of recent challenges by public authorities to domains with geographic names, most prominently the “Paris” cases, Ville de Paris v. Salient Properties LLC, D2009-1279 (WIPO December 3, 2009) <wifiparis.com>) and Ville de Paris v. Paris.TV LLC, DTV2009-0010 (WIPO February 17, 2010) (<paris.tv>), both decided in favor of the Respondents. The Panel in the <wifiparis.com> case rejected the Complainant’s contention that its right rested on its logo plus words – “PARVI PARIS VILLE NUMERIQUE, with a distinctive ellipse device, and the word PARVI appearing in larger font than the other words” – because the trademark did not “confer any rights in the word ‘Paris’ alone.” Offense to public authorities that a business enterprise enjoys commercial gain from registering what it views as its geographic property is not a proper basis for denying the respondent a legitimate interest in the domain name.

The most recent public authority to suffer disappointment is Commune de Tignes v. Laurence et Sandrine Raymond, D2010-0076 (WIPO February 23, 2010). However, unlike the Paris disputes the Panel in Commune de Tignes denied the complaint because the Respondent demonstrated that its use of the domain name brought it within the “legitimate noncommercial or fair use” provision of the Policy, paragraph 4(c)(iii). Commune de Tignes (like Ville de Paris) also owns a figurative trademark, in its case incorporating the term “Tignes.” However, instead of addressing geographical exclusion, the Panel accepted the Respondent’s proof that it had a right or legitimate interest in the disputed domain name. This is unfortunate because it misleadingly implies that but for the noncommercial content of the website the Complainant would have succeeded, although this would have violated another trademark principle that generic terms incorporated in figurative designs are not in isolation from the design registrable.

The mere fact that the complainant exists at a geographical location is not proof of a trademark right. Thus, the Complainant in Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel, D2001-0348 (WIPO June 18, 2001) could not protect ROUEN in <rouen.com> and <rouen.net> because, although it had a trademark that included the word “Rouen” it had no mark in “Rouen” standing alone. “Unless the evidence demonstrates that the name of a geographical location is in fact performing the function of a trademark, such a name should not be considered a trademark for the purposes of the Uniform Policy,” Brisbane City Council v. Warren Bolton Consulting Pty Ltd., D2001-0047 (WIPO May 7, 2001). The Panel held that the

important issue in a case such as this one, concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark -- that is to say whether the unregistered mark is distinguishing the goods or services of the Complainant in trade and the goods or services of any other person in trade.

St. Moritz tried twice to wrest the domain name from the Respondent and the second time found itself on the wrong end of a finding of reverse domain name hijacking: Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd., D2004-0158 (WIPO June 13, 2004) and Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd., D2000-0617 (WIPO August 17, 2000).

The obverse of geographic entities demanding control is commercial enterprises that have adopted geographic symbols to distinguish themselves in the marketplace. Under Section 1052(e) of the Lanham Act and similar statutory provisions in other jurisdictions, geographic indicators are excluded from registration unless allowable under 1052(f). In this respect, business enterprises have the same problem as public administrations, namely that the disputed domain name is being used in a non-trademark sense, Superga Trademark, S.A. v. Gilberto, Publinord S.r.l., D2008-1890 (WIPO February 24, 2009) (<superga.com>, “a hill overlooking the city of Turin (Torino), or the City or Municipality cannot register, cannot claim a monopoly over the naked geographic term. Even if a geographic trademark attains registration on the Principal Register it is treated as a generic term and “does not … become absolutely protectable,” Spherion Corp. v. Solomon, FA 112454 (Nat. Arb. Forum July 22, 2002) (<saratoga.biz>).

March 22, 2010

Extent of Panel’s Independent Investigation

Rules 12 and 10(a) of the Rules of the Policy are closely connected. Rule 12 grants panelists authority to request information from parties, while Rule 10(a) of the Rules of the Policy has been construed to authorize panelists to undertake some minimal research – “The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules” – but this does not (or should not) extend to filling in facts not pleaded by or making a case for a party. An early decision explained that Panels 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.” This “consensus” is reflecting in Paragraph 4.5 WIPO Overview of WIPO Panel Views on Selected UDRP Questions which reads:

A panel may visit the internet site linked to the disputed domain name in 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 parties’ assertions and quite another to embark upon an independent investigation as to what a complainant’s case may be,” Silvie Tomcalová a.k.a. Sylvia Saint v. Juan Campos, D2006-0379 (WIPO May 5, 2006). Beyond the limited research permitted, panelists 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. This issue of the Panel's authority to independently investigate facts is noted in a concurrent opinion in a case discussed last week, San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., D2009-1545 (WIPO March 3, 2010) and deserves not to be overlooked.

“Limited factual information” should be of the kind bearing a relationship with judicial notice, that is facts of common knowledge “not subject to reasonable dispute because they are capable of accurate and ready determination or resort to sources whose accuracy cannot reasonably be questioned,” Uniform Rules of Evidence, Rule 201. The majority in San Diego held that the disputed domain name was confusingly similar to the complainant’s trademark, while the concurring opinion disagreed:

As the majority correctly notes, neither of the contested domain names incorporates Complainant’s mark in its entirety. Indeed, each of the contested domain names is substantially shorter than Complainant’s mark, and composed entirely of elements that are either geographically descriptive (“sandiego” and “sd”) or a stub (“hydro”) of the very part of its mark that Complainant expressly disclaimed in its registration application. The complete elimination of the term “organics” from both contested domain names, coupled with the substitution of the very common prefix “hydro” for the word “hydroponics” are sufficient in my view to render both domain names not confusingly similar to the mark in which Complainant has established rights.

However, the majority in San Diego based its decision on a visit to the Complainant’s website. The question is whether it is appropriate for the Panel to conduct an independent investigation in cases in which there is no default and the parties have submitted a record. In that case where “a party has expressly elected to argue A before a panel, that panel should not presume it also intended to argue B. The majority simply cannot know whether Complainant failed to direct the Panel’s attention to its own website out of simple forgetfulness, or instead because it was aware of some grounds for doubting that the site demonstrates the rights it seeks to establish.”

The decision in San Diego in any event favored the Respondent, but the independent investigation assisted the Complainant by filling in information not in the record that supported the conclusion that the domain name was infringing. An alternative view is that the parties' websites historically and presently are deemed part of the record, either to corroborate or contradict their assertions. This better explains and justifies research in the Internet Archive [see Note for March 17th].

March 19, 2010

Legitimate Interest Despite Interim Parking

Parking is not prima facie illegitimate, but it may require plausible explanation where the respondent has knowledge of the complainant’s trademark and has incorporated it into the domain name. Authorized dealers, resellers, distributors, consultants and, in Alstom v. Industrial Tests, Inc., D2009-1702 (WIPO February 6, 2010), companies in the business of testing equipment manufactured by the Complainant may legitimately incorporate the trademark in advertising its services – <alstomservice.com>. The Respondent contended that it “only ever intended to use the domain name descriptively; that is, to describe its services in relation to the Complainant’s products.” It parked the domain name as “a consequence of the dispute.”

Alstom is unusual in that the Respondent is offering services related to the Complainant’s goods, “but not the good themselves.” Ordinarily, a respondent establishes legitimacy by demonstrating that its offering is limited to the complainant’s goods. “It may not assist the Respondent’s case that it may also be offering services related to other goods.” This principle is traceable to Oki Data Americas, D2001-0903 (WIPO November 6, 2001); see, also, Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969) concerning defendant’s right to incorporate plaintiff’s trademark into the phrase “Independent Volkswagen Porsche Service.” The defendant’s “prominent use of the word ‘Independent’ whenever the terms ‘Volkswagen’ or ‘VW’ appeared in his advertising was sufficient to distinguish his business to the eye of the customer.” The incorporation of the trademark simply describes the services offered. It does not pretend to be associated with the trademark holder.

Nevertheless, in Alstom the domain name resolved to a website offering testing services for goods manufactured by other brands. This would appear to violate one of the Oki Data tests, namely that the “respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.” While “application of these considerations to this case is finely balanced” it is not fatal to the respondent because “the Panel considers it likely that Internet users who find themselves directed to the Respondent’s site may well be uninterested in the servicing of any brand of equipment except that which they already own.... Indeed, the history and nature of the Respondent’s business is made clear on the site.”

The Panel did, however, implant a note of caution to the Respondent in Alstom; a note incidentally that holds true in many cases in which a legitimate interest of good faith registration of the domain name is found based on the record as it presently exists. “On balance, the Panel accepts the claim of the Respondent that the parking site has been developed merely for the purpose of holding the disputed domain name while this dispute is resolved” but “obviously, if the use of the disputed domain name was to become subsequently abusive, that may well be a highly relevant consideration in any future proceeding that may be brought by the Complainant.”

March 18, 2010

Not Appropriate for UDRP Determination

UDRP’s remedial niche is limited to disputes of abusive registration of domain names rather than trademark infringement. The WIPO Final Report states that the “scope of the procedure is available only in respect of deliberate, bad faith, abusive, domain name registrations or ‘cybersquatting’and is not applicable to disputes between parties with competing rights acting in good faith,” (Paragraph 135(i)). The string of adjectives suggests that WIPO did not intend to pin down ‘abusive registration’ to a formula of conduct that would prescribe the result.  While there may well be consumer confusion concerning the source of goods offered by a respondent on its website, that in itself is not probative of “deliberate, bad faith, abusive” conduct.  A trademark holder may have a claim for infringement but not be entitled to a remedy under the UDRP. 

In Island Sky Corp. v. sky water, D2010-0039 (WIPO February 25, 2010) the Panel found that the “water-related systems offered by the parties … are not strictly, as Complainant asserts, in direct competition with one another.  As the Panel understands it, Complainant produces water from the atmosphere and Respondent purifies existing water.”  Both parties use the terms “skywater”, the Complainant as a registered trademark; the Respondent in its domain name, <skywatersystems.com>.  The difficulty for the Respondent was that its logo resembled the Complainant’s.  It explained that
“At the time of its creation, Sky Water asked the branding company for a logo that was consistent with the products and services being Go-Green, and environmentally friendly. In retrospect, this was a mistake. Water companies everywhere at the time became obsessed with Go-Green and wanted Go-Green literature and logos etc. ”

Although resemblance between art on the respondent's website with the complainant's could be an indicator of copying, and copying probative of a respondent’s knowledge of the complainant, “[w]hen nature and environmentalism are themes embraced by a company marketing a water-related product, the images of a green leaf and a blue droplet leap fairly readily to mind. Respondent’s explanation that it outsourced the design of its logo and, by coincidence, the logo somewhat resembles that used by Complainant is not so far-fetched as to be discredited on its face.” 

Also in Respondent’s favor in Island Sky is that the parties are respectively in Florida and New York.  Denial of knowledge is more plausible the greater the geographic distance of one from the other. Absent evidence of “deliberate, bad faith, abusive” conduct the Complainant’s allegations are insufficient to tip the scale.  Nevertheless, this decision only determines the issue reserved under the Policy.  It does not foreclose a claim under the ACPA for trademark infringement.  In Island Sky, however, this would be difficult because “[o]n the spectrum of inherent distinctiveness, the trademark SKYWATER to identify a system that produces water from the atmosphere in this Panel’s view can hardly be regarded as fanciful or even arbitrary. It is, for this Panel rather, suggestive at best and even arguably descriptive.”  While this does not “negate Complainant’s right to enforce its registered trademark rights … it can undermine an allegation in a streamlined proceeding under the Policy that Respondent was aware of the mark when it registered the Domain Name.”

March 17, 2010

Researching the Past; Blocking Access and Bad Faith

The Panel in Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010) (discussed a few days ago on another subject) reminded us that “the ‘robots.txt doctrine’ that bad faith may be found if access to the archive of the historical contents of a website is blocked by a respondent after initiation of a domain name dispute” is not applicable where the respondent’s blocking of access preceded the dispute. “Hence, whatever view one might take as to whether such a doctrine is appropriate, having regard to the justifications for archive blocking advanced by the Respondent (and the Panel finds it unnecessary to express a view), that doctrine cannot apply in this case.”

“Robots.txt” is a program that crawls websites for the Internet Archive, more familiarly known as the Wayback Machine (“IA”). IA is accessible on the Internet at http://www.archive.org. An overview of IA’s mission is described by the Panel in The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], D2007-1438 (WIPO December 18, 2007) (unanimous 3-member panel). It was founded in 1996. “Like a paper library ... [it] provide[s] free access to researchers, historians, scholars, and the general public, of historical web pages.” It started to build a better-rounded collection in late 1999 by using Alexa to crawl the web. With its Wayback Machine – a device that displays the website as it looked on a given date – anyone can literally have a window on the past use of the domain name. The Panel in iFrancise held that

It is the opinion of the Panel that absent convincing justification for the employment of robots.txt in a given case, the use of the device may be considered as an attempt by the domain name owner and operator to block access by the panel to relevant evidence. In such a case, it is the Panel’s view that a panel is entitled to assume that reasonable factual allegations that a complainant has made as to the historical use of the web site to which the domain name at issue resolves are true and that the use of robots.txt in the particular case may be considered as an indicia of bad faith.

“Alexa respects robots.txt instructions [not to crawl a particular site], and even does so retroactively, thereby preventing the researcher from discovering targeted pages.” The antidote to such instructions is for the complainant to argue and the Panel to draw a negative inference in favor of the complainant’s “reasonable factual allegations ... as to the historical use of the web site to which the domain name at issue resolves ... and that the use of robots.txt in the particular case may be considered as an indicia of bad faith,” The iFranchise Group. There is another service that captures ‘historical snapshots’, but in contrast to IA DomainTools.com stores images of the home pages without following links or storing text or site code. Note: IA is a free, DomainTools.com a subscription service.

However, domain name registrants may legitimately block collection of website information. The question is whether blocking access to page content is intended to mask infringement of the complainant’s right or undertaken for a legitimate business purpose. In SCOLA v. Brian Wick d/b/a CheapYellowPages.com, FA0711001115109 (Nat. Arb. Forum February 1, 2008) the Respondent presented evidence from the Wayback Machine that his predecessor had used the disputed domain name in good faith, but blocked access from its acquisition. That suggested to the Panel concealment of evidence.

In contrast, the Respondent in Rba Edipresse identified five reasons for legitimately blocking access as a business practice for operators of pay-per-click websites. The Panel sets them forth in full “for the benefit of other panels in future cases,” intended I think to counter the view that blocking is ipso facto grounds for finding bad faith. According to the Respondent, allowing access 1) imposes a cost in bandwidth by taxing the respondent’s server capacity for which it has to pay “without any return of revenue to the Respondent”; 2) and 3) promotes click fraud and related scams associated with archiving -- the Respondent explains that “[b]ecause of concerns of click fraud and related scams, the confidential contracts between PPC feed providers and publishers forbid archiving, reverse engineering, and copyright violation inherent in allowing third party content storage of current ads”; 4) creates confusion with respect to parked pages; and 5) provides inaccurate information about the geographic distribution of use because the archived pages show only what was visible in one location.

The Respondent points out that DomainTools.com avoids these problems because it stores images of the home pages without following links or storing text or site code. Bad faith rests on timing, whether before or after notice of the dispute. If after and there being no explanation as in Scola an inference of bad faith is more likely. In Rba Edipress, the Respondent's blocking of access was a considered business policy that preceded notice.

March 16, 2010

Secondary Meaning Cannot Be Assumed

Whether geographically near, as in San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., D2009-1545 (March 3, 2010) (registered trademark), or far, as in Digital Alchemy, LLC. V. Digital Alchemy c/o Ramon Felciano, FA0911001295928 (Nat. Arb. Forum January 12, 2010)(unregistered trademark), the complainant cannot assume that the consuming public recognizes its descriptive trademark as the source of particular goods or services different from another’s use of the same terms. ICANN panelists no less than judges have insisted that the putative trademark holder demonstrate secondary meaning if it hopes either to establish jurisdiction or prove knowledge as a basis for bad faith registration.

Reference to Section 2 of the Lanham Act, as amended (15 U.S.C. §1052) is useful here to put the issue in context. The statute reads that “[n]o trademark by which the goods or the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it….” There are several exclusions, but for this discussion the two relevant provisos are Subsections 2(e) and 2(f). Under the former, a trademark can be rejected if it is “merely descriptive”, “primarily geographically descriptive of the applicant’s goods”, “primarily merely a surname,” or “comprises any matter that, as a whole, is functional.”

Subsection 2(f) takes this back if the applicant’s use of the trademark has become distinctive of its goods in commerce. The trademark becomes distinctive upon “proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.” However, “it does not involve a determination that the Complainant’s mark, at the time of the Respondent’s registration of the disputed domain names, had acquired secondary meaning sufficient for the public to recognize it as a symbol distinguishing the Complainant’s goods and services from those of others,” San Diego.

Both U.S. courts and ICANN Panels insist that proof of secondary meaning “includes evidence as to (1) the length and continuity of a mark's use, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales or admission figures,” San Diego, citing First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir.1987). For trademarks registered under 2(f) the complainant must prove secondary meaning. In San Diego Hydroponics the majority granted jurisdiction, but denied the complaint; in Digital Alchemy, the Panel held that the Complainant failed to prove any common law rights to the descriptive term.

March 15, 2010

Complainant Cannot Rest its Case on Opprobrium

As for trademarks based on generic terms, however powerful they may be in market A they are unrecognized in market B. If market A and B are widely separated, as are Spain and the United States, and the dispute centers on a two syllable term that is attractive to many merchants peddling goods and services in different Classes, the complainant cannot rest its case on opprobrium. In Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010) the Complainant disputed the Respondent’s right to retain <clara.com>. The Complainant has a Spanish trademark for CLARA which it claims is “well-known”, but offered no proof for reputation beyond the borders of Spain. The Respondent pointed out that “the same mark is registered in Spain and in the United States by many others; the same mark is used in France for a similar but unrelated magazine; and ... the Complainant has made no claim to any reputation beyond Spain.” Where the complainant alleges that it has a reputation it has the burden of proving it; it is not for the respondent to rebut the allegation.

Essentially, the Complainant rested its case on the Respondent “usurping a domain name which obviously corresponds to a complainant as owner of a priority-registered trademark” and that this “reprehensible behaviour” prevented “the Complainant from carrying on its normal business activity through the domain name.” Whether a respondent is usurping the disputed domain name and acting reprehensibly is not determined on the basis of conclusory statements. It is no more necessary for a respondent to have trademark rights to establish a “right or legitimate interest” in the disputed domain name than it is for a complainant to prove a legal right to the domain name. It would turn “the Policy on its head,” Scripps Networks, LLC v. Chief Architect, Inc., D2009-0633 (WIPO June 29, 2009).

As to registration, the

Complainant must be able to satisfy the Panel that it is more likely than not that the Respondent was aware of the Complainant or of its CLARA trademark at time of the registration of the disputed domain name by acquisition in 2005 and intended to benefit unfairly from that trademark and/or to damage the business of the Complainant.

However, the female name “Clara” and the Spanish word “clara” (meaning “egg white” or “albumen”) are not granted a higher classification for the asking without proving secondary meaning in the respondent's market; that it has travelled intact from Spain to the United States. “Complainant’s submission that the term ‘Clara’ has “full distinctive capacity and should be considered a whim or at most a fantasy trademark with respect to its distinctive products” is rather a fantasy in eyes of the beholder. “The totality of ... circumstances [being taken into account] affords no reason to suppose that the Respondent had the trademark meaning or the Complainant’s magazine in mind on registration of the disputed domain name.” A generic or descriptive term does not transform to the suggestive or arbitrary because in its niche it is recognized by the consuming public.

March 12, 2010

One Letter Difference But Not Typosquatting

In general, a respondent’s registration of a domain name that misspells a trademark, or is composed of added, substituted or transposed letters that vary the prototype, is not merely confusingly similar but implies knowledge and suggests targeting the trademark. For these minor orthographic variations of trademarks panelists invented the term “typosquatting,” De minimis changes “immediately raise[] suspicions and call[]or an explanation,” CareerBuilder, LLC v. Azra Kha, D2003-0493 (WIPO August 5, 2003). However, some differences genuinely spell different words. The Panel in 5127173 Manitoba Ltd., carrying on as "Canada Drugs IT" v. Suucess Incorporated, FA1001001302812 (Nat. Arb. Forum March 8, 2010) held that <canadarugs.com> is not identical or confusingly similar to CANADA DRUGS. The Complainant argued that by dropping “d” the Respondent is guilty of typosquatting. In typical typosquatting cases the confusing term does not form a dictionary word; respondents reorder letters. Rugs is not likely to be confused with drugs.

There are three levels of questions in typosquatting cases. The first concerns the protectability of generic and descriptive terms. The words “Canada” and “drugs” are as generic singly as they are joined. Panels frequently cite Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) for the proposition that “[s]imilarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”

The second question concerns the timing of the domain name registration which in turn concerns the respondent’s knowledge or lack thereof of the complainant’s and its trademark’s existence. In 5127173 Manitoba the disputed domain name predated the Complainant’s trademark by a number of years, although the Respondent had passively held it for some of them; it became active again after the Complainant began marketing pharmaceuticals.

The third question is the content of the website which in the case of 5127173 Manitoba is an advertising portal for rugs and furniture. Of interest here is what may happen in the future if the domain name is transferred to a new owner who wants to go beyond the unremunerative advertising of rugs and furniture or if the Respondent does possibly triggering the construction held by the Panel in the March 8 Note on Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010).

Ordinarily, a finding against the complainant on the jurisdictional element under 4(a)(i) of the Policy makes it unnecessary to examine the record further, but in 5127173 Manitoba the Panel ruled that the Complainant also failed to satisfy the requirements of paragraphs 4(a)(ii) and 4(a)(iii). One explanation is that the Panel was uncomfortable in its jurisdictional ruling that the domain name was not confusingly similar to the trademark. After all, the confusion is not farfetched. In a number of early UDRP cases panelists were unsure about dismissing the complaint. Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001): “However, in case we are wrong on this issue [that is, skipping the threshold finding], we find that the Complaint fails to meet any of the requirements of paragraph 4b of the Policy.”

March 11, 2010

Opportunistic Bad Faith

The phrase “opportunistic bad faith” is not found in the WIPO Final Report, but was coined by early Panels initially to refer to disputed domain names that are so obviously connected with famous and well-known trademarks that their use by someone with no connection with them or the complainant's products suggests respondents taking advantage of Internet users to lure them to alternative web sites.  Early cases include Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000) (<xpediatravel.com>) Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., D2000-0163 (WIPO May 1, 2000) (<veuveclicquot.org>).  Intentionally diverting web traffic by misleading Internet users into believing that they are accessing the trademark holder’s website is prima facie bad faith.

However, opportunism embraces a larger community of respondents and is not limited to trademark holders.  It describes those who prey on the prestige and drawing power of a complainant’s rights for commercial gain.  One aspect of this conduct is identified in the WIPO Overview at paragraph 3.1 which describes respondents who with knowledge of a third party’s rights register domain names in anticipation of a filing for trademark registration. This form of opportunism is at the center of Monty Program Ab v. Tong, FA0912001299742 (Nat. Arb. Forum March 2, 2010).  “According to the Complainant, it or its predecessors in business, as well as Mr. Widenius, have been using the mark Monty Program for commercial activities since at least 1992.”  However the term became prominent in February 2009 when it “was publicly announced that Mr. Widenius was resigning from a major company and would form his own new company, which would be called Monty Program AB.” 

The Respondent in Monty Program registered <montyprogram.com> one day after the announcement.  The Panel cites as precedent 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent's registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”) and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do”).  See also Pro Confort SRL v. PIER56, Ion Robu, D2008-0801 (WIPO August 8, 2008).  Although the Complainant's trademark registration for RIN GRAND HOTEL followed the registration of the domain name by several months, the Respondent registered the domain name a month after the hotel’s official opening which was “notoriously advertised by Romanian media.”

In order to avoid forfeiture, the respondent must offer evidence that it had no knowledge of the complainant’s plans and that the registration of the disputed domain name was in preparation for a bona fide use.  In Monty Program, the Respondent contended that “as a child, he had been an avid fan of the well-known comedy group Monty Python.  When cleaning out his room in January 2009, he came across some old programs and was motivated to create a web site to let more people know about the group.  Since the domain name <montypythonprogram.com> was taken, he chose the disputed domain name, which was available.” 

The mere fact that a domain name identical to a trademark is available, however, is not a defense to abusive registration.  An excuse has at least to rise to the level of plausibility; not descend to risibility.

March 10, 2010

Complainant Does Not Have to Prove It Owns Domain Names

Mattel, Inc. owns trademarks for BARBIE, FASHIONISTAS and SO IN STYLE. The Respondent in Mattel, Inc. v. jaomadesigns, FA1001001303036 (Nat. Arb. Forum March 3, 2010) admitted that the Complainant owned the trademarks but argued that it “has failed to demonstrate ownership pertaining to the following disputed domain names: <barbiefashionista.com>, <brbielovesstila.com>fashionistabarbie.com>.” In so doing the Respondent misapprehends the rights in issue.  Complainant “does not have the burden to show rights in the infringing domain name, only rights in the mark...,” Scripps Networks, LLC v. Chief Architect, Inc., D2009-0633 (WIPO June 29, 2009). The argument that a complainant must have rights in the domain name “turns this element of the Policy on its head,” Id. 

Although there are limited circumstances under which respondents can avoid violation of the Policy by incorporating a trademark (coupling it with another term that identifies a wholly different business, for example, Prudential Insurance Co. of America v. Quick Net Communications, FA 146242 (Nat. Arb. Forum March 27, 2003) (<prudentialmotors.com>) rights or legitimate interests cannot be acquired by mixing and matching variations of trademarks well established in the marketplace. The order in which terms are written -- <barbiefashionista> or <fasionistabarbie> -- is as inconsequential as adding or omitting the plural form. “Barbie” is the dominant term in all the domain names.  Respondent’s fallback position in Mattel that the domain names could not be “confusing to the Complainant's sites since they are fansites, whereas Complainant site is the official site for Barbie, which anyone can easily tell" is equally unavailing. Even if a site were truly what it purported to be a respondent is not permitted to “commercially gain” from the targeted trademark.

The belief that adding a disclaimer on the website trumps the exclusivity of complainant’s trademarks is misguided. “The disputed domains are also not causing confusion with the Complainant official sites, and marks because everyone who has ever seen a television commercial knows that to find Barbie, you go to Barbie.com.  Even an average internet user does not necessarily expect to find every site containing the word BARBIE, to be an official Barbie site.”  But, the “average internet user” can be misled into believing that the confusingly similar domain name is an “official” site. 

It is not certainty of confusion but “likelihood of confusion” that is a violation of the Policy.  In response, the Panel noted “that the Respondent may have presented a more persuasive case had ‘Barbie’ not been included in its domain names.”  That is, while BARBIE is a famous trademark, “fashionistas” (regardless of tense) is generic and can have an independent non-infringing existence. Fusing identical or confusingly separate trademarks into a new string is no less a violation of the Policy than appropriating each trademark singly when the respondent's purpose is to capture the complainant’s audience by directing it to a third party website.

March 9, 2010

Domain Names as Intangible Property Subject to Lien and Attachment

Zuccarini is one of those mythic respondents whose registrations of domain names provided the grist for articulating standards of conduct under the UDRP.  He has also featured as a defendant in disputes arising under the Anticybersquatting Consumer Protection Act.  Most recently, the 9th Circuit affirmed the judgment against him by decision dated February 26, 2010 in Office Depot, Inc. v. Zuccarini involving domain names as property subject to lien and garnishment.  The status of domain names has evolved since they first made their appearance.    

Domain names were initially seen as having two lives: providing “addresses for computers that [are] easy to remember ... without the need to resort to the underlying IP numeric address” and identifying a business or its products or services [WIPO Final Report at paragraph 10].  However, over time they acquired an additional life beyond the purely functional. Entrepreneurs quickly learned how to create value by monetizing domain names for income and sale which raised their dignity into assets that could be pledged as security for collateralizing loans. Courts have recognized this change of status by analogizing domain names to real estate and corporate bonds. This status also exposes domain name owners to seizure for payment for debt. This is a radical transformation from how domain names were originally viewed. 

The evolution from the purely functional to becoming an asset has been progressive.  While recognizing the value of domain names, a pre-ACPA decision in the 4th Circuit rejected the view that they were property. The District Court for the Eastern District of Virginia in Dorer v. Arel, 60 F. Supp.2d 588 (E.D. Va. 1999) sought an answer through analogy with trademarks: “Significantly, trademark law does not suggest that the trademark owner ‘owns’ the words used in the mark, but only that the owner may enjoin others from using the words in commerce so as to avoid confusion or dilution of the value and significance of the mark.” The Court then listed “several reasons to doubt that domain names should be treated as personal property subject to judgment liens.” This reasoning was subsequently followed by the Virginia Supreme Court in Network Solutions, Inc. v. Umbro Int'l, Inc., 259 Va. 759, 770 (Va. 2000), reversing the Circuit Court that held that the “judgment debtor's Internet domain name registrations are valuable intangible property subject to garnishment.”

In contrast to the 4th Circuit and Virginia Supreme Court the Court in Kreman v. Cohen, 337 F.3d 1024 (9th Cir. 2003), a decision under the ACPA that emphasized the value inherent in domain names, held that they are personal property and defined property broadly as including “every intangible benefit and prerogative susceptible of possession or disposition…” The Court held that “[l]ike a share of corporate stock or a plot of land, a domain name is a well-defined interest. Someone who registers a domain name decides where on the Internet those who invoke that particular name — whether by typing it into their web browsers, by following a hyperlink, or by other means — are sent. Ownership is exclusive in that the registrant alone makes that decision.”

The most recent discussion on this subject is the 9th Circuit’s decision affirming the judgment in Office Depot.  The Court held that “[g]iven the persuasive but not controlling language of the ACPA, and the practicalities involved in bringing suit to execute judgments against owners of domain names, we conclude under California law that domain names are located where the registry is located for the purpose of asserting quasi in rem jurisdiction. Although the question is not directly before us, we add that we see no reason why for that purpose domain names are not also located where the relevant registrar is located.”

Functionality and value have been completely separated. Domain names remain like telephone numbers but are assets valuable in themselves subject to lien and attachment.

March 8, 2010

Holding Renewal Equivalent to New Registration

The consensus is that renewal of registration does not affect a registrant’s right to a domain name registered in good faith, while a transferee’s rights are determined from the date of its registration.  The Panel in Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) describes this as the “traditional” approach.  However culpable of bad faith use, as the Policy is presently construed the original registrant is protected from forfeiture.   This view was articulated most clearly in Teradyne, Inc. v. 4Tel Technology, D2000-0026 (WIPO May 9, 2000), although raised in the first case decided under the UDRP. 

The anomaly of a respondent intentionally targeting a trademark years after good faith registration is a feature of the Policy requiring the complainant to prove both bad faith registration (an act that took place in the past) and bad faith use (an act that is taking place in the present.)  The construction of the Policy that permits this has been questioned in a number of recent cases.  “Until last year’s decision in City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 (‘Mummygold’), panels had considered the requirements of ‘registration and use’ to be conjunctive, requiring a panel to consider both bad faith first at the date of registration, and to examine whether the respondent’s use was in bad faith.” 

The Mummygold line of cases abandoned the conjunctive requirement in favor of a unified approach to the problem based on violation of a continuing duty under paragraph 2 of the Policy to respect the rights of trademark holders.   This approach has not met with overwhelming enthusiasm because, for among other reasons, as the Panel in Eastman Sporto notes “whether intended or not, the Mummygold approach

could impact an otherwise settled rule of decision on which ‘all parties’ have relied for a decade.  That rule of decision moreover defines a fundamental element of the Policy, and departing from our precedent in this matter could modify substantially Complainant’s burden of proof especially under the third element of the Policy.

Instead the Panel in Eastman Sporto resuscitates a position expressed in PAA Laboratories GmbH v. Printing Arts America, D2004-0338 (WIPO July 13, 2004) in which the Panel elected reluctantly to follow precedent, but noted his reservations about the “traditional approach.”  In making the finding it does

the Panel wishes to clarify that its decision under this element is based on the need for consistency and comity in domain name dispute ‘jurisprudence’….  The abusive refreshing of the original registration is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy. The benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in “possession” long after the original registration would have expired. (Emphasis added).

The Panel in Eastman Sporto agrees:  “Based upon the record in this proceeding. The Panel deems Respondent’s 2009 renewal of the disputed domain name to be the date on which to measure whether the disputed domain name was registered and used in bad faith.”  If this approach were adopted it would be as significant a departure from established law as that proposed by the Mummygold approach.  Instead of doing away with the “and” and “or” of paragraph 4(a)(iii) of the Policy domain name registrants will be held accountable for their representation and warranty at each renewal of registration. 

March 5, 2010

Construing “Primarily for the Purpose” in Paragraph 4(b)(i) of the Policy

Yesterday’ Note on precedent in deciding UDRP cases touched on dictionary words and descriptive terms. Theories of bad faith under subdivisions of paragraph 4(b) of the Policy have similarly been construed. Thus, the respondent violates paragraph 4(b)(i) if it is found to have registered or acquired the domain name “primarily for the purpose” of holding it for ransom. The paragraph prohibits “selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Registration or acquisition of a domain name for some purpose other than selling, renting etc. may be actionable under a different theory, but commerce in domain names is not prohibited as a matter of law. “[I]f the drafters ... had intended to broadly cover offers to any and all potential purchasers as evidence of bad faith, it would have been a simple matter to refer to all offers to sell the domain name, and not offers to specific parties or classes of parties,” Educational Testing Service v. TOEFL, D2000-0044 (WIPO March 16, 2000).

Offering to sell the domain name to “the owner of a trademark or service mark trademark or service mark or to a competitor of that Complainant” is not as limited as it may appear from the literal reading of the phrase. It includes “general offers to sell the domain name, even if no certain price is demanded,” Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum November 6, 2000); offers to sell the domain name to the complainant’s licensee, Mattel, Inc. v. Unknown c/o Dora Marks, FA0506000490083 (Nat. Arb. Forum July 11, 2005) (Respondent alleged that it purchased the domain name as an “investment”); offers to sell to the general public, Systea GmbH v. Marketpoints.com New Media Branding Services/DNS Administrator, D2006-0324 (WIPO May 13, 2006) (Domain name “offered for sale on a publicly accessible website”); Parfums Christian Dior S.A. v. QTR Corp. D2000-0023 (WIPO March 9, 2000) (holding bad faith where WHOIS information included the phrase “this domain name is for sale”); offers to the “Internet universe,” Cargill, Incorporated v. RN WebReg c/o Rare Names, Inc., FA0904001260307 (Nat. Arb. Forum June 12, 2009), “which necessarily includes both Complainant and its competitors.” Demand for business concessions to relinquish the domain name also falls within the prohibition as do threats to sell to other trademark holders of the mark, Cello Holding, LLC v. Lawrence A. Storey, d.b.a. Lawrence – Dahl Co., AF-506 (eResolution December 21, 2000).

“Primarily for the purpose” also includes extortion for business concessions, Takaso Rubber Products Sdn Bhd v. Selim Tasci and Tasci Dis Tic. Ltd. STI, D2006-1263 (WIPO December 16, 2006). The demand by Respondent for such a business concession in exchange for transfer of the disputed domain name constitutes an offer to transfer the disputed domain name for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. Moreover, the “consideration demanded in exchange for a domain name registration does not have to be monetary in nature to run afoul of UDRP paragraph 4(b)(i), but can be anything of value that exceeds the amount spent in registering and maintaining the domain name,” Gutterbolt, Inc. v. NYI Bldg. Prods. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000). Demands for concessions in pre-arbitration communications veiled as opportunities fall within the proscription. “[I]t is very often an opening gambit in an exercise of inducing the trademark owner to offer to buy the domain name without providing direct evidence to support a complaint under the Policy,” Google Inc. v. Jeltes Consulting/N. Tea Pty Ltd, D2008-0994 (WIPO August 20, 2008).

March 4, 2010

The Role of Precedent in UDRP Cases

For consistency in the application of domain name law panelists try to anchor their decisions with citations to earlier cases. It is standard practice by both bench and bar in common law jurisdictions; a practice that is emphasized in the daily Notes. The wealth of domain name law is easily accessible online for prosecuting and defending disputes. I will depart in today’s and tomorrow’s Notes from current decisions to discuss thematic issues raised in earlier cases in which panelists received and affirmed precedential principles in favor of respondents.

Dictionary words used in their ordinary sense and “registered because of their attraction as dictionary words, and not because of their value as trademarks” do not contravene the Policy, The Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum August 6, 2004) (<landmark.com>); Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum May 25, 2004) (<target.org>, the links “relate to target practice, hunting, archery, and other sports equipment.”). Even if a dictionary word is accepted for registration the trademark holder has no superior right to the corresponding domain name, absent proof of targeting. No person is entitled to monopolize what is common to all.

Further, where the mark is “a highly descriptive term, a party seeking to establish exclusive rights carries a heavy burden of proof in removing the term from the public domain,” Snowboards-for-sale.com, Inc. v. Name Administration Inc., D2002-1167 (WIPO February 19, 2003) (<snowboardsforsale.com>). The general rule that applies to dictionary words applies to common linguistic constructions in trade and the professions. For example, the disputed domain name in Super-Krete International, Inc. v. Concrete Solutions, Inc., D2008-1333 (WIPO October 14, 2008) is <supercrete.com>; the Complainant’s trademarks SUPER-CRETE and SUPER-KRETE registered after the domain name are neologisms common in the industry to mean super strong concrete. Similarly with scientific terms employed to call attention to the content of the website, such as <rorschachonline.com>. In Hogrefe AG v. Ney Limonge, D2008-1206 (WIPO October 3, 2008) the Complainant had a registered trademark for RORSCHACH. Respondent, a clinical psychologist, registered the disputed domain name to distribute “an interactive online computer program used in the administration of the Rorschach inkblot test.” In eSnipe, Inc. v. Modern Empire Internet, Ltd., D2009-0719 (WIPO August 5, 2009) the confusing similarity involved the expression “snipe.” Wikipedia defines sniping as it relates to auctions as “the process of watching a timed online auction (such as on eBay), and placing a winning bid at the last possible moment (often seconds before the end of the auction), giving the other bidders no time to outbid the sniper.” The Complainant owns SNIPE IT!; the Respondent registered <snipeit.com> prior to the registration of the trademark, but even if the timing was otherwise, given the established meaning of snipe it “leaves open the strong possibility that entities in different parts of the world might quite likely come up with the same or similar snipe-related names independently of one another.”

Unless there is “intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common generic term,” Ultrafem Inc. v. Royal, FA 97682 (Nat. Arb. Forum Aug. 2, 2001) (<instead.com>); see, CITGO Petroleum Corporation v. Matthew S. Tercsak, D2003-0003 (WIPO February 28, 2003) (<mystic.com>; domain name is confusingly similar to Complainant’s mark but Respondent operates a bona fide business from that address). It is precisely because the web sites in these and other cases are unyielding to any inference that the Respondent intended to target the complainant's audience under paragraph 4(b)(iv) of the Policy that the complaint must be dismissed.

March 3, 2010

Reverse Domain Name Hijacking Warranted When Allegations of Bad Faith are Without Substance and Should Never Have Been Made

Rule 15(e) of the Rules of the Policy which authorizes a finding of reverse domain name hijacking is symmetrical with paragraph 4(a)(iii) of the Policy.  Either party can be found in bad faith.  The difference of course is in the consequences.  The respondent forfeits the disputed domain name while the complainant is merely chided.  There has been considerable criticism aimed at some panelists for their myopia is refusing to find against complainants even where complainant’s bad faith is manifest. A guideline for reverse domain name hijacking with criticism was offered by the Hon. Neil Brown, Q.C. in a brief essay that appeared in a Domain Name Wire blog on July 13, 2009.

A holder of a later acquired trademark has no legal basis for capturing an earlier registered domain name, yet avoids sanction.  The most recent example is the decision in CP Masters B.V. v. RareNames, WebReg, D2009-1673(WIPO February 11, 2010) in which the Panel essentially applied his own (subjective) standard, denying an order of RDNH because, well to put it charitably, it does have a trademark; that is, it has prevailed on the jurisdictional requirement.  The Panel’s reason for giving the Complainant (incidentally, represented by counsel) a pass is, well, ludicrous, clearly rejecting Mr. Brown's strictures (or perhaps never have read them):   “The very obviousness of the gap in the Complainant’s case [that it had no trademark right when the domain name was registered] suggests more strongly that the Complainant seriously misunderstood what was required for a finding in paragraph 4(a)(iii) of the Policy, rather than that the Complaint was brought dishonestly.”  Translated, this means according to that panelist that not understanding the law or being ignorant of it is sufficient to avoid sanction.    

Compare this with a decision from the first full year of the UDRP to see how the Rule should properly be applied.  The Panel in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000) put it this way:

Putting this in the kindest light that the Panel can, the Panel believes that in its eagerness to obtain the Domain Name the Complainant lost all sense of proportion. It took on the guise of a third rate barrack room lawyer and advanced arguments that were tortuously artificial in the extreme, reckless both as to as to the justification for making those arguments and the seriousness of the overall charge against the Respondent, who was manifestly no cybersquatter. This Complaint was a clear abuse of the Policy designed to deprive the Respondent of her domain name. The allegations of bad faith were without substance and should never have been made. (Emphasis added).

The standard is not subjective but objective; driven by facts not empathy. 

Comment from Erik S. Zilinek, Esq.

Dear Mr. Levine, 

Thank you for today’s note – I’m glad you and at least one other person noticed and took exception to this obvious miscarriage of the limited justice available to the Respondent.

What you may find even more interesting is that in a pre-UDRP correspondence – following many rounds of good faith negotiations – I implicitly warned the same attorney that if his client went the UDRP route that I would argue for a finding of RDNH – based solely on the facts.

But this quote, from the decision – it’s priceless: “The very obviousness of the gap in the Complainant’s case suggests more strongly that the Complainant seriously misunderstood what was required for a finding in paragraph 4(a)(iii) of the Policy, rather than that the Complaint was brought dishonestly.”

The Panel knew full well the entirety of the correspondence that the parties exchanged and nevertheless found that this Complainant “seriously misunderstood what was required”?  But I told Complainant what was required!

Maybe the Panel thought we should’ve accepted the Complainant’s offer (not that that’s part of the RDNH calculus)?  It’s the only rationale that makes some sense to me; on the other hand, the “asking” price was above $100K months before this Complainant ever inquired about it (due in no small part to the type-in traffic it generates naturally, i.e., from Portuguese-speaking users of the Internet searching for images). 

Maybe next time I need to spell that out for the Panel?  That we weren’t holding the domain hostage vis-à-vis Complainant: the price was north of $100K before we ever heard from them and without any regard to them?

Thank you again,

Erik

March 2, 2010

Respondent with Future Intentions for a Domain Name Must “Demonstrably Demonstrate” His Plans

In deciding on the issue of a respondent’s good or bad faith conduct, there are two obligatory questions:  “Why did the Respondent register the Domain Name [in which he has no right or legitimate interest]?” and,   Why would one register as a domain name the name of another entity, knowing it to be the name under and by reference to which that entity carries on business?”  In Israel Bar Association v. Itai Ram, D2010-0003 (WIPO February 15, 2010) the questions are rhetorical since the answer is self-evident in this case.  

As between paragraphs 4(a)(ii) and 4(a)(iii) of the Policy there is a symmetry.  In the first the respondent has the burden of rebutting the complainant’s prima facie proof that it lacks any right or legitimate interest in the domain name which essentially means proving good faith; in the second, the complainant must prove conjunctive bad faith.  Although lack of rights or legitimate interests is not conclusive on the issue of bad faith – the onus remains at all times with the complainant – it is not without meaning.  The Respondent in Israel Bar offered proof to support future intention for the disputed domain name, but a future oriented intention is not equivalent to “demonstrable preparations” to do that which it allegedly intends.   It could be said that an unpersuasive rebuttal is worse than no evidence, because no evidence increases pressure on the complainant to prove bad faith whereas an implausible explanation actually assists the Complainant with its burden. 

The Respondent (Israeli educated) offered two (arguably inconsistent) explanations for registering <israelbar.com>, that he intended to create an “an online website for mobile devices that will provide a portal with links to popular Israeli bar” and the other for “a website for mobile devices that will provide an online bar (similar to the Google Bar, or the Yahoo Bar) with links to popular Israeli websites.”  The Panel noted that if the latter was a clarification of the former “that the Google and Yahoo ‘bars’ are more commonly referred to as ‘toolbars’ and <israelitoolbar.mobi> would have been a much more informative domain name than the Domain Name <israelbar.mobi>.”  In any event “the Respondent’s explanation does not ring true.”

In those cases in which a respondent lacks rights or legitimate interests but complainant’s proof is insufficient to establish registration in bad faith it is generally found that the respondent got there first. Either the trademark postdated the registration of the domain name as in CP Masters B.V. v. RareNames, WebReg, D2009-1673 (WIPO February 11, 2010) or it was a generic or descriptive term lacking market penetration to have come to the respondent’s attention as in Patricia Kelley v. Innovation HQ, Inc., D2009-1723 (WIPO February 6, 2010).  However, if a respondent cannot rebut complainant’s proof on the second requirement and on the third requirement cannot explain why it registered a disputed domain name identical to a well known trademark then it is an easy step to conclude that it registered it to take advantage of the trademark.   

If the respondent is going to offer an explanation it should be both factually consistent and related to the applicable law.  Implausibility of explanation affects how the speaker himself is regarded, credibly or not.   The Panel in Israel Bar concluded that “In the absence of an explanation, the Panel is entitled to infer that the Respondent’s intent was abusive. Where, as here, there is an explanation, but the Panel does not believe it, the Panel has no hesitation in holding that the Respondent’s intention was abusive.” 

March 1, 2010

Surnames of Historical Personalities Adopted as Trademarks

Personal and surnames are not protected under the UDRP unless their owners can demonstrate their names are associated in the marketplace as sources of goods or services. Personalities in sports, entertainment and the arts have generally succeeded in capturing infringing domain names, but business people have been rejected – Israel Harold Asper v. Communication X Inc., D2001-0540 (WIPO June 11, 2001 – although as I pointed out in the Note for September 23, 2009, there is emerging a more expansive view for entrepreneurs associated with business ventures even if not named after them, Chung, Mong Koo and Hyundai Motor Company v. Individual, D2005-1068 (WIPO December 21, 2005).

In contrast, names of personalities plucked out of the history book and adopted as trademarks are not treated under the surname rule. It has been transformed into a symbol. The question turns on whether the complainant can carry the burden of demonstrating recognition of the symbol in the marketplace sufficient for the Panel to conclude that the respondent had actual notice of the trademark's existence. This was the issue in Churchill Insurance Co., Ltd. v. Churchhill financial Services, Ltd., FA 0906001270466 (Nat. Arb. Forum September 1, 2009) (U.K. Complainant; Respondent resides in the Cayman Islands) in which the complaint was denied because “Churchill” was not transformed in all markets. It was a symbol for one and an historical personality only for another because of its limited market range. However, no such conclusion could be drawn from adoption by General Motors of the surname of Antoine de la Mothe Cadillac, the French Governor and founder of Detroit. The Complainant in General Motors LLC v. Shenzhen Belding Golf Planning Co.,ltd., D2009-1781(WIPO February 10, 2010) demonstrated that its trademark CADILLAC has migrated from automobiles to luxury goods and golf courses. Like ROLLS ROYCE the CADILLAC trademark denotes superlative quality. It is irrelevant that the trademark registrant appropriated the name of a former president, governor or cultural figure if the respondent is using the domain name in a trademark sense.

The Respondent in General Motors nevertheless denies that its choice of <cadillacgolf.com> is in any way a violation of the Policy because “[i]n China, the Trade Mark is only registered and used by the Complainant in respect of automobiles and automobile manufacturing... The Complainant's international Class 28 registration for the Trade Mark does not cover golf-related products.” This argument perpetuates a misunderstanding of the UDRP and of trademark law. It is not the Class that necessarily defines a holder’s exclusive rights to a registered trademark, but the likelihood that consumers will be misled by the use of a name identical or confusingly similar to the trademark into believing that the website is sponsored by the trademark holder. In any event, the Complainant in General Motors demonstrated that it uses CADILLAC in its golf related ventures and that the Respondent was piggybacking on the association of the trademark.

April 2010 NOTES , DATES ARE IN REVERSE ORDER

April 30, 2010

Simultaneous Legitimacy and the First to Register Principle

Where there is a parity of right, the first to register a domain name comprised of a string of syllables, two or three letter acronyms, single words or combination of letters or words is entitled to it. In these circumstances, the “first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest,” CRS Technology Corporation v. Condenet, Inc., FA93547 (Nat. Arb. Forum March 28, 2000). First come first served implies registration of a domain name that equally could have been acquired by a trademark holder who was outraced to the registry. However, it is not being first that secures the right, but being first to register the domain name in good faith. “A person who successfully registers a domain name on the basis that [he was] the first to apply to register it secures the registration subject to the three threefold requirements of the Policy” (emphasis added), VRL International Ltd. and International Lifestyles, Inc. v. Relevansanalys, D2009-0974 (WIPO September 3, 2009).

The first to register principle is illustrated in Neptune Orient Lines Limited v. cnwonder.com c/o Wu Guiqiang, FA1002001310401 (Nat. Arb. Forum April 14, 2010) contending over the three letter second level domain name <nol.com>. The Complainant claims to have operated under the trade name NOL since 1968, although it only obtained registration of it as a trademark subsequent to the registration of the domain name. Although the Complainant “has proved that it is entitled to claim protection of its mark ‘NOL’ and its tradename ‘NOL’ before Respondent began to use the domain ... Respondent is likewise free and allowed to claim protection upon the ‘NOL’ domain name, as it is making a bona fide offering of services, certainly linked with the name used in the domain” (Underlining in original).

A competitor who by happenstance registers a domain name descriptive of its services and not purposely to disrupt its counterpart who has also adopted the mark is entitled to retain the domain name. One Creative Place, LLC v. Kevin Scott, D2006-0518 (WIPO June 16, 2006) (<montrosejetcenter.com>):

Both parties had a potential interest in using the highly relevant, descriptive words ‘Montrose Jet Center,’ as a name, as a domain name, or in descriptive advertising.... In short, it appears to the Panel that this dispute represents a race to use descriptive words in a newly competitive marketplace, rather than a bad-faith effort by the Respondent to trade on the Complainant’s established marks.

Finally, where the mark is used by a “multitude” of businesses – “nol” is incorporated in a number of trademarks – Panels have approached the issue in one of two ways. Either the mark is too weak to satisfy the bad faith registration requirement or too diluted for protection by any of the multitude, in which event the first to register is entitled to keep it.

April 29, 2010

Evidentiary Burden for Proving Trademark of Personal Name

The Panel in Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, D2004-0108 (WIPO July 22, 2004) (<tonysnow.com>) stated the proposition in the following way:

As the degree of fame decreases from clearly identifiable celebrities with worldwide renown, to nationwide renown or to less well known authors, actors or businessmen with limited renown in a specific field, the burden of proof on the Complainant increases and the need for clear and convincing evidence becomes paramount.

There is a sliding scale, on one end of which celebrities whose talents are offered in the marketplace are privileged. Personal names of artists, performers, musicians, authors and athletes have been found to pass the evidentiary hurdle for common law trademark rights. Others who may be equally celebrated in their non-marketplace fields, have to scramble for trademark recognition. Two cases illustrate the divide, Hill Harper v. Moniker Privacy Services / Domain Administrator, D2010-0225 (WIPO April 14, 2010) and Mr. Cinar Orge Saylan and Mr. Caglayan Orge Saylan v. GKG.NET Domain Proxy Service/The Fact Co., Winston Smith, D2010-0248 (WIPO April 9, 2010). In the first, the Complainant’s activities establish his right to protect his name from commercial exploitation; but not in the second. The difference lies in the reach of their respective names as commodities in the marketplace. The measures of fame and success are pecuniary and material; the helping professions (at least with the Panel in the second case) do not qualify.

Respondents appeared in neither case and in both the domain name resolved to pay-per-click websites. Although “the mere offering of a domain name for sale to the Complainant or to a competitor of the Complainant for more than the out-of pocket costs directly related to the Domain Name does not constitute evidence of both bad faith registration and use within the Policy ... [because] paragraph 4(b)(i) ... requires the additional showing that this was the Respondent’s primary purpose for registering or acquiring the Domain Name,” an intent, for commercial gain, to attract Internet traffic as a result of confusion between the Domain Name and the Complainant’s mark violates paragraph 4(b)(iv) of the Policy.

Hill Harper is well-known as an actor and author in the United States of America. Dr. Turkan Saylen on the other hand is a non-commodified celebrity. She is “a well-known professor, doctor and humanitarian in Turkey. Dr. Saylan was the founder of the Association for the Support of Contemporary Living, a well-known NGO in Turkey ... [who] received the International Gandhi Prize in India ... [as well has] won numerous peace awards and other accolades in Turkey.” On top of this she “has also published numerous books, articles and other scholarly works.”

The result is often unexpected and unfair. This was anticipated in the the WIPO Second Report. The Report states at paragraph 179 that “the application of the UDRP to the protection of personal names [should be authorized only] when they constitute trademarks,” Paragraph 179. At 199, the Report goes on to state that this may result in an “injustice” and is undoubtedly an unhappy limitation: “many sensitivities [will be] offended by the unauthorized registration of personal names as domain names” and the “result is that there are some perceived injustices.”

The Panel denied Dr. Saylan common law rights to her name and concluded that “this dispute is better served by being adjudicated by the appropriate authority under Turkish law.” The problem is that the Respondent resides in the U.K. “If anything is clear from the numerous past panel decisions focusing on personal names, it is that the UDRP policy was not intended to provide comprehensive protection to personal names.” It is not absolutely correct that academics celebrated in their fields have been refused protection. In a criticism (alleged fair use) case, the Panel found that the Complainant had common law protection, Joseph Schlessinger, Ph.D. v. PrivacyProtect.org / Harold O Connor, JS Players Association, D2009-0695 (WIPO July 21, 2009). It can be added further that if “anything is clear” a court action in Turkey against a person a continent away to vindicate a reputation and obtain rights over one’s own name is an illusion.

April 28, 2010

Invitation to Refile a Complaint Where License Wrongfully Terminated

This Note reviews an issue not frequently before a Panel, namely complainant’s right to maintain a subsequent proceeding where the current status indicates that its license to use a trademark has, rightly or wrongly, been terminated in favor of the respondent. Licensees are among those included as allowable complainants under paragraph 3(a) of the Rules of the Policy. Ordinarily, the jurisdictional requirement “can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world,” Advanced Magazine Publishers Inc. v. Computer Dazhong, D2003-0668 (WIPO December 12, 2003).

In Jetfly Aviation SA v. Jens K. Styve / Domains by Proxy, Inc. and Happy Landings S.A., D2010-0244 (WIPO April 5, 2010) the complainant was the terminated licensee of JEFLY. The question of wrongful termination of license of one party and its grant to another party is outside the scope of the Policy. In Jetfly, the Complainant has already commenced proceedings against the Respondent in Geneva in relation to the latter’s use of JETFLY and the corresponding domain name, <jetfly.com>. The matter in the Geneva court is pending. The Complainant’s right to use the trademark depends on the court’s decision. The facts read like a boardroom farce. The Complainant and Respondent were both formed by the same founders, the Respondent more recently. More recently still the founders terminated their firstborn in favor of their second. The taking from one and giving to another suggests a falling out between investors in the Complainant and the founders, which the founders resolved by taking their ball to another playground. Adding spice and intrigue to the equation, the Complainant either in retaliation or, perhaps, in anticipation of the founders’ action, obtained a Community registration for JETFLY (evidently without opposition) against which the founders recently instituted a cancellation action.

The Policy does not authorize commencing a proceeding “during the pendency of a related civil action,” Automobile Atlanta, Inc. v. Treadway Solutions, FA0905001264729 (Nat. Arb. Forum July 20, 2009). Rule 18(a) reads: “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” However, a number of panelists have expressly authorized the complainant to refile its complaint if the factual circumstances change. Thus, in Cluett, Peabody & Co., Inc. v. Sanford Bus. Writing Serv., FA 95842 (Nat. Arb. Forum December 12, 2000) the panel allowed a complaint to be refiled because the previous Panelist had “expressly reserved the right of Complainant to recharge bad faith registration and use of the domain name in issue.”

The Panel in Jetfly noted

It may be, of course, but the Panel is in no position to judge, that the termination of the license to the Complainant ... was unlawful and that the license to the Respondent and the Respondent’s subsequent use of the trade mark are also unlawful.... However, on the face of it, the Respondent is acting under license of an owner of the trade mark.

Since the Respondent is under license and no court has ruled against it the “Panel is unable to conclude ... that the Domain Name was acquired by the Respondent and is being used in bad faith.” That is the only conclusion that can be drawn from the record. However, “if the Geneva court hands down a decision to the effect that the Respondent has no rights or legitimate interests in respect of the Domain Name, but does not order transfer of the Domain Name to the Complainant,” then, if the Complainant wishes to refile its complaint the Panel believes that the Complainant should be permitted to do so.”

April 27, 2010

Bad Faith Must be Directed at Complainant or its Trademark

Domains that are identical or confusingly similar to a well known trademark of which the respondent cannot plausibly deny knowledge are on one end of the spectrum. In a great majority of these cases respondents do not bother to answer the complaint unless they can offer or the record contains sufficient evidence that supports a defense under paragraphs 4(c)(i) or (ii) of the Policy. A recent example of a default in which, however, there was sufficient evidence in the record is General Electric Company v. Estephens Productions, D2009-1438 (WIPO December 17, 2009) denying transfer of <geentertainment.com>. Where the trademark is lesser or plausibly unknown to the respondent, the evidence in support of forfeiture must be persuasive. An example of an unpersuasive submission is Letstalk.com, Inc. v. Inofirma, Ltd c/o Domain Administrator, FA1002001310279 (Nat. Arb. Forum April 21, 2010) (the Panel was “quite troubled by the apparent carelessness with which the Complaint in this proceeding was prepared.”)

The Complainant in Letstalk received registration of LETSTALK.COM on the Principal Register in 2010, although it “had made active use of its later-acquired mark for several years prior to Respondent’s registration” of <letztalk.com> in 2003. The Complainant resides in California; the Respondent in Russia. “[I]t does not appear that [Complainant’s] mark is used outside the United States (aside from the fact that Internet users worldwide presumably can view Complainant’s website).” The Panel decided to go directly to the issue of bad faith. He apparently agreed that the domain name was confusingly similar otherwise he could have terminated the proceeding, but he found it unnecessary to pass judgment on either paragraphs 4(a)(i) or 4(a)(ii) of the Policy. Whether similar or not or even confusingly so, the Complainant lost for failure to prove bad faith.

As a rule of thumb, it is more probable than not that domain names identical or confusingly similar to famous or well known trademarks have been chosen for their value to capture Internet traffic, regardless of website content. The opposite is true for trademarks less well known or composed of common words and descriptive phrases. Even in the presence of confusing similarity bad faith is not a given. It is proved by showing that the registration was directed at the Complainant or its trademark. “The essence of the Complaint is an allegation of bad faith, bad faith targeted at the Complainant,” Asset Mktg. Sys., LLC v. Silver Lining, D2005-0560 (WIPO July 22, 2005); Terana, S.A. v. RareNames, WebReg, D2007-0489 (WIPO June 7, 2007) (requiring that “the trademark owner or its mark [be] targeted by the domain name registrant”). Denial of knowledge is less plausible the greater the market penetration of complainant’s trademark or where the market penetration is local or regional rather than national. This is particularly so where the parties are engaged in the same business in the same territory, Texas Wind Power Company v. Wind Works c/o Savvy Dog Design, LLC, FA0903001252746 (Nat. Arb. Forum May 12, 2009) (<texaswindworks.com>).

In finding for the Respondent in First American Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO April 20, 2001) (<firstamerican.com>) the Panel held that it would be “inconsistent with existing trademark principles and with the limited language and scope of the Policy” to construe paragraph 4(b)(iv) “without a requirement of direct action by the Respondent.” It would

Create a tremendous scope of protection around existing owners of marks of common words and mundane expressions, and prevent new entrants from using these words and terms – even in entirely different fields from existing uses.

Respondent’s content in First American did not support a conclusion that it was targeting the Complainant, whereas incorporating a competitor’s trademark with a minor variation – substituting “works” for “power” in Texas Wind Power – does. Letstalk is in the category of First American, not Texas Wind Power.

April 26, 2010

Proving Reputation to Counter Denial of Knowledge

Companies come and go and reputations grow or wither, but at the start new businesses are one among many offering similar goods or services. When parties acquire their respective interests close in time and are geographically distant from each other the question of the respondent’s knowledge of the trademark holder is a significant factor in determining parties’ rights. Knowledge can be inferred from the complainant’s reputation. The more it has and the wider its sales the greater the likelihood that the complainant or the trademark came to the respondent’s attention and this and other evidence can point to abusive registration. Lack of market penetration is likely to undermine a complainant’s contention that the respondent registered the domain name to take advantage of the trademark. Woe betide a complainant who proves only its reputation within a year or two of commencing proceedings. Lack of proof suggests the complainant had no reputation earlier in time than the evidence it offers.

The disputed domain name <www.wallpaperdirect.com> in C Brewer and Sons Limited v. Vertical Axis Inc. / wallpaperdirect.com/ c/o Nameview Inc. Whois IDentity Shield, D2009-1759 (WIPO April 11, 2010) was registered in 2002; the Complainant has been “operating its online business under the Trade Mark via its ‘www.wallpaperdirect.co.uk’” since September 2000. “The Respondent has stated that it did not know of the Complainant or its registration for the Trade Mark when the Respondent registered the disputed domain name.” The parties are geographically distant from each other. The Respondent may be mendacious – it has been party to prior UDRP proceedings, albeit winning more than it lost – but proof of knowledge is the Complainant’s burden.

One tack for a complainant is to demonstrate that its reputation traveled even to the far corners of the earth and that its trademark is and was well known in the country of respondent’s residence. In C Brewer, however, the Complainant offered evidence limited to “its sales in 2007, 2008 and 2009 ... [together with] evidence of its advertising expenditure in 2008 and 2009, and a reference to the Complaint being quoted in an April 2009 article in the United Kingdom broadsheet newspaper, ‘The Independent’.” This is not good enough to settle the question that it was in 2002 what it claims for itself in 2009. “Is” is not “was.” We have met this problem recently in Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010); and Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010). In contrast, a trademark composed of a generic term or common word that achieves an International reputation “puts the Complainant’s claims on quite a different footing,” Easygroup IP Licensing Limited v. N. Hilton, Easycentre.com, D2005-0935 (WIPO October 31, 2005) (<easycentre.com>).

It cannot be said, even by its most sympathetic admirer that Complainant’s WALLPAPER DIRECT achieved in its early years an International reputation such that the Respondent would be guilty of bad faith when 8 years earlier than the commencement of the UDRP proceedings it registered a generic domain name. Although it “has been long-established that the doctrine of laches has no bearing on domain name proceedings filed under the Policy ... delay, together with the lack of evidence of goodwill and reputation in the Trade Mark when the disputed domain name was registered, and the Respondent’s assertion that it had never heard of the Complainant when it registered and commenced use of the disputed domain name, gives rise to the inference that the disputed domain name has not been registered and used in bad faith.” Neglecting proof of reputation assists the respondent.

April 23, 2010

Credibility as a Factor in Determining Parties' Rights to a Disputed Domain Name

Although UDRP complaints are resolved solely on papers without benefit of discovery and with no right of confrontation it would be a mistake to discount credibility as a factor in determining parties’ rights to a disputed domain name. Parties make their appearances in submissions and can be judged for their candor or lack of it, the plausibility of their arguments, their statements or silences and by the evidence they produce or suppress. In DigiPoS Store Solutions v. Hiname Inc., D2010-0297 (WIPO April 16, 2010), the Respondent pleaded good faith registration which, however, was belied by its conduct.

The persona a party projects can be critical to how it is perceived by the Panel and ultimately to its success or failure in the proceeding. Either party can fail on credibility. To take a few examples. In Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd., FA0501000406512 (Nat. Arb. Forum March 9, 2005) the Panel stated this point bluntly: “Complainant’s allegations in the Complaint are so conclusory, and so obviously unsupported by evidence, that it calls Complainant’s other assertions into question. Parties in UDRP proceedings are well advised not to advance arguments that are so patently without merit that it undermines their credibility.” Obversely, in Hurriyet Gazetecilik Ve Matbaacilik A.S. v. INFOMED, D2008-0127 (WIPO March 30, 2008) (<hurriyet.net>, Turkish parties) the Respondent made a good impression. In Scarlett Johansson v. Tristan Dare, D2008-1650 (WIPO December 16, 2008) the Respondent’s contemptuous attitude – his disdain for “the entire concept of bad faith a concept which he described in his Response as ‘pragmatically speaking, beside the point, since bad faith is an arbitrary qualitative identifier that is neither culturally, neither structurally universally applicable’ ” – did “nothing to inspire confidence in the credibility of the Response.” Some explanations are so highly dubious as to stretch credulity. In H-D Michigan LLC v. Paul Hagerty, FA0906001269352 (Nat. Arb. Forum August 24, 2009) “Respondent argues that its selection of the domain name <h-d-roadhouse.com> reflects the fact that his business is called ‘Hagerty's Drivin Roadhouse.’ However, Respondent has not presented evidence in support of this contention, even after being provided a second opportunity to do so by Interlocutory Order.”

In DigiPoS, prior to the filing of the complaint the Respondent demanded an excessive price for the domain name and shortly after changed content on the website. The Panel dismissed the Respondent’s contentions that it “did not really” make such a demand and in any event “it was in response to approaches from the Complainant” as not meriting “any serious consideration.” On the issue of changing content the Panel noted that “[w]hilst the Respondent is at complete liberty to establish a website offering IPO related advice, it has failed to furnish any evidence to suggest it has the right to resolve the disputed domain name, comprising the Trade Marks, to such a website.” Sanitizing the record after notice does not cure but supports the complainant’s contention that the domain name violates paragraph 4(b)(iv) of the Policy. Sansum Clinic v. Sansumclinic.com / c/o Whois Identity Shield, D2008-1008(WIPO August 28, 2008).

April 22, 2010

Not Granting a License is Not Dispositive of a Respondent’s Legitimate Interest

Holding a trademark does not guarantee a right to a corresponding domain name even where the trademark antedates the registration of the domain name. The paragraph 4(c) defenses, in fact, expressly recognize differences of timing. Paragraph 4(c)(i) of the Policy opens with the phrase “[b]efore notice of the dispute” expressing thereby that a respondent’s right or legitimate interest in a disputed domain name is not limited by an earlier acquired trademark. Paragraph 4(c)(ii) covers the situation in which prior to the registration of the domain the respondent had been commonly known by that name regardless whether another person earlier acquired the same name for its business sign. Paragraph 4(c)(iii) confers legitimacy on a registration as a matter of public policy where the trademark exists prior to the domain name registration. Implicit in all three defenses is the understanding that the parties have potentially parallel rights to the domain name and that the respondent only stands in an inferior position if the proof establishes that the registration was abusive.

In Bluearc Corporation v. Blue Arc, D2010-0181 (WIPO March 29, 2010) the Complainant “makes the argument that due to the notoriety and fame associated with the BLUEARC trademark, it would essentially be inconceivable for the Respondent to make a bona fide or a legitimate noncommercial or fair use of the disputed domain names without the intent for commercial gain.” This argument, however, presumes what is not the case that a respondent’s defenses are limited in scope to paragraph 4(c)(iii). “Notoriety and fame” are sometimes in the eyes of the beholder. According to the Respondent “Blue Arc-Advanced IT Solutions is a legally registered company in Turkey” where it is resident and since the website is written in Turkish “there would be little benefit for any Internet user not fluent in the language.”

Existence of a company bearing the name of the domain satisfies paragraph 4(c)(ii) of the Policy. Operating a business that makes a bona fide offering of goods or services “before notice of the dispute” satisfies paragraph 4(c)(i). While it is true that the Respondent registered the disputed domain name without obtaining the Complainant’s permission, the “Complainant does not address the fact that the Respondent can indeed make a legitimate bona fide commercial use of the disputed domain names which is what the Respondent appears to be claiming.” In this respect the Complainant has “not sufficiently evidenced that the Respondent has no legitimate interest to the disputed domain names in light of the evidence put forth by the Respondent and upon the Panel’s assessment of the evidence.”

There is an additional factor in these cases involving the respective businesses of the parties. It may under certain circumstances be relevant if the parties service the same sector of the market. The Complainant in fact focused its argument primarily on paragraph 4(c)(iii) alleging that the Respondent was not making a legitimate noncommercial or fair use of the domain name. However, there is “no evidence that the Respondent is intentionally trying to divert Internet users to its domain pages or to create a false association with the Complainant or its business.” Rather, the “services offered by each respective Party are distinctly different and it would be unlikely that any party seeking to find assistance with its data storage needs would associate the Respondent with the Complainant. This is even more unlikely considering that many of the services of the Complainant are not even offered by the Respondent.”

April 21, 2010

Similarity of Domain Name and Trademark Unsurprising Where Parties Service Same Market

Although in AroundThe Rings Inc. and World Football Insider Inc. v. Dunsar Media Company Limited, Duncan Mackay, Sarah Bowron / Contactprivacy.com, D2010-0153 (WIPO April 7, 2010) the Panel found the similarity between domain name and trademark confusing on a side by side examination – “on this element [the parties’ cases] are finely balanced” – he held that the Respondent had a legitimate interest and did not register the domain name in bad faith. The Complainants hold a registered trademark in WORLD FOOTBALL INSIDER and the Respondent registered (together with several other domain names with different extensions) <insideworldfootball.com>. According to the Complainants the “Respondent has simply reversed the two components of the Complainants’ name and omitted an ‘r’....” Reversing or rearranging components is not an uncommon ploy in cybersquatting; omitting or substituting letters is a common feature of typosquatting. However, when the respondent makes an appearance and defends its conduct, the complainant has to do more than complain about similarity even if it is confusing.

To bolster its contention, the Complainants offered proof that the Respondent copied material from its website on two occasions and “backdated” them to make it appear that they were printed on “the date of the relevant event.” The Panel found this unpersuasive because both “news items relate[ed] to events in the football community. It is to be expected that the Complainants and Respondent will sometimes (and indeed often) publish articles on the same topic.” Since “the Complainants did not bring any evidence that the Respondent had seen the corresponding stories on the Complainants’ website ... [t]he Panel accept[ed] the Respondent’s evidence that it obtained the information for its articles from press releases and syndication services which reported the stories.” The analysis pointedly emphasizes the importance of closing the circle; for when it remains open the inference is that there is no evidence to disprove the respondent’s submission.

However, the Respondent's legitimate interest in Around The Rings turns on its proof that it was engaged in a publishing business servicing the same market which was ongoing “before notice of the dispute” [paragraph 4(c)(i) of the Policy]. Moreover, it held a registered logo trademark for INSIDE WORLD FOOTBALL and held other domain names “intended as an expansion of its ‘inside’ brand.” The Complainants failed to offer any countervailing evidence to establish “that the Respondent selected the disputed domain names to trade off the Complainants’ reputation.” In fact, it offered no evidence of its reputation and, although the parties inhabited the same niche, there was no evidence that the Respondent was aware of the Complainant.

April 20, 2010

Right to Regain Domain Name Earlier Registered than Trademark Not Dependent on Respondent’s Use, Non-Use or Underutilization Of It

Unless a complainant has a trademark right with priority over the respondent’s choice there is no principle of law that allows it to acquire a domain name by forfeiture. This does not mean that a respondent’s earlier registration necessarily defeats a prima facie case, but a complainant’s argument that it has a superior right because it has a trademark and the respondent does not, PPTP.NET, LLC v. Hoa But, FA1002001310141 (Nat. Arb. Forum April 12, 2010), or that the respondent either uses in bad faith, underutilizes (in the complainant’s opinion), keeps its domain name inactive or refuses to respond to complainant’s correspondent is based on a false premise, Success Bank v. ZootGraphics c/o Ira Zoot, FA0904001259918 (Nat. Arb. Forum June 29, 2009). The superior right of a holder refers to its exclusive use of its trademark in commerce rather than to a corresponding domain name. In that respect only the holder has superiority because it has priority, not the other way around, and this superiority looks forward from the holder’s acquisition of its trademark, not backward to encompass another's right. To rule otherwise would introduce a new rule of law favoring holders of later acquired trademarks.

In attempting to establish a better claim or a superior right to the domain name the Complainant in NETtime Solutions LLC v. NetTime Inc. c/o Chad Wagner, FA0810001230152 (Nat. Arb. Forum December 19, 2008) for example 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.” However, even if a complainant is successful in proving that the respondent lacks rights or legitimate interests in a domain name because of its use the respondent’s registration prior to the complainant acquiring a trademark right is a barrier to proving bad faith. The law is that 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 PPTP.NET, LLC the Complainant argues that the Respondent “has not established any corporation, trademark or service mark pertaining to or referencing the domain name [<pptp.com>].” Neither has it responded to “multiple attempts at communication regarding the domain name.” From these facts the Complainant infers that the “current domain holder ... has acted in bad faith by ... renewing the domain name registration ... despite not having a website present(sic) at all.” The Complainant is represented, although whether the person is a lawyer is not indicated. Lawyer or not, none of these arguments has any merit. A respondent whose registration of the disputed domain name predates the complainant’s trademark has no obligation to respond to a complainant, although failing to respond is a factor in considering a finding of reverse domain name hijacking, and does not need to have a corporate form or trademark to register and renew a registration.

Even if the Complainant in PPTP.NET had a trademark, which it was unable to prove, and for which reason alone it failed to state a claim, it could not have succeeded in removing the domain name from the Respondent because the right it claimed for itself commenced 13 years after the registration of the domain name. Similarly, in Mariposa Ltd. v. Stonecutter, Don Sawtelle, D2010-0200 (WIPO March 28, 2010): “While Complainant may consider that it has a 'better claim' to the term 'Mariposa' than Respondent, that is not sufficient to establish abusive domain name registration and use” (Domain name registered in 1995; trademark registered 2008).

April 19, 2010

The Policy Offers Relief for Abusive Registration of a Domain Name Not Infringement of Trademark

We have to remember that the UDRP is a proceeding of limited scope. The respondent has agreed to submit to arbitration only the issue of abusive registration. The Panel is not empowered to rule on trademark infringement, although infringement of the right secured by trademark is certainly the basis for a ruling in favor of the complainant. “Infringement” refers to the complainant’s right to exclude others from using the trademark in a domain name to gain an advantage at the complainant’s expense. The word “infringe” appears twice in the Policy at paragraph 2 and multiple times in the WIPO Final Report.

Paragraph 2 of the Policy is a representation by the respondent that “b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;” the concluding sentence of the paragraph reads that it is the registrant’s “responsibility to determine whether [its] domain name registration infringes or violates someone else's rights.” However, the WIPO Final Report states that this “is not an unqualified representation that a domain name registration does not infringe the intellectual property rights of others. It is a representation that the registration does not, to the best of the applicant’s knowledge and belief, infringe the intellectual property rights of others.” The requirement is due diligence at a reduced level of investigation.

Keeping these thoughts in mind, a trademark is one thing and not another; it is only what the holder claims on its registration or the symbol by which it is recognized. It is not a truncated (reduced to initials) or design version of the trademark, unless they too are found to be unregistered trademarks in their own right. The initials “LV” could stand for Louis Vuitton, as the Complainant alleges in Louis Vuitton Malletier S.A. v. Demand Domains, Inc., FA1003001310816 (Nat. Arb. Forum April 14, 2010), but to the Respondent it could be the ISO country code for Latvia; or, as it was found in an earlier case by the same Complainant it could be Las Vegas, Louis Vuitton Malletier S.A. v. Manifest Information Services c/o Manifest Hostmaster, FA0609000796276 (Nat. Arb. Forum November 7, 2006) (<lv.com>). There are multiple registrations for LV on the Principal Register. The Complainant’s registrations (of which there are many in different classes) consist of a design of the letters with the “L” sitting atop the “V”. The Complainant does not as such have a trademark for the two letters side by side as do a number of other registrants.

The incorporation of “lv” to form the domain name <lvmobile.com> may in fact be a trademark infringement, but not an abusive registration because “the combination [lv and mobile] does not clearly and obviously associate to the Complainant.” Whatever the truth may be “an Internet user seeing the domain name <lvmobile.com> is more likely to expect to find information on Latvian mobile phones on the connecting site, than the fashion goods / luxury accessories of the Complainant.” While

adding generic terms associated with a certain trademark will add to the risk of confusion ... [a]dding a generic term that associate[s] with specific goods or services completely non-related to the trademark, and specially when such trademark is not unique but having different generic meanings apart from being someone’s registered mark, may on the other hand reduce the risk of confusion.

It is not that the Complainant’s iterated “lv”design on its fashion products is not instantly recognizable to the public, the problem is that it has no plain LV registered in the Class that includes mobile phones. This does not foreclose an action for trademark infringement, however.

April 16, 2010

Recapturing a Lapsed Domain Name

Domain names are not literally owned. Rather, they are held for a length of time pursuant to a registration agreement that must periodically be renewed. The better analogy is to a valuable leasehold interest with an option to renew that can be lost if the registration is allowed to lapse. Trademark holders incorporating their trademarks in domain names have a greater degree of security because trademarks are property in the full sense of the term and inadvertent lapse in renewing a registration does not affect intellectual property rights. Unregistered trademark rights are not less protected in theory but in practice it depends on their classification. Where persons have earned their trademark rights as athletes, musicians, entertainers and writers their surnames are not merely generic or descriptive, but reach higher on the scale and deserve greater protection. The Complainant in Barbara Kingsolver v. Kingsolver Computer Solutions, FA1003001313077 (Nat. Arb. Forum April 13, 2010) owns an unregistered trademark in her surname as a best selling author. Her agent inadvertently allowed <kingsolver.com> to lapse.

Panels have taken one of three positions when the complainant fails inadvertently to renew its domain name: 1) favoring the fanciful and arbitrary and perhaps the suggestive; 2) disfavoring the generic and descriptive; and 3) rejecting excuses altogether. Offsetting the principle that “[n]ormally those who sleep on their rights do so at their peril” is another, that “the law generally incorporates various safeguards to avoid undue forfeitures and unjust enrichments.” Official Pillowtex, LLC v. Smadar Zangi, FA0411000366168 (Nat. Arb. Forum January 6, 2005). These equity principles can be employed where

(1) little if any investigation has been done into the history of the domain name; (2) very little time passed between lapse and the new registration; and (3) the Respondent presents goods or services on its website that are directly related, identical or confusingly similar to Complainant's goods or services, the characterization of Respondent's behavior weighs against mere business savvy and instead reflects bad faith.

Surname trademarks have an elevated distinction. Kingsolver may not be “famous” but she is a best-selling novelist in the English language. Registering as a domain name a surname from a different cultural community without investigation and directing the website to an English speaking audience that includes references to the complainant constitutes wilful blindness of the complainant’s rights. The Respondent in Kinsolver offered the following defenses

1. The domain name was purchased from a Hong Kong Company trading in domains for $1,888 U.S.
2. Respondent has never heard of Complainant.
3. The page to which the domain resolves was authored by Respondent’s predecessor.
4. Ms. Kingsolver is not famous.

The fact that a respondent purchased the domain name at an auction or from a third party who registered after the lapse and passed it along with populated content to the next purchaser is not a defense. It is “the responsibility of domain name bidders and registrants to determine whether and how they may be entitled to use the domain names,” Intagent LLC v. Dominor LLC, D2008-1878 (WIPO January 29, 2009) (<intagent.net>). The second and fourth points are worth attention because of the geographical and cultural distance between the parties. If it is true that the Respondent in Kingsolver has no knowledge of the Complainant – the cultural divide being so great it may be expected that he does not – Why should he be charged with bad faith registration, in effect wilful blindness? The reason, is that the Respondent has chosen to employ the domain name to capture traffic in Kingsolver’s cultural community and not in its own, from which in using the domain name in bad faith (as evidenced from the content of the website) the Panel drew the inference that it also registered the domain name in bad faith for its trademark value. See, also Budget Rent A Car System, Inc v. Admin, Domain, D2010-0149 (March 31, 2010), Canadian Complainant; Chinese Respondent, in which the Panel concluded that the Respondent must have known, but the more logical inference is that the domain name was registered for its trademark value since it continued to address the English speaking market for rental cars in Australia and elsewhere around the world including Canada.

April 15, 2010

Demonstrating that Term Bracketed in Domain Name is Complainant’s Trademark

Domain names composed of a number of words that may include one identical to a trademark is not ipso facto confusingly similar to it. Low though the bar is, the complainant has still to prove confusing similarity where the domain name builds on a term and the composite plausibly attracts Internet users looking for a website unrelated to the complainant. This point is brought into focus in Doctor’s Associates Inc. v. Atomix, D2010-0060 (WIPO April 6, 2000) involving <mysubwayrewards.com>. The Complainant is the trademark holder of SUBWAY. It has no trademark for “My Subway Rewards” or “Subway Rewards.” A “trademark owner does not necessarily ‘own’ all combinations of marks using its principal word,” Scholastic Inc. v. ScholasticAdvising.com and Ramit Sethi, D2001-0946 (WIPO November 4, 2001) (<scholasticadvising.com>).

Representation by counsel is no assurance that a submission satisfies a party’s burden of proof. In Doctor’s Associates counsel evidently assumed that no more was necessary than to point out inclusion of the trademark in the domain name. The moral of the story is that a complainant has at the least to make a showing that the accompanying word(s) notwithstanding the composite is confusingly similar to its trademark. However, where the shared term “is bracketed between other words which could quite conceivably be used in combination to convey a meaning unassociated with the SUBWAY mark per se,” Id, “it is insufficient simply to demonstrate rights in a word that forms a part of a domain name.”

There is a distinction to be made between those compositions of words in which “the distinctive nature of a trademark [that is] wholly subsumed within a domain name nevertheless makes the domain name, confusingly similar to the mark under the Policy” and those that create a separate identity. It does not “inevitably follow[] from the fact that a domain name incorporates a trademark in its entirety that a domain name must be confusingly similar to that mark,” citing Research in Motion Limited v. One Star Global LLC, D2009-0227 (WIPO April 9, 2009), in which the panel observed that “[e]ach case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”

Where it cannot be said with certitude that the comparison of the domain name and the trademark yields confusing similarity then the complainant must do more than assume that its market penetration is sufficient. The domain name in Research in Motion is an excellent example of certitude. There is no ambiguity that in registering <unofficialblackberrystore.com> the Respondent was targeting the Complainant’s trademark. The word “blackberry” is used in its trademark sense; not in its generic, as a fruit. Because that is not clear with <mysubmarinerewards.com> the Complainant has to show how in this specific case the bracketed words are aligned in the public’s mind with the trademark. In rejecting confusing similarity, the Panel is drawing fine (and some may say very fine) distinctions. Both BLACKBERRY and SUBMARINE are well known trademarks, but the bracketed words in the former give prominence to the trademark, which is not the case in the latter.

April 14, 2010

Enforcing Trademark Rights of Word Alleged to be Generic

In the 1950s Dr. Alfred Tomatis, a French ear, nose and throat specialist developed a psycho-therapeutic method that is known as the “Tomatis Method”. In 1979 he obtained a trademark on the name TOMATIS which he assigned to Tomatis International SA (TISA). After his death in 2001 TISA encountered financial difficulties and the trademark was sold by a trustee in bankruptcy to Tomatis Developpement SA, the Complainant in Tomatis Developpement SA v. Mozart-Brain-Lab, D2009-1790 (WIPO March 31, 2010). The Complainant manages public and private Tomatis centers in several countries. The Respondent’s Chairman who was trained by Dr. Tomatis and as an acolyte had a close professional relationship with him performs “research on the Tomatis method and has published scientific articles in the Journal of Neurotherapy.” The Respondent itself operates a Tomatis museum and organizes Tomatis training. It states that it uses the domain name <tomatis.com> to communicate “general facts about the Tomatis method, its origins and field of application.” As the Panel notes “[t]he circumstances of this case are unusual” in that the Respondent does not fit into “the usual template for a cybersquatter wanting to cash in on trademarks or to tarnish or dilute them.”

Nevertheless, the Complainant has a trademark and the Respondent is using it without permission. Either the Respondent has an affirmative defense under paragraph 4(c)(iii) of the Policy or the registration and use of the domain name is in bad faith. The contents of the website (although downplayed by the Respondent) indicates that the “Respondent is deriving an indirect benefit … in that is one of many purveyors of the Tomatis method.” Respondent’s Chairman stated in a declaration that he believed that “Tomatis” was a generic term. “However, a subjective belief does not excuse the fact that, in order to demonstrate good faith the Respondent should not have taken the transfer of the disputed domain name [from a prior registrant whose license it knew had been terminated] when it must surely have known of the Complainant’s trademark rights.”

The Respondent’s alternative point is frivolous, but worth noting because it emphasizes the sequence that must be followed when a claim is made that a trademark has become generic. The Respondent asserted that the “Complainant has to prove that the term is not descriptive.” This is manifestly without merit; in fact, reverses the parties’ burdens of proof. Once “the USPTO has made a determination that a mark is registrable, by so issuing a registration, as was the case here, an ICANN panel is not empowered to nor should it disturb that determination,” U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum December 9, 2003). Where the complainant has registered the trademark with “the United States Patent and Trademark Office (or a comparable foreign trademark office)”, the respondent has the burden of rebutting the presumption of validity, Town of Easton Connecticut v. Lightning PC Inc., FA0808001220202 (Nat. Arb. Forum October 12, 2008).

However, the essence of the argument that “Tomatis” has become generic for a therapeutic method and should be cancelled is not without merit if pursued in the right forum. In Pilates, Inc. v. Current Concepts Inc., et al., 120. F.Supp.2d 286 (S.D.N.Y. 2000) (which the Respondent cites and the Panel comments on) the Court “cancelled the United States ... trademark for the name ‘Pilates’ because it was a generic term used by consumers to identify a particular method of exercising.” In the Respondent’s opinion, the “same principle applies to the word ‘Tomatis’ … [because the] intent of Dr. Tomatis was to promote his therapy in order to help as many people as possible.” But in Tomatis “[t]here are no court proceedings in contemplation” and absent a judgment cancelling the trademark, the “facts in this case are not such that the Panel should decline to order transfer of the disputed domain name.”

April 13, 2010

Addition of a Dictionary Word to a Dictionary Word Trademark

It is not surprising that holders of trademarks on the lower end of the classification scale insist that their compositions are suggestive; something more than merely generic or descriptive which may be denied registration. They want to push their symbols up the scale; to claim for them more than their worth; to give them added value. They do this protectively, of course, because, after all, as dictionary words their trademarks are also common currency, available for use by others without permission for commercial purposes having nothing to do with the trademark holder. Marriott International Inc. and Marriott Worldwide Corporation v. Avalon Resorts Pvt. Ltd., D2010-0172 (WIPO March 22, 2010) (COURTYARD and <Avalon-courtyard.com>). The prefatory comment holds true unless there is evidence to support the conclusion that the respondent chose the disputed domain name for its association with and intending to exploit the complainant’s trademark, as in Oneworld Alliance v. Thomas Ruane, D2010-0043 (WIPO March 11, 2010) (ONEWORLD EXPLORER and <oneworldexplorer.com>).

The Complainant in Marriott International argued that “[t]he addition of a dictionary term to a trademark does not make the disputed domain name substantially different to the mark.” This is true as a general proposition, and sufficient for jurisdiction, but combining dictionary terms does not foreclose rights or legitimate interests in a domain name and is not a per se violation of the holder’s trademark rights. “Courtyard” is not removed from the public domain because it may be distinctive when applied to hotel accommodations, but that does not prevent the mark from having “any number of associations not connected with the Complainant.” A domain name comprised of a common dictionary term violates a trademark holder’s rights if the protected term alone or in combination is used in such a manner as to suggest an association reserved to the holder, but it cannot preclude other uses that create different associations.

Although there is only one COURTYARD there are many “courtyards.” The Respondent operates 52 luxury services apartments in New Delhi” under the name “Avalon Courtyard – Residences & Suites”. “Courtyard” associated with “Avalon” is not “Courtyard” associated with Marriott operated hotels. A “party seeking to establish exclusive rights carries a heavy burden of proof for removing the term from the public domain,” Lodging Kit Company Inc. v. Natalie Soffer, FA0909001283398 (Nat. Arb. Forum November 5, 2009) (the Complainant was unable to persuade the USPTO that the term LODGING KIT was anything other than “merely descriptive’ and had to settle for the Supplemental Register).

Where Marriott’s “Courtyard” aspires to the suggestive Avalon’s is purely generic. Courtyard is defined as “an unroofed area that is completely or mostly enclosed by the walls of the large building” which Respondent stated is “descriptive of its properties.” In any event, the Respondent owned the name “Avalon” and conducted a legitimate business which supported its defense under paragraph 4(c)(i) of the Policy. Rather than close the proceedings at this point, the Panel continued its analysis into the bad faith element to reject two other contentions as being without merit. First, the Complainant alleged that the Respondent was taking “unfair advantage” of its “rights in some way” (emphasis added); second, that the domain name was being held passively to redirect the Internet user to another website (<avalonhospitality.com).

The argument that “it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain featuring the Complainant’s COURTYARD mark” is dangerous because it invites the Respondent to establish its credentials. Where a respondent offers evidence legitimizing use of a word which another uses as a trademark it is “possible to conceive a plausible circumstance” different from that imagined by a complainant. The second argument is equally unpersuasive in “the circumstances of this case [because] ... the disputed domain name … cannot be properly characterized as being ‘inactive’ merely because it reverted to another web address.” In Marriott International the Respondent's domain name reverted to its home website.

April 12, 2010

Declaring Complaint Filed in Bad Faith

Panelists hold divergent views on several legal principles as they apply to domain names and for this reason to whom the Provider assigns the matter can be determinative to the outcome of the proceedings. This is abundantly clear in the line of cases discussed in recent Notes that support the view that bad faith registration can be found retroactively despite evidence to the contrary. The theory is that a respondent has a continuing obligation under paragraph 2 of the Policy not to “infringe upon or otherwise violate the rights of any third party.” This synchronic approach to the interpretation of text flattens history by making the past a part of a continuing present. However, the UDRP expressly separates the past from the present. On this divergence of views the difference is serious because it can result in the respondent forfeiting the domain name.

There is also divergence among panelists when it comes to ruling on a complainant’s bad faith in filing a complaint which is authorized by the UDRP. It is less serious because it does not affect the respondent’s right to the domain name, yet by refusing to grant the declaration it withholds a remedy to which a respondent is entitled. It is true that the respondent has the burden of proof, but there are panelists who refuse to stain the complainant despite the Policy requirements under any circumstances. The Panel's rejection in Mosaic International, LLC v. PZ -- No Auction, FA1002001307578 (Nat. Arb. Forum April 7, 2010) fails to provide any reasoned decision under factual circumstances that warrant it.

Some panelists in this school excuse themselves by expressing the belief that the declaration of bad faith is discretionary. There is no support for this in the Policy. As applied to a Panel the word “discretion” appears in two ICANN rules: it has discretion to 1) request further statements or documents (Rule 12) and 2) decide whether to suspend or terminate the administrative hearing (Rule 18). “Discretion” does not appear in connection with the provision that addresses a complainant’s bad faith. Rather, Rule 15(e) uses “shall” in granting the remedy in favor of the respondent. In law “shall” is understood to be a command:

[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.

Rule 1 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 facts in Mosaic are not on the border. The Respondent registered the domain name in 1995; the Complainant first made use of the term MIA in 2004. The fact that the Respondent offered to sell the domain name “for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name” is irrelevant in a diachronic construction of the Policy because for her the domain name is an asset. To exponents of a synchronic construction who see the past as the beginning of the present rather than its own period, the advertised offer to sell the domain name may fall afoul of the continuing obligation under paragraph 2 and expose her to a finding of retroactive bad faith. Perhaps the Mosaic Panel refused to file a declaration against the Complainant not because he was lazy (as one commentator noted) but because he secretly admires the synchronic construction of the Policy while uncomfortable in applying it.

If this is the case, then the Respondent was fortunate. Imagine if the National Arbitration Forum had assigned a supporter of synchronism. He (or she) would have found the Respondent guilty as charged even though the act of registration had occurred 9 years before the Complainant first commenced using the term in the marketplace. In that case the Panel did the Respondent a good turn by finding in her favor and she should not complain. After all, the Complainant did demonstrate rights in the present and since the present includes the past its rights must be deemed retroactive even before it had an existence. In this light, should the Panel not rather be praised than blamed for not declaring the Complainant in bad faith?

April 9, 2010

Domain Names Visually and Phonetically Similar to Trademarks

Orthographic variations such as adding, omitting and transposing letters suggest that the respondent’s motivation for registering a disputed domain name was to capitalize on the pre-existing goodwill associated with the complainant’s trademark. This was implicitly admitted by the Respondent in two early cases, Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, D2000-0578 (WIPO August 28, 2000) and Eddie Bauer, Inc. v. John Zuccarini aka Cupcake Party, D2001-0224 (WIPO April 26, 2001). Although this multiple named Respondent rarely made an appearance he answered these two cases with the provocative assertion that he had as much right to register typosquatted domain names “as the person who owns the correct spelling of domain name” on the theory that they were distinguishable from the trademarks. This view of the parties’ respective rights and other arguments invoking the U.S. Constitution failed to ignite the Panel or to catch hold generally and in close to a 100 cases against the same Respondent the domain names were transferred.

Because typosquatting is “inherently parasitic and of itself evidence of bad faith,” Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO January 21, 2003) it is more usual for respondents to default than appear. So it was in Academy, Ltd., d/b/a Academy Sports & Outdoors v. Roiquest.com sprl c/o Domain Administrator, FA1002001306758 (Nat. Arb. Forum March 26, 2010) involving the domain name <acadamy.org>. Challenged Internet users may be surprised that this spelling is incorrect. More surprising is that the parties are geographically distant from each other and that the term “academy” (correctly spelled) alone or with other words appears in over a thousand active trademarks registered by or pending with the USPTO. The Panel found that the Respondent’s website included links to goods “in direct competition with Complainant’s business.” Presumably, the website also contained other links of a different kind having no relation to the Complainant.

A domain name comprised of a variation of a dictionary word, however, is different from a trademark well known in the marketplace, as were Zuccarini’s targets. In those cases, there was no issue as to the targets. On the other hand, with misspelled dictionary words any one of many trademark holders can step forward and prevail if somewhere on the offending website or by a search function it can find a link to competitive goods or services. In this event the first to sue can claim bad faith even if it was not the one who the respondent was actually targeting. It would seem that the whole point of having a misspelled domain name confusingly similar to a generic or descriptive trademark is to capture the widest possible audience without thought of any one of the dozens of trademark holders who could claim to be targeted.

April 8, 2010

Conducting a Business in the Same Industry Sector

Passage of time can support a respondent’s defense of legitimate interest if “before any notice” it used “the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services,” paragraph 4(c)(i) of the Policy. In the case of DirecTV, Inc. v. Pimenov Pavel, FA0911001296479 (Nat. Arb. Forum February 19, 2010) the Respondent registered <directTV.com> in 1999 and operated the disputed domain name for many years before notice of the dispute. However, “not all use prior to notice of the dispute can qualify as bona fide use,” World Wrestling Federation Entertainment, Inc. v. Rift, D2000-1499 (WIPO December 29, 2000). The website in DirecTV offers services similar to those provided by the Complainant and this raises a question as to whether the Respondent’s offering is bona fide.

Whether the operation of a business is bona fide depends upon a number of factors: its history, either of operation or in preparation for it, the contents of its website and the respondent’s explanations for having a domain name confusingly similar to another’s trademark. A bona fide business operation presupposes that the respondent is using the disputed domain name to market goods or services unrelated to those offered by the complainant. In this respect, a business with a history is more likely to be bona fide than one without, but if the respondent is a direct competitor its registration of the disputed domain name falls afoul of paragraph 4(b)(iii) of the Policy. The defense has been construed to exclude competitors, but can be effective for parties that incorporate a complainant’s trademark under the four-part test formulated by the Panel in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).

The term “legitimate interest” in paragraphs 4(a)(ii) and 4(c) of the Policy refers to the respondent’s entitlement to its choice of domain name, rather than the legality of its business. A business may be lawful, but its use of the domain name mala fides as, for example, Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, D2000-0878 (WIPO September 21, 2000) (<canonink.com>, <canoninkjet.net>:

Although the offering of replacement inkjet cartridges is a lawful and legitimate business, the use of these ... disputed domain names as the initial contact points and web page banners deprives that business of the character of being bona fide, within the meaning of paragraph 4(c)(i) of the Policy.

If legality of business were the standard, then “any cybersquatter that conducted a lawful business could always find refuge,” The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., D2005-1318 (WIPO February 22, 2006). The Respondent in Abu Dhabi Future Energy Company PJSC v. John Pepin, D2008-1560 (WIPO December 22, 2008) may very well have in mind a legitimate business for <masdarcity.com> and <masdarcity.net> but its registration of those domain names evidenced “exploitative intent.” On the other hand, “it would take an exceptional case to succeed where there was no malicious or exploitative intent directed at the complainant [or its trademark] at time of registration of the domain name,” Velcro Industries B. V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, D2008-0864 (WIPO July 28, 2008) (<velcroart.net>).

In DirecTV the Respondent’s “web site basically consists of a long list of links leading to websites of TV channels from over one hundred countries. According to the Response, Respondent has created a software program allowing recording content broadcasted by TV channels. This means that Respondent’s business is related to TV channels, which also happens to be Complainant’s line of business.” This and other proof offered by the Complainant led the Panel “to conclude that Respondent, who conducts a business in the same industry sector as Complainant, in all likelihood registered the domain name in dispute knowing about Complainant, its DIRECTV marks, products and services.”

April 7, 2010

Competitor’s Use of Similar Terms for Domain Name a Basis for Jurisdiction but Not a Basis for Forfeiture

Choosing a trademark composed of generic or descriptive elements has the virtue of being easily remembered but the disadvantage of being easily varied by a competitor interested in reaching the same public. When it comes to competitors, while there may be confusing similarity it is not necessarily consequential of bad faith. A competitor’s variation on a common theme is not condemned because it is confusingly similar to the complainant’s trademark. To state an actionable case involving terms on the lower end of the classification scale in the context of a party having a fair business interest, the domain name would have to be identical to the complainant’s trademark.

It follows that where the respondent is a true competitor (not simply using the domain name to offer competing goods or services) confusing similarity is only good for establishing jurisdiction. In USADATA, Inc. v. K2, Incorporated and US Data Corporation, FA1002001307329 (Nat. Arb. Forum April 1, 2010) the Complainant owned USADATA on the Supplemental Register. Ordinarily, registration on the Supplemental Register is not a sufficient basis for jurisdiction absent proof of distinctiveness. In this case the Complainant proved that the trademark had a sufficiently long presence in the marketplace to establish (at least for UDRP purposes) common law rights. In registering its domain names the Respondent omitted an “a” in forming <usdatacorporation> and <usdatawest.com>. Ordinarily, this would raise an issue of typosquatting, but in this case the implication is avoided because “US” and “data” are generic and descriptive.

The Respondent in USADATA frankly admitted that it registered and “is using the disputed domain names to COMPETE with Complainant and not to disrupt Complainant’s business.” The distinction between competing and disrupting may be overly subtle, but it is not unfair. The result would have been different if the Respondent were a domainer using the website to offer competing goods or services (a violation of paragraph 4(b)(iv) of the Policy), but as a true competitor it gains an advantage by being in the market prior to the initiation of the dispute (a defense under 4(c)(i) of the Policy). The Panel cites two cases to support this proposition from the first year of the UDRP, Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) in which the Respondent registered the domain name in connection with a fair business interest; and Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) in which the Respondent had an active website that had been in use for two years and where there was no intent to cause confusion with the complainant’s website and business. A more recent case discussed in the Note on January 25, 2010 is Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010) involving AUSTIN AREA BIRTHING CENTER in which the Respondent omitted “area” and the gerund from “birthing” to form <austinbirthcenter.com>.

The Policy distinguishes between a predator competitor and a competitor with a fair business interest. The former violates paragraph 4(b)(iii) of the Policy: “[Y]ou have registered the domain name primarily for the purpose of disrupting the business of a competitor.” It denotes an intentional act by a competitor who has “registered the domain name primarily” for that purpose. InfoSpace.com, Inc. v. Tenenbaum Ofer, D2000-0075 (WIPO April 27, 2000).

April 6, 2010

Use of Terms by a Multitude of Third Parties

For trademarks on the weaker end of the spectrum the complainant cannot simply rely on the respondent’s mode of business. Competitors are not deprived of their choices unless the evidence demonstrates adoption for a proscribed purpose. Although professional domainers may be held to a higher standard of investigation their choices do not “not automatically lead to the assumption that the disputed domain name was registered in bad faith.... At least some evidence supporting bad faith is required,” Novo Nordisk A/S v. Andrew Melcher, D2010-0095 (WIPO March 19, 2010). The higher standard applies in cases involving well-known trademarks or trademarks of businesses for which denial of knowledge suggests “willful blindness” – a concept formulated in V&S Vin & Sprit AB v. Ooar Supplies, D2004-0962 (WIPO December 27, 2004) which according to the Panel “is equivalent to intent under most jurisdictions.”

The higher standard of investigation for domainers was further developed in a trio of cases between 2005 and 2007. In Mobile Communication Service, D2005-1304 (WIPO February 26, 2006) the Panel held that “even a cursory search [by Respondent] on search engines like Yahoo! and Google would have shown that [“mobilecom”] is a trademark.” In Media General Communications, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO September 23, 2006) the Respondent failed to “indicate that it explored the possibility of third-party rights in any way before registering the Domain Name [<mcmh.com>] and offering it for sale.” Panels insist on some demonstration that the respondent has implemented appropriate safeguards against infringing a third party’s rights in its choice.

However, where a domain name identical or confusingly similar to a trademark is on the weaker end of the spectrum the respondent’s explanation will generally be assertive rather than defensive. By defensive I simply mean that the respondent’s counter positions are likely to be diversionary claims and denial of knowledge. Sometimes the diversionary claims have substance In the case of Novo Nordisk involving the term FLEXTOUCH the Respondent (who acquired the domain name in 2009 prior to the Complainant's trademark registration) pointed out that the word and variants of it such as “flexitouch” “is used by a multitude of third parties to describe various products.” This suggests that the word is so common that no claim can be made for distinctiveness.

It is not in many of these cases that the respondent’s choice is free of uncertainty. What is essential is that in marshaling its case the complainant has to understand the proof required to establish its contention. Lacking proof of intention undercuts bad faith. In Novo Nordisk the Panel added that the Complainant “did not provide any evidence that the Respondent registered the disputed domain name with knowledge of the Complainant’s right in the term.” It is not sufficient for the complainant to argue “He must have known....” without explaining “how exactly the Respondent should have known, in view of the Respondent’s claim that the term ... 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,” EURO DATA GmbH & Co. KG v. Excel Signs, D2009-0465 (WIPO May 5, 2009) (<eurodata.com>).

April 5, 2010

The Conjunctive Requirement of Bad Faith Enforced Regardless of Respondent's Subsequent Bad Faith Use, However Egregious

In at least one respect the UDRP is a friendlier forum for respondents than the Anticybersquatting Consumer Protection Act (ACPA). This comes about because the conjunctive requirement under UDRP requires the complainant to demonstrate that the respondent’s act of registering the disputed domain name was in bad faith regardless of its subsequent use. The ACPA requires either/or proof: if the registrant either “registers, traffics in, or uses a domain name” protected as a mark, 15 U.S.C. § 1125(d)(1)(A)(ii). The Panel in BioClin B.V v. MG USA, D2010-0046 (WIPO March 22, 2010) leaves no doubt of his view about the Respondent’s conduct, but was constrained by the terms and precedent of UDRP to rule in its favor. Conversely, a respondent’s success in a UDRP proceeding is no guarantee of its winning an ACPA action. Nike, Inc. v. Circle Group Internet, Inc. (N.D. Ill. May 21, 2004) which rejected the ICANN Panel’s reasoning in Nike, Inc. v. Circle Group Internet, Inc., D2002-0544 (WIPO September 10, 2002).

A number of panelists have had second thoughts on the construction of the UDRP that allows the respondent to (egregiously) use the domain name in bad faith. There are three branches of this new construction, respectively “retrospective bad faith”, “unified concept” and “judging respondent’s conduct at renewal of registration.” The Panel in BioClin is among those who reject all three variations in favor of the consensus that holds that proof of subsequent bad faith use does not vitiate good faith registration. The new construction detailing the consequences of bad faith use following good faith registration (dating from mid-2009) represents an attempt to give a remedy to complainants under circumstances in which the respondent is clearly taking advantage of their trademarks. However, the Panel’s view in BioClin is this was not the “intention of the framers of the Policy.” This does not mean, of course, that the Policy is set in stone. On many issues the jurisprudence has evolved to accommodate changing circumstances, but in this particular circumstance the language of conjunction disallows finding bad faith registration “then” for conduct “now.”

The Panel makes it clear in obiter dicta that the complainant's remedy against a respondent’s subsequent bad faith use of the disputed domain name must issue from a court of law:

So regardless of the fact that the Complainant did not have a United States trademark registration until fairly recently, it looks as if the Respondent has deliberately made its products look very much like the Complainant’s products. Why would any trader want to do that? The obvious answer is that he or she probably wanted to benefit from consumer confusion, and/or create the impression of an ongoing association with the owner of the copied get-up. In either case, the aim would likely have been to trade off that owner’s goodwill. Add the near-identity between the Domain Name and the Complainant’s mark, and the Complainant can hardly be blamed for taking the view that it had a strongly arguable case on the “bad faith use” issue.

The reason why the Panel in BioClin denied that complaint is that the Complainant failed to “provide any submissions or evidence directed to the question of bad faith registration as at February 23, 2002, and the Panel has found no basis on the present record for concluding that the Respondent was acting in bad faith vis a vis the Complainant and its mark at that time” (Emphasis added). If the complainant authorizes use of its trademark in a domain name without an agreement for its return upon termination of the right or license – see the Note for March 30th, “Continuing Legitimate Interest in Domain Name After Termination of Business Relationship” – then the issue is properly one for resolution (for parties subject to jurisdiction in the United States) under the Lanham Act.

April 1-2, 2010

Direct Competitors, Geographic Terms and the Issue of Bad Faith

Adding a geographic term to a famous trademark is not less infringing because the trademark also happens to be a dictionary word. The addition neither avoids confusing similarity nor in the case of famous trademarks a finding of abusive registration. The question is whether the domain name – confusingly similar though it may be to the trademark – is distinctive in its own right. The Respondent in Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany, D2004-1068 (WIPO April 18, 2005) for example, was unable to make such a case for adding geographic terms to “vogue” such as <newyorkvogue>; similarly, Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum March 27, 2007) adding “Cancun” to the trademark CHEAPTICKETS.

Some dictionary words are common in an industry and their concurrent use neither surprising nor necessarily indicative of bad faith. Nevertheless, where the respondent is a competitor, as it is in Interactive Data Corporation v. Maharaja Global c/o Tamal Das Gupta, FA1001001305447 (Nat. Arb. Forum March 29, 2010), it must explain its addition of a geographic location. Complainant is the trademark holder of ESIGNAL registered by the USPTO in 2001 and ESIGNAL PRO registered by the USPTO in 2006; the respondent registered the disputed domain name <esignalindia.com> in 2005. Although the Respondent provides a similar, although less expensive service than the Complainant it is nevertheless in competition with it. The service is legitimate but that does not legitimize the use of the domain name as a defense under paragraph 4(c)(i) of the Policy. Because the Respondent is not commonly known by the domain name and is exploiting the domain name for commercial gain it cannot prevail under paragraphs 4(c)(iii) and 4(c)(iii).

The question, then, comes down to the twin issues of reputation and timing. “The fact that both parties are competitors, while sufficient to establish Respondent’s lack of rights or legitimate interest in the domain name, does not show that Respondent has registered and used that domain name to disrupt the business of Complainant.... Complainant has not established that its ESIGNAL trademark is so well known that Respondent can be presumed to have been intended to trade on Complainant’s reputation and goodwill in registering and using the domain name in dispute.” The problem for complainants with trademarks composed of what are essentially colloquial or familiar expressions is that they are common currency. As such, the evidence of bad faith registration particularly where the use is consistent with the domain name cannot rest on speculation.

As the Panel emphasizes in Interactive Data “[l]ack of rights or legitimate interest under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii).” Mere assertion of bad faith is no more than a feather on the scale. The Respondent’s business is limited to the stock exchanges in India. It is not sufficient merely that parties are in competition in using an unsurprising expression as its Internet moniker for the services offered. The general rule is that without supporting facts or specific examples to supply a basis for drawing a conclusion the respondent cannot be deprived of its choice of domain name.

May 2010 NOTES , DATES ARE IN REVERSE ORDER

May 28, 2010

Unlikelihood of Recovering Long Lapsed Domain Name

Registration of a domain name inadvertently allowed to lapse is more likely to be recaptured if the complainant acts quickly, but not otherwise. A lengthy delay supports the concusion that the loss was intentional. Radio Italia S.p.A. v. Mdnh Inc, Brendhan Hight, D2010-0329 (WIPO May 14, 2010). The Complainant owned <radioitalia.com> until 2000. The domain name was acquired by a company that was itself acquired in 2005 by the parent corporation of the current Respondent. The business model of these acquiring companies is to “buy[] up expired domain names that have strong incoming links and traffic, and then sign[] up those domains as search affiliates.”

“Strong incoming links and traffic” suggests that the domain name may have been associated with a trademark. There is developing a body of law that holds that high volume registrants are held to a higher standard of investigation. It is particularly applicable to domain names identical or confusingly similar to trademarks well-known in the marketplace; less applicable to trademarks composed of generic terms and descriptive phases that can be exploited for their dictionary meanings or cultural associations. “Radio Italia” is not in the class of arbitrary or fanciful trademarks, but also it is “not totally descriptive and devoid of distinctive character.”

The earliest expression of this standard is set forth in Red Nacional De Los Ferrocarriles Espanoles v Ox90, D2001-0981 (WIPO November 21, 2001) (<renfe.com>). The Complainant is responsible for the commercial exploitation of much (if not all) of the Spanish railway system, which explained its traffic volume and should have triggered investigation. The Panel held that “where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, [that conduct] constitutes registration of that domain name in bad faith.”

In Red Nacional De Los Ferrocarriles Espanoles, however, the Complainant acted quickly to recover the domain name. This was also true of the Complainant in ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010) and also of the Complainant in Intagent LLC v. Dominor LLC, D2008-1878 (WIPO January 29, 2009) (“While it is understandable that Respondent considers it unfair that a domain name registrar may auction an expired domain name the use of which may be encumbered by trademark rights, such auction of expired names is consistent with the registration system adopted and implemented by ICANN. It is the responsibility of domain name bidders and registrants to determine whether and how they may be entitled to use the domain names.”)

In contrast, Radio Italia acted after 9 years only when it was unsuccessful in purchasing the domain name from the Respondent. It offered no explanation for its loss of the domain name for “reasons which the Complainant describes as a mistake.” Elapsed time is more likely to confirm abandonment of the domain name. Even if at the time of the Respondent’s acquisition “it had turned its mind specifically to this domain name ... it may well have concluded the Complainant was not interested in the disputed domain name any longer.” As far as the Respondent's use of the domain name, “it seems equally plausible ... that it may have been registered for its descriptive significance as for its trademark significance.”

May 27, 2010

Parties’ Disputes Outside Scope of the Policy

The line separating issues within from those outside the scope of the Policy is not always clear. Contract disputes relating to parties’ relationships are generally outside the scope, but facts can bring them within. For example, Arma Partners LLP v. Me, Victor Basta, D2009-0894 (WIPO August 26, 2009) involved the rights of a withdrawn partner to maintain ownership of the domain names. He had signed deeds transferring the intellectual property and domain names to the Complainant. Those deeds were made part of the record. “[S]ince by those agreements both the disputed domain names became beneficially owned by the Complainant and since the Complainant also became entitled to the ARMA PARTNERS name and trademark, the Respondent cannot claim rights to or legitimate interests in either of the disputed domain names.” This, despite the fact that the domain names had originally been registered by the Respondent in good faith. “It is ... clear from clause 18.9 of the LLP Deed ... that on resignation as a Member from the Complainant the Respondent was obligated to transfer all property to the Complainant. The disputed domain names were clearly business assets of the Complainant ... and, as such, were the Complainant’s property for the purpose of clause 18.9 of the LLP Deed.”

Contracts are also involved in Mitchell Madison Group v. Jim Quallen, FA1004001317575 (Nat. Arb. Forum May 21, 2010). But, in this case, the Panel dismissed the complaint on the grounds that the claim was outside the scope of the Policy. The parties had previously entered into an arbitration settlement agreement in connection with an employment dispute that provided that “any and all claims that were available at the time of arbitration would later be barred from legal proceedings.” The proof supported the Respondent’s contention that the Complainant had known about the disputed domain name prior to the settlement agreement and chose not to deal with it in the arbitration.

The Panel in Mitchell Madison cites Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) for the proposition that cases that “hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty” are outside the scope of the Policy. This generalization does not fit all sizes, however. It is not that the parties in Mitchell Madison “differ[ed] markedly with respect to the basic facts ... [or that] there is no clear and conclusive written evidence.” The facts were clarion, but the Complainant offered no evidence and had no explanation to rebut the arbitration settlement agreement.

In contrast to Arma Partners that established the Complainant’s beneficial ownership of the disputed domain names, the parties in Mitchell Madison had expressly ruled out further legal proceedings. In essence, the Complainant’s claim was barred by the doctrine of collateral estoppel. The Complainant had the opportunity to deal with the domain name issue and elected not to pursue it. The UDRP cannot be used to circumvent the parties’ agreement in either party’s favor.

May 26, 2010

Legitimacy of Fan Sites

Fan clubs generally come into existence without express permission and sometimes over the (frequently delayed) objection of the honoree to celebrate his or her life work and achievements. The WIPO Overview poses the following question: “Can a fan site constitute a right or legitimate interest in the disputed domain name?” (paragraph 2.5). There are two views, denominated View 1 (an active, noncommercial fan site may be a legitimate interest) and View 2 (a fan has no right or legitimate interest in a domain name that infringes a celebrity’s trademark). View 1 reads

An active and clearly non-commercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be non-commercial and clearly distinctive from any official site.

View 2 reads

Respondent does not have rights to express its view, even if positive, on an individual or entity by using a confusingly similar domain name, as the respondent is misrepresenting itself as being that individual or entity.

Even fanatics – “the flip side of critics” as one panelist noted – have a right to establish a fan site. However, the respondent has a heavy burden to establish that the site is pristine; devoted purely to the celebrity without any commercial aspirations. The Panel in Richard Dawkins v. J. Gabriel, FA1004001317157 (Nat. Arb. Forum May 21, 2010) held that the “mixture of links negates the argument of ‘fair use’.” This standard also applies to criticism sites. In neither case can the respondent argue lack of knowledge of the target or celebrity. The sole issue is whether the respondent meets the elements set forth in paragraph 4(c)(iii) of the Policy.

The tolerance expressed in View 1 is defeated if the alleged fan site is neither genuine nor active. In Freddy Adu v. Frank Fushille, D2004-0682 (WIPO October 27, 2004) in which the Panel found that Respondent attempted to cash in on athlete’s success in the guise of a fan club. In Stevland Morris a/k/a Stevie Wonder v. Enrique Matta, FA0805001189962 (Nat. Arb. Forum July 9, 2008) the Panel stated that “[a]lthough the disputed domain name may be non-commercial, it has never acted as a fan site and it therefore fails the second of the requirements for legitimacy set by the WIPO Overview.” Similarly with the domain name registered by the Respondent in Eddy Merckx Rijwielen Cycles NV vs. Irfan Khalil, D2009-0074 (WIPO March 12, 2009)(eddymerckx.com). It is not a defense that the Respondent “has not had the time and the money to create the website but that it is still in the planning process.” Worse yet, the “factual circumstances in this matter are that the website attached to the Disputed Domain Name points to a parking site which largely ... offer[s] goods and services that compete with those of the Complainant.”

The term “commercial gain” is construed broadly against the respondent even where the celebrity may receive some incidental benefit of publicity. The website must also be limited to the celebrity honored and not used “to promote other celebrities and, predominantly, advertising of third-party products,” Tom Cruise v. Network Operations Center / Alberta Hot Rods, D2006-0560 (WIPO July 5, 2006) (<tomcruise.com>). The “fan” in Richard Dawkins argued that his honoree “was ill-known or little known, particularly in the U.S. in 1999, when the Respondent established the domain name.” Although a complainant’s reputation at time of domain name acquisition is an important element, it is not decisive; particularly not decisive in the case of writers, musicians, television personalities, athletes (Freddie Adu), etc. whose reputations grow in time.

This is not to say that a domain name dedicated to the achievements of a writer such as Dawkins should be taken from the fan and awarded to the honoree if the contents demonstrate the respondent's good faith intent, Swissbike Vertriebs GmbH v. Executive Standard Limited, D2008-0498 (WIPO June 19, 2008) (<raleighbikes.com>) in which the Complainant offered no evidence to rebut the Respondent’s contention that the website is a non-commercial forum targeting fans of Raleigh bikes. The Panel members in Dawkins are subscribers to View 2, the intolerant position.

May 25, 2010

The Confusion of Attracting Internet Traffic Through Deception

The twin bete noires of the market are confusion and deception, which (as one legal mechanism) the UDRP is designed to combat. Domain names are invitations; they either identify the person behind the door or announce the subject or business therein promoted. In the case of trademarks, their reputations precede them. Business thrives on volume. The Respondent in yesterday’s Note [Cisco Technology, Inc. v. Nicholas Strecha, E-Careers LTD, D2010-0391 (WIPO May 7, 2010)] offered IT Training to help students understand and use Cisco technologies, but it registered a domain name that except for the addition of “uk” was identical to the Complainant's trademark. Geographic additions to the dominant word of the trademark do not create a distinctive mark. Bad faith in that case was predicated on the Respondent using a trademark as its barker to compete with the Complainant for students in the primary market.

In Rockwell Automation, Inc. v. Jose Hernandez, FA1004001316859 (Nat. Arb. Forum May 20, 2010) the Respondent added “products” to the Complainant’s trademark, ALLEN BRADLEY to aggregate offers to sell Complainant’s products. Respondent is a member of the eBay Partner Network. The Complainant, formerly known as the “Allen-Bradley Corporation,” manufactures factory automation equipment under its trademark. “At his website [<allenbradleyproducts.com>] the Respondent displays auctions for products that are not genuine Allen-Bradley products.” In “some cases the text regarding the specific auction on eBay states that the product being sold is manufactured or produced by another vendor, but this information only becomes available to the Internet user after clicking through to <ebay.com> from Respondent’s website.”

Cybersquatters are “people who register domain names knowing them to be the trade marks of others and with the intention of causing damage or disruption to the trade mark owners and/or unfairly exploiting the trade marks to their own advantage,” Tomatis Developpement SA v. Jan Gerritsen, D2006-0708 (WIPO August 1, 2006). In Cisco Technology the Respondent’s business is genuine, but its appropriation of the Complainant’s trademark on its door to promote itself on the Internet is intended to deceive the public in a typical bait and switch ploy. It offers courses designed and given by itself not the trademark holder. In Rockwell Automation the Respondent has no business. Its website is designed for the sole purpose of attracting and redirecting Internet traffic to e-bay to collect pay-per-click partner fees.

Every respondent challenged on its registration wants to associate its offering with a brand without leaving the impression that the domain name will lead to the official website of the trademark owner or is sponsored by it. Disclaiming association with the complainant while using the complainant’s trademark to attract traffic is a double dose of duplicity. First, the respondent pretends to be who is isn’t; then it pretends that its use of the complainant’s trademark was not intended to convey the impression of an association with the complainant.

May 24, 2010

Silences in Determining Legitimacy In Registering and Using Domain Names

Silence with knowledge that a respondent has incorporated a trademark in its domain name can support legitimacy if the respondent has brought itself within the safe harbor of paragraph 4(c)(i) of the Policy. However, mere delay in prosecuting a claim for infringement – silence without intention to give approval – is not a defense. Equity theories are not formally recognized as UDRP defenses but failure to protect a right through contract (or laxness in one's communications) and tardiness in acting on information have consequences for legitimacy. Another kind of silence (this time unintentional) is at the core of Cisco Technology, Inc. v. Nicholas Strecha, E-Careers LTD, D2010-0391 (WIPO May 7, 2010). The Respondent registered <ciscouk.com> in 2005 and based its legitimacy on the Complainant’s acquiescence. The Respondent offered documentary proof that it had given notice of its registration to the Complainant’s attorneys who inadvertently had not passed the information to their client. Acquiescence, however, connotes knowledge; a knowing waiver.

It is possible for a legitimate interest to come into existence without complainant’s approval – offering goods or services on the secondary market, Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001) – or with silent approval which is sometimes ambiguous and can be read as acquiescence in respondent’s use of a disputed domain name. A number of early cases revolved on complainants’ failure to protect themselves by contract. It is difficult, for example, to find “a violation of the Policy when there is no specific prohibition on a dealer’s registration of domain names incorporating the mark of the products it is allowed to sell,” Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, D2002-0936 (WIPO December 16, 2002):

To a significant degree, Complainant's own actions created the circumstances in which Respondent could reasonably conclude that her conduct was permitted. Thus, I conclude within the circumstances of this record that Complainant has not met its burden of proving that Respondent registered the domain name in bad faith.

In Urbani Tartufi s.n.c. v. Urbani U.S.A., D2003-0090 (WIPO April 7, 2003) (<urbani.com>) the Respondent registered the domain name “with the evident consent of Complainant at a time when Complainant and Respondent were in a business relationship.” On the other hand, termination of right or for cause, terminates whatever right the respondent may have had for continued use of the domain name.

The question in Cisco Technology is whether notice to an agent prejudices the rights of its client. “After Respondent raised the question of earlier knowledge in its Response, Complainant submitted its unsolicited Reply, attaching a declaration of Complainant’s trademark law firm” in which trademark counsel “conceded that Respondent’s use of the domain name surfaced in 2005 correspondence over other unauthorized use of Complainant’s marks, between Respondent and Complainant’s trademark firm. However, “[d]ue to an inadvertent filing error by the law firm, counsel declares, Complainant was never alerted to the use of the domain name.”

The Respondent in Cisco Technology is in the business of training students in the use of various computer platforms including applications produced by the Complainant. There are cases in which respondents have brought themselves within the Oki Data safe harbor as consultants. In SAP AG v. UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (<unisap.com>) the Respondent offers consulting services for the software products sold by the Complainant. In Cisco Technology the Respondent is not a reseller, distributor or consultant. Instead, it competes in the primary market to enroll students for IT training. “These are pivotal facts that defeat Respondent’s claim to a legitimate interest and render the authority cited by Respondent inapplicable.”

May 21, 2010

Trademark Validity Not an Issue in UDRP Proceeding

Parties should be reminded that the UDRP is not a trademark court even though it adjudicates rights to trademark infringing domain names. The limited jurisdiction of the UDRP does not authorize the Panel to determine the issue of a trademark’s validity, so that when an allegation of invalidity is presented as a defense (as it is from time to time) Panels must work with what they have. What the Panel had in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Lucan Toh and Max Wright, D2007-0249 (WIPO May 25, 2007) was a trademark for CASINO DE MONACO that issued in 2005 with a priority date of 2002 and concluded that the registrations were abusive.

Although not often, some old cases return for judicial adjudication. What Société des Bains won at UDRP it lost in the District Court for the Southern District of New York, In re Casino De Monaco Trademark Litigation, 07 Civ. 4802 (DAB) (S.D.N.Y. 3-31-2010). The judge “vacated” the UDRP decision. Was the UDRP Panel misguided in not giving weight to the Respondent’s allegation that the trademark was invalid? That is not the Panel's call. It has limited authority which does not include determining a trademark’s validity. Trademark registration creates a rebuttable presumption that the mark is distinctive. The Panel in Société des Bains focused on the elements necessary for the Complainant to prove its case and found abusive registration. The district court, on the other hand, focused on the issue of validity.

Under UDRP jurisprudence, once “the USPTO has made a determination that a mark is registrable, by so issuing a registration, as was the case here, an ICANN panel is not empowered to nor should it disturb that determination,” U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum December 9, 2003). Since registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning it “is not for the Panel to decide whether the registration of the marks should or should not have been granted,” Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum September 16, 2002). Panelists lack authority to ignore valid trademark registrations that have been subject to examination and opposition. The Cyberbingo Corporation v. 207 Media Inc. D2005-0714 (WIPO October 4, 2005) (Canadian parties).

To the extent a respondent wishes to challenge the USPTO’s determination of any of a complainant’s federally registered marks, there are “appropriate administrative and/or judicial avenues available [for that purpose] such as by filing an action in the USPTO to cancel that registration or alternatively instituting federal litigation,” Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, D2005-0636 (WIPO August 18, 2005).

Upon the Order of transfer the Respondents commenced a federal action in Arizona that was removed and consolidated with another action in the Southern District of New York. The Judge determined that Société des Bains failed to prove that CASINO DE MONACO had ever been used in commerce anywhere in the world. Its

registration ... required that it affirm that it had a bone fide intent to use the mark.... However ... [it] has not used the mark in any meaningful way anywhere... [and] the record is devoid of evidence that would create a genuine issue of material fact that [it] uses the mark CASINO DE MONACO to identify its services, anywhere, but particularly in the United States.

The District Court stated that “WIPO did not address the validity of Société des Bains' trademark and its decision is to be given no deference here,” citing Barcelona.com, Incorporated v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 625-26 (4th Cir. 2003). Since the trademark is invalid and unenforceable the Counterclaimants (former Respondents in the UDRP proceeding) could not be in violation of the Anticybersquatting Consumer Protection Act.

May 20, 2010

Disclaiming Association with the Trademark Holder

As a general rule placing a disclaimer on the website is not effective to legitimize a disputed domain name, although a legitimate reason for one cannot be ruled out. Disclaimers have been found appropriate in two circumstances, legitimate use of trademark for a bona fide offering of goods or services, car parts for example, DaimlerChrysler A.G. v. Donald Drummonds, D2001-0160 (WIPO June 18, 2001) (<Mercedesshop.com> and for noncommercial, fair use and free speech, Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, D2004-0206 (WIPO April 30, 2004). Respondents in both cases placed clear disclaimers of any association or relationship with the Complainant which were found appropriate.

But, in other circumstances, disclaimers merely bolstered respondents’ bad faith because their uses were inconsistent with their professions that they were offering bona fide goods or services. Including a disclaimer “actually proves the knowledge of the Complainant’s mark,” Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry-Succession Saint Exupéry - D’Agay v. The Holding Company, D2005-0165 (WIPO June 9, 2005). And, adding a disclaimer after receipt of the complaint does not cure a respondent’s acts “because the appropriate behavior to consider is Respondent’s behavior prior to its receipt of notice from the Complainant,” Vide Universal City Studios, Inc. v. G.A.B. Enters., D2000-0416 (WIPO June 29, 2000) .

Two recent examples of disclaimers bolstering bad faith are Sanofi-Aventis, Aventis Pharma SA, Aventis Pharmaceuticals Inc. v. Syragon LLC., D2010-0331 (WIPO May 3, 2010) (<masacortnasalspray.com>) and AM General LLC v. CDC, FA1004001316858 (Nat. Arb. Forum May 14, 2010) (xhumvee.com>). In both cases the Respondents believed that they were doing the Complainants a favor. The Sanofi-Aventis Respondent “consider[ed] [offering information] both fair to the Complainants and generally helpful to the public.” The AM General Respondent alleged that the domain name “actually enhances the good will of Complainant by generating interest in a product to the private sector which cannot ordinarily acquire [refurbished and customized Humvees] from AM General.”

To succeed with these arguments the truth has to be matched with evidence. The Respondent in AM General made extravagant assertions about its business but evidentiary support there was none. When a party asserts a reputation or stakes out a position it owns it; it has to show that what it alleges really exists; that there is reality not bluster. The Sanofi-Aventis Respondent diverted Internet users to commercial sites offering the Complainants’ product, but there were also links to competing products. In these contexts, disclaiming is merely form not substance. Only when the disclaimer is consistent with the message is it successful. It is never successful when it is nothing more than persiflage.

May 19, 2010

Concurrent Use of Lexical Elements for Domain Name and Trademark

Concurrent uses of lexical elements that also happen to be trademarks are not necessarily the result of abusive registration and are not improbable where the parties 1) operate in different markets and offer goods or services in different classes, 2) there is no evidence that the respondent had prior knowledge of the complainant or its trademark, and 3) the lexical elements form a common word or descriptive phrase. The parties in G DATA Software AG v. Geologic Data Systems, D2010-0389 (WIPO May 10, 2010) offer completely different services but the Respondent uses <gdata.com> as a domain name and e-mail address while the Complainant is the registered trademark owner of G DATA.

The UDRP recognizes that two parties can equally be entitled to the use of lexical elements where the respondent’s use of the domain name is unrelated to goods or services offered by the trademark holder, Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) (<autocar.com). On the other hand, a respondent who is also a competitor has a heavier burden than one offering different goods or services and its conduct is more likely to be found opportunistic, Life Extension Foundation, Inc. v. PHD Prime Health Direct Limited, FA0910001289603 (Nat. Arb. Forum November 25, 2009) (<lifeextensionfoundation.com>).

The Complainant in Forex Club International Limited v. INO.com, Inc., FA1003001316362 (Nat. Arb. Forum May 17, 2010) argued that the Respondent was a competitor because both offered services in the financial area. The dispositive issue, however, concerned the Respondent’s purchase of <forexclub.com> when it came onto the secondary market in 2005. The domain name had apparently been owned by the Complainant or an earlier incarnation of it between 2002 and 2005, but its U.S. trademark was not issued until 2008 with a disclosed first use in commerce date in 2005. It apparently had an earlier market presence in Europe. However, it offered no explanation whether its loss of the domain name was due to inadvertence or abandonment. In 2009 it made contact with the Respondent in an attempt to purchase the domain name, was unsuccessful and commenced the UDRP proceedings.

Good faith registration is reinforced where a respondent establishes that it operates a genuine business contemporaneously with the complainant and has a history preceding a notice of dispute and commencement of the proceeding [paragraph 4(c)(i) of the Policy]. Respondents in G Data and Forex Club made offers of proof that they had both rights and legitimate interests in the disputed domain names. This is sufficient to withstand forfeiture.

May 18, 2010

Knowledge of Complainant and its Trademark Not a Prerequisite to Forfeiture of Domain Name

Ordinarily, bad faith rests on a finding that the respondent is targeting the complainant, which implies (or at least an inference can be drawn) that it is aware of the complainant and its trademark. However, there are circumstances under which the respondent may genuinely have no knowledge of the complainant or its trademark and nevertheless lose its registration to the complainant. This is illustrated in ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010). The Complainant inadvertently allowed its domain name, <raceglaze.com> to lapse which it had owned since 1998. The Respondent purchased the disputed domain name at an auction in January 2010. The parties reside on different continents, therefore its denial of knowledge was plausible. However, the Respondent populated the website with sponsored links to manufacturers in competition with the Complainant. In such a case it is reasonable to say that the website “speaks” for the respondent and its testimony is conclusive against the respondent even though the respondent has no knowledge of the complainant or its trademark.

The Respondent in ChemRite argued three unpersuasive points. First, the silliest, involved a non sequitur, that since the Complainant had registered the domain name in 1998 it (that is, the domain name) “could not have been registered in bad faith.” Second, the Complainant had the opportunity but failed to “enter [the] auction,” allegedly thereby choosing “instead ... to save money and tr[ying] to blackmail the Respondent into giving him the domain name for free.” Third, the “Complainant was sending emails to [an] obviously mistyped email address yet added the bounced email into its Complaint to make the Respondent look bad.” The third is interesting mainly because the Panel identified it as a factor “even though not conclusive” that the Respondent’s “failure ... to reply to the Cease and Desist Letter ... is a further indication of bad faith.”

Clearly, proving knowledge does not require evidence that the respondent had “actual” intelligence of a complainant or its trademark. Proof can be in the conjuncture of trademark registration and country in which the respondent resides, Perfetti Van Melle Benelux BV v. MBALogy, Gaurav Sharma, D2010-0370 (WIPO May 3, 2010), or, as in ChemRite the content of the website. Purchase of a domain name at auction even if in ignorance of the complainant or its trademark is not a complete defense and cannot shield the respondent because a suggestive or arbitrary signifier would have no value used in a non-trademark sense. That is to say, although each word has a dictionary meaning the combination of “race” and “glaze” is meaningless apart from its referent. That is why for the website to yield any financial return from Internet traffic the respondent has to populate it with links to the same categories of products manufactured by or services offered by the Complainant.

It is not simply that “the [ChemRite] Respondent is unfairly gaining a benefit at the expense of the complainant through the ‘click-through’ income generated as a result of these links.” Rather, the domain name and the website to which it resolves are misleading Internet users into believing that there is an association between the Complainant and the domain name owner “by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location” [paragraph 4(b)(iv) of the Policy]. It is bad faith to use a complainant’s trademark to offer similar goods or promote similar third party services not connected with the complainant for the respondent's commercial gain; from that use is inferred bad faith registration.

May 17, 2010

Pattern of Present and Past Acts in Assessing Bad Faith

To violate paragraph 4(b)(ii) of the Policy the complainant has to prove that the respondent engaged in a “pattern of conduct.” Pattern suggests a customary practice rather than an isolated act. It can involve frequent single or multiple registrations spread out over a lengthy period or multiple registrations of domain names over a short period. Abusive intention is inferred from the composition of the domain names and their content. The paragraph is directed to respondents who “have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct” (emphasis added). Since it is unlikely that complainants would consider registering domain names confusingly similar to their trademarks (as their primary Internet location), the paragraph is not (could not be) construed literally. Engagement in a pattern to target trademarks is a violation of paragraph 4(b)(ii) whether or not the respondent literally intended to shut the complainant out of its rightful place on the Internet.

Confusing similarity subsumes purposeful typographic variations that displace, transpose, add or omit letters from the trademark. This was the case in Avid Dating Life, Inc. v. Private Whois Service, FA1004001318204 (Nat. Arb. Forum May 13, 2010) in which the Respondent registered 101 “disputed domain names that are confusingly similar, misspelled versions of Complainant’s mark.” The term also includes domain name variations that simply combine trademarks with a dictionary word. In Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, D2009-1661(WIPO January 19, 2010), for example, the Respondent registered 1,542 domain name variations of which 10 were found to be distinguishable because they incorporated only part of the trademark that in combination were found not to be confusingly similar. The Respondent in Research In Motion Limited v. Georges Elias, D2009-0218 (WIPO April 27, 2009) registered 111 domain names of which 10 joined “berry” with a dictionary word that distinguished the domain name from the trademark and were not included in the transfer of registration to the Complainant.

“Pattern of conduct” requires proof that the respondent has a history of registering domain name variations to capitalize on trademark reputations and to capture traffic. A respondent’s history (not just in respect to domain name variations) is probative of bad faith. “Its probative value may be one of weight, but it is a matter, which can be taken into account in assessing the implications of all of the information that an administrative panel has at hand.... Conduct that reveals a scheme or plan, a course of operations, is not irrelevant,” Collections ETC., Inc. v. Cupcake Patrol, D2001-0305 (WIPO May 10, 2001).

In Avid Dating and Research in Motion the Respondent targeted a single company. In Inter-Continental the Respondent targeted a conglomerate having a multiple of branded hotels. Non-use of the domain names is irrelevant since inactivity is not a defense. According to the Panel in Smokey Mountain Knife Works v. Deon Carpenter, AF-230 (a, b) (eResolution July 3, 2000). Such a pattern of abusive domain registrations can occur along two distinct dimensions:

First, a domain registrant can operate ‘horizontally’, targeting multiple entities, perhaps in multiple industries.
Second, a domain registrant can operate ‘vertically’, targeting a single entity, but registering multiple domains which reflect either different aspects of the target's business, or different alphabetic variations of the target's trademark.”

Respondents found to have horizontally or vertically violated a complainant’s rights by their multiple registrations are also in violation of paragraph 4(b)(iv) of the Policy. But that, of course, is the purpose of the exercise, to appear to be associated with the complainant, the better to capture Internet traffic intended for the complainant.

May 14, 2010

The Four Non-Exclusive Examples of Bad Faith Determined by Past and Present Acts

Abusive registration of a disputed domain name presupposes past and present acts by the respondent inimical to the complainant’s trademark rights. Obvious examples are appropriations of well known or famous trademarks to capture Internet traffic for commercial gain. President and Fellows of Harvard College v. Domains By Proxy, Inc., Online Property LLC., D2010-0263 (WIPO May 3, 2010) (<harvardonline.com>). But lesser known trademarks are also targeted. Paragraph 4(b) of the Policy introduces the elements for satisfying the requirement of bad faith under paragraph 4(a)(iii). It reads: “For the purposes of Paragraph 4(a)(iii), the following circumstances [set forth in the subdivisions of the paragraph], in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith...” (Emphasis added). Acts past or present all involve the respondent taking advantage of the complainant or its trademark. Contrast with trademarks that have current reputation, but none when the domain name was registered, Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010); or only regionally known, CNRV, Inc. v. Vertical Axis Inc., FA0912001300901 (Nat. Arb. Forum May 3, 2010). Application of the paragraph comes into play when the respondent fails to marshal a defense for rights or legitimate interests in the disputed domain name. The four listed circumstances of bad faith do not presume to cover the universe of bad faith.

Panelists early concluded that the four listed circumstances are “intended to be illustrative, rather than exclusive.” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000). “[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [paragraph 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.” Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO March 7, 2000). Unidentified are other abusive practices covered under the catchall phrase “in particular but without limitation.” This may include, among other practices, imitating complainant's website and pretending to be the trademark holder for phishing expeditions and hijacking domain names and fraudulently transferring them to new Registrars and Registrants. “It does not matter that the facts ... may not fall within any of the circumstances described at paragraph 4(b) of the Policy.” Fox News Network, LLC v. Sam Solomon, D2005-0022 (WIPO March 25, 2005).

If not any one of the four examples of bad faith the Panel can rule on the “totality of circumstances.” Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000). “Additional factors can also be used to support findings of bad faith beyond those enumerated.” Wendy Ida v. Farid Azam, FA0901001240643 (Nat. Arb. Forum February 27, 2009). An example of bad faith registration and use “is not a limitation.” Mattel, Inc. v. Unknown c/o Dora Marks, FA0506000490083 (Nat. Arb. Forum July 11, 2005).

Of the four listed examples of bad faith the first three are written in the past tense and focus on the respondent’s intention in registering the domain name for a particular purpose. Past and present tenses are discussed by the Panel inTrade Me Limited v. Vertical Axis Inc, D2009-0093 (WIPO April 7, 2009). In contrast, the fourth example of bad faith [paragraph 4(b)(iv)], is written in the present tense, but implies a continuum of (if not current) predatory conduct in using the domain name.

May 13, 2010

Registrant’s Assent to Maintain Accurate Information in the WHOIS Database

When challenged for abusive registration respondents’ privacy veils are lifted for the duration of the UDRP proceedings and the WHOIS database will so reflect. Proxies if they are truly the registered owners of record and not another name for a privacy service are a different matter. Beneficial owners can remain anonymous, in which event the respondent’s right or legitimate interest will be tested against the proxy's (fictitious) registration and use of the disputed domain name. A recent example is Audigier Brand Management Group, LLC v. Private Whois Service, FA1003001313253 (Nat. Arb. Forum May 3, 2010). The genesis of the WHOIS database was ICANN’s periodic Memoranda of Understandings with the U.S. Department of Commerce (under which ICANN was created) which presently is embodied in the Affirmation of Commitments effective September 30, 2009. Under these agreements ICANN committed itself to preserving a publicly accessible database of domain name registrants. Paragraph 9.3.1 of the Affirmation reads:

ICANN additionally commits to enforcing its existing policy relating to WHOIS, subject to applicable laws. Such existing policy requires that ICANN implement measures to maintain timely, unrestricted and public access to accurate and complete WHOIS information, including registrant, technical, billing, and administrative contact information.

ICANN achieves this commitment through agreements with accredited Registrars under the RAA which requires Registrars to collect and provide free public access about the registration of the domain name “sufficient to contact a responsible party for a particular gTLD domain name who can resolve, or reliably pass on data to a party who can resolve, issues related to the configuration of the records associated with the domain name within a DNS name server” [GNSO Counsel, April 12, 2006.]

Developments in the use of privacy and proxy services have chipped away at the openness of the directory, but Registrars have an obligation to identify a masked registrant when they receive notice that a complaint has been filed. Anonymity carries a strong negative inference that the intention for registering and paying for a proxy was to take advantage of the complainant and its trademark. In United Computer Products, Co. Inc. v. Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc., D2008-0017(WIPO February 22, 2008) for example the Registrar released only the proxy information on a complaint for fraudulent transfer of the disputed domain name. Not surprisingly, the Proxy did not appear.

The Whois database serves a number of different functions, from due process to law enforcement. It has come under attack for invasion of registrants’ privacy but it also has defenders. In the current policy debate it does not appear likely that it will be eliminated, even if some changes are mandated. The ICANN Registrar Accreditation Agreement requires the Registrar to provide a “free public query-based access to up-to-date ... data concerning all active Registered Names sponsored by Registrar for each TLD in which it is accredited.” This includes the name and postal address of the Registered Name Holder; the name, postal address, e-mail address, voice telephone number, and (where available) fax number of the technical contact for the Registered Name; and the name, postal address, e-mail address, voice telephone number, and (where available) fax number of the administrative contact for the Registered Name. RAA Section 3.3.1. See also See ICANN, Registrar Advisory Concerning Whois Data Accuracy, May 10, 2002, available at <http://www.icann.org/en/announcements/advisory-10may02.htm>.

Providing false and misleading contact information to the Registrar is a violation of the Policy and constitutes a breach of the “Representations and Warranties” clause of the Registration Agreement and Paragraph 2 of the Policy. Failure to maintain the Whois data or deliberate manipulation of the information provided has consequences. Use of phony names and fictitious addresses or contact information is evidence of bad faith registration and use. The inference in these cases is that Respondent either has a “foul intent” or has no affirmative defense to abusive registration.

May 12, 2010

The “Primary Purpose” Rule in Construing Offer to Sell Domain Name

Bad faith under paragraph 4(b)(i) of the Policy requires proof that the respondent’s registration of the disputed domain name was for the “primary purpose” of selling it to the complainant. By definition a trademark not in existence at the time of the registration or a trademark in existence but unknown to the respondent could not yield a conclusion of bad faith. A corollary would be a situation in which in response to a complainant’s request to purchase the domain name the respondent demands more than the complainant is willing to pay. At the request of the complainant a respondent who has a superior right to the domain name can sell or hold at its option. Willingness to discuss selling a disputed domain name that is an alienable asset at the complainant's request is not evidence of bad faith. Skyhook Wireless Inc. v. John L Productions, Johnny Williams, D2010-0359 (WIPO April 23, 2010). It is

undisputed that the parties have communicated about the Complainant’s proposed purchase of the disputed Domain Name on several occasions. One of the Complainant’s principals, identifying the Complainant as “a startup company called Skyhook Wireless”, first expressed interest in purchasing or leasing the disputed Domain Name in 2007. In a January 2010 email attached to the Complaint, the Respondent offered to sell the disputed Domain Name to the Complainant for USD $100,000. The communications in the record do not refer to trademark rights or the Policy until March 2010, shortly before the Complaint was filed.

A respondent cannot, of course, create a legitimate interest by merely registering a domain name or by estoppel. But, if it acquires a “right” in a domain name by being the first to register without knowledge of another’s trademark it has an alienable asset. In Skyhook Wireless “the Respondent did not approach the Complainant to sell the disputed Domain Name, and the fact that the Respondent later considered the Complainant’s request to purchase the disputed Domain Name does not establish that this was the Respondent’s motivation for acquiring the disputed Domain Name in 2006.”

Skyhook may have had a presence in the marketplace prior to 2006, but “[i]t is likely, as the Respondent asserts, that [it] did not reach the attention of the Respondent in Alabama, operating a business in the field of election campaign services.” Moreover, “these circumstances undercut the Complainant’s inference that the Respondent registered the disputed Domain Name primarily to sell it to the Complainant.” The Respondent acquired the domain name for a purpose having nothing to do with the Complainant.

May 11, 2010

What Does It Take to Get a Reverse Domain Name Hijacking Ruling?

There is no consensus on the standards of proof to be applied in reaching a finding of reverse domain name hijacking. It is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule 15(e) authorizes the Panel to make a finding

[I]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example [1] in an attempt at Reverse Domain Name Hijacking or [2] was brought primarily to harass the domain-name holder, [then] the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

The definition and the Rule which enlarges the definition by noting examples mark out the boundaries of abusive conduct. Noting two examples implies there could be more acts of bad faith.

Some panelists, however, demand certitude of a complainant’s intention impossible to marshal. This is seen in the so-called “malice aforethought” standard and applied in Ammar Jarrous, MD v. Amarillo Cardiovascular & Thoracic Surgery, FA1002001306970 (Nat. Arb. Forum May 5, 2010). It is certitude coupled with the Panel’s refusal to draw inferences that sinks the respondent’s request for RDNH. Other panelists apply an “utterly clear” standard as illustrated in CNRV, Inc. v. Vertical Axis Inc., FA0912001300901 (Nat. Arb. Forum May 3, 2010).

What constitutes RDNH is not writ in stone. The two examples noted have a familial relationship, but even though they are generally merged into a finding of RDNH each act is utterly distinct. The “malice aforethought” standard is all or nothing; there is no shifting to complainant the burden of proof upon respondent’s showing of a prima facie case for RDNH. The “utterly clear” standard returns the burden to the complainant, in essence to rebut an allegation of bad faith. RDNH is warranted under this latter standard upon a finding that the “Complainant must have known it could not demonstrate bad faith registration and use.”

“Clearly,” (as the Panel in Ammar Jarrous has it, citing Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000) “the launching of an unjustifiable Complaint with malice aforethought qualifies.” That is true, but bad faith is also demonstrated if the complainant pursues a complaint in “reckless disregard of the likelihood that the Respondent had rights or legitimate interest in the name,” OnePhone Holding AB v. IndiGO Networks, D2007-1576 (WIPO December 22, 2007). Such reckless disregard was found in Altru Health System v. Altruism Network c/o Doug West, FA0805001195584 (Nat. Arb. Forum July 15, 2008). The Panel held that while at “first sight” it may appear as though the Complainant “had fair reasons to file the Complaint,” on second sight it did not because it made false statements about its trademark which it compounded by making “deliberately false accusations of Respondent’s commercial activities” at the website to which the domain name resolved. What finally outraged the Panel was that

Complainant’s actions were made in an attempt to convince the Panel to decide in Complainant’s favour in spite the fact that the case had obvious flaws. It is this Panel's opinion that Complainant’s behaviour constitutes an abuse of the administrative proceeding.

The “malice aforethought” standard is too rigid. Although the Panel in Ammar Jarrous agreed that “the Respondent had made a convincing case to the effect that the Complainant should have known that the Respondent had a legitimate interest (in the sense of the Policy) in the disputed domain name,” he rejected the Respondent’s request because “he has not provided any evidence of malice aforethought or harassment by the Complainant in the sense of the Policy.”

Malice aforethought as the sole measure of bad faith misconstrues Smart Design which held that it is also bad faith to pursue “a Complaint after the Complainant knew it to be insupportable.” This second part of the formulation is found in CNRV in which the majority held “that ‘bad faith’ ... extends also to a person who, while maybe not knowing an allegation to be insupportable, makes the allegation reckless as to whether it is supportable or not.” In contrast, bad faith does not extend to those complaints “not well founded” but which contain no “fabrications or manifestly unsustainable positions,” Skyhook Wireless Inc. v. John L Productions, Johnny Williams, D2010-0359 (WIPO April 23, 2010).

May 10, 2010

Referent for Identical or Confusingly Similar to Trademark is Domain Name Not Any Post-Domain Path

UDRP is not an all-purpose forum for resolving infringement claims. The Policy is limited to abusive registration of domain names. What happens if the infringement occurs in a post-domain path (that takes the Internet user to an interior page of the website)? The Complainant in Romantic Tours, Inc. v. Whois Privacy Protection Service, Inc., FA1003001316557 (Nat. Arb. Forum April 28, 2010) complained that the Respondent had incorporated into its post-domain path a string that infringed its trademark, HOT RUSSIAN BRIDES.

It is not illegitimate for a respondent to operate an online advertising portal from a domain name even if (under certain circumstances) it is identical or confusingly similar to a trademark. Romantic Tours argued for transfer of the Respondent’s domain name because of the post-domain path: “Respondent has no rights or legitimate interests in its registered <jimslists.com> domain and for its <jimslists.com/agencies/hotrussianbrides> post-domain.” Upon receiving the complaint, however, the Respondent deleted the post-domain path. However, what if “Jim’s List” were simply an advertising portal that included a section on “foreign brides” with links to Complainant and its competitors?

It is not targeting in a cybersquatting sense to include reference to a trademark holder in a general purpose directory. Targeting implies registering a domain name that crosses a threshold. Even with domain names that are identical or confusingly similar – using generic words or descriptive phrases in their ordinary or dictionary meanings – unless targeting appears evident it is legitimate to operate an advertising portal, First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO May 1, 2001). “Neither the current UDRP nor current ICANN registrar contracts preclude” the practice of registering domain names in connection with an advertising venture, Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA98813 (Nat. Arb. Forum October 8, 2001); pay-per-click websites constitute a bona fide use (absent targeting), Terana, S.A. v. RareNames, WebReg, D2007-0489 (WIPO June 7, 2007); Fratelli Carli S.p.A. v. Linda Norcross, D2006-0988 (WIPO October 4, 2006); or paid link farm services, Aquascape Designs, Inc. v. Vertical Axis, Inc c/o Domain Adminstrator, FA0601000629222 (Nat. Arb. Forum March 7, 2006) (<aquascape.com>) (Complaint dismissed).

If domain names for advertising websites that are similar or confusingly similar to trademarks can be legitimate then a fortiori it is not abusive to register a domain name dissimilar to the lexical units of the trademark. Although a post-domain can arguably be a trademark infringement it cannot be a UDRP violation any more than aggregating competing providers of goods and services would be in a print on paper business directory. Romantic Tours’ argument is unpersuasive precisely because the domain name is not identical or confusingly similar to the complainant’s trademark. The domain name, “<jimslists.com> ... is neither identical nor similar with the Complainant’s trademark as it bears no resemblance to [it].” The “UDRP does not offer relief for infringements via use of registered trademarks in post-domains and that the proceedings under the UDRP may be applied only to domain names.”

May 7, 2010

Competing with the Same Trademark and Defaulting on Evidence of Priority

Paragraph 4(b)(iii) of the Policy has specific reference to the acts of a competitor. If for its “primary purpose” a respondent registered the disputed domain name to disrupt the other’s business it is evidence of bad faith. The Respondent’s narrative in SunSpots Productions Inc. v. John Laprad, D2010-0184 (WIPO April 26, 2010) claims bona fides in using “sunspots” for his business identity concurrently with the Complainant or possibly antedating the Complainant’s use and registration of SUNSPOTS, thereby putting the parties in a duel of priority. Complainant appears to have a wider range of business but both parties compete in offering voiceovers. The Respondent appears to be a one-man operation who “can currently be heard in a popular series of radio advertisements” on local radio stations in Worcester, Massachusetts.

A successful defense requires a party to offer both narrative and evidence. In SunSpots, the Respondent failed to “provide any evidence or exhibits in support of his response.” His narrative, however, was partly corroborated by evidence supplied by the Complainant who “provided a copy of a Business Certificate in which Respondent registered as ‘Sun Spots Productions’ in 1980, along with the Massachusetts statute that provides that such certificates, unless renewed, expire after four years.” It is not expiration of the business certificate that is dispositive in disproving a right but whether following non-renewal the Respondent continued to use the unregistered trademark or abandoned it.

The Complainant obtained a certification of registration for its trademark on the Principal Register in 2003, claiming first use in commerce 1988. The disputed domain name, however, was registered in 2006. The Respondent chose not to respond to the Complainant’s supplemental submission to “the Panel Procedural Orders” (authorized under Rule 12) leaving the record ambiguous as to its right to an unregistered trademark and corresponding domain name by reason of priority of use in commerce. The Complainant offered no evidence that its reputation was such in 2006 that the Respondent “knew or ought to have known” of it and its trademark. The Panel found

contrary to Complainant’s conclusory assertions [that it had been well-known throughout the United States and particularly to those in its industry] [] that the issue of bad faith presents a close question. The parties appear to be competitors, each using a ‘sun spots’ name in connection with the same services.... [On the one hand], it appears that the Respondent’s use of the domain name violates paragraph 4(b)(iv) of the Policy by creating a likelihood of confusion with Complainant’s mark and related services.] On the other hand, given that, at least in 1980, Complainant registered ‘Sun Spots Productions,” it might be that Respondent has rights in a ‘sun spots’ name that are, at least in some respects, superior to those of Complainant.

The Respondent in Sun Spots forfeits the disputed domain name not because the Complainant has a registered trademark but because the Respondent and its counsel failed to support the narrative. The absence of evidence in the exclusive control of the Respondent “leads the Panel to draw adverse inferences about whether such evidence exists or what it might show.”

May 6, 2010

Narrow Trademark Rights Confined to Geographic Area in Which Holder Does Business

Complainants whose unregistered trademarks consist of generic words or descriptive expressions may have standing to maintain the UDRP proceeding, but they have narrow rights confined to the geographic area in which they do business. CNRV, Inc. v. Vertical Axis Inc., FA0912001300901 (Nat. Arb. Forum May 3, 2010) disputing over <adventurerv.com>. The Complainant’s business in located in the Eastern part of Tennessee near Gatlinburg and the Smoky Mountains National Park. The Respondent has a substantial collection of domain names incorporating “adventure” which it uses in connection with “Yahoo auto-generated pay-per-click (PPC) advertisement related” to recreational activities.

The majority agreed that the Complainant had standing. Although extensive third party use of words and expressions claimed by a complainant as its badge to the world may overrate itself in believing that the public distinguishes it from the others, nevertheless it “would not be fatal to the Complainant’s contentions if its alleged common law mark were only recognised within a certain geographical area,” Nexmedia Pte Ltd. v. Heavy Lifting LLC, et al., D2010-0059 (WIPO Mar. 9, 2010). In both CNRV and Nexmedia the Respondents adduced evidence that the words or expressions were used by a number of other companies.

The dissent, however, noted that there is “nothing to suggest that the expression has ever been claimed by Complainant as a trademark or applied to be registered by it as such although the registration of trademarks is apparently available in the State of Tennessee for a fee of $20.” He cites a decision from the Supreme Court of North Carolina in which the Court stated:

When a particular business has used words publici juris for so long or so exclusively or when it has promoted its product to such an extent that the words do not register their literal meaning on the public mind but are instantly associated with one enterprise, such words have attained a secondary meaning. That is to say, a secondary meaning exists when in addition to their literal, or dictionary meaning, words connote to the public a produce from a unique source. (Emphasis by the dissent).

The Complainant offered no evidence that the literal meanings of “recreational” combined with “rv” had become connotative in the public’s mind to identify it as the “unique source” for goods or services outside of its geographic area. “Indeed, the same majority of the Panel [that found for standing] also notes that ‘US ADVENTURE RV’ has been registered by a third party as a trademark in the United States (interestingly, without a disclaimer of the word ‘adventure’ and without the requirement of showing secondary meaning under Section 2(f) of the Lanham Act).”

U.S. law recognizes that identical or similar trademarks may co-exist if each are used in discrete geographic areas, as concurrent uses. This is evidently the case with in the RV market for the name “Adventure RV.” All three panelists concur on the issue of reverse domain name hijacking. Two of them make explicit reference to the geographic limitation of the trademark. The “Complainant must have known it could not demonstrate bad faith registration and use, given the weakness of its trademark ... and the inherent unlikeliness that Respondent could have had Complainant in mind when registering the Domain Name, given the narrow geographic scope of Complainant’s activities and the many concurrent users of the same name.”

May 5, 2010

Name By Which Respondent is Commonly Known

One of the three specified defenses to a claim of abusive registration is proof that “you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights” (Paragraph 4(c)(ii) of the Policy). In Sandra Andy v. Alessandro Balzarin, D2010-0348 (WIPO April 21, 2010) the Respondent presented evidence that he uses personally and in business his nickname “Sandro” and, thus, had a right and legitimate interest in <sandro.com>. That he does not actively use the website “beyond the showing of a picture of a sunflower [is] of no relevance ... given that this is not a required condition under paragraph 4(c)(i) and (ii) of the Policy.” However, the Policy is construed to “require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail,” RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001).

A trademark holder only preempts a respondent who uses the domain name to extract value from the complainant or its trademark. To illustrate with contrasting examples. The Respondent in Harrods Limited v. Harrod Exclusive Realty Service, D2006-1061 (WIPO November 6, 2006), Lisa Harrod offers a range of real estate services for Florida based properties and registered <harrodsproperties.com>, but she is not “Harrods.” “There is” said the Complainant “a distinction between the name of a proprietor of the Respondent ‘Lisa Harrod’ and use of a domain name featuring the plural ‘Harrods’.” More damagingly, Respondent diverted traffic to another website. In contrast, another Harrod, Brenda L. Harrod, one of the Respondent principals in Harrods Limited v. HDU Inc., D2004-0093(WIPO April 27, 2004) operated a beauty salon business registered in Ohio known as “Harrod's Designs Unlimited, Inc.” The domain name <harrodssalon.com> represented the Respondent’s presence and offered her own services.

A complainant’s argument that a domain identical to its trademark is not a proper surname is not proof that it “was likely adopted by Respondent for the purpose of asserting rights in the domain name,” Mattel, Inc. v. Gopi Mattel, FA0411000372847 (Nat. Arb. Forum February 15, 2005) (<mattel.org>). 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.

So it goes with the Complainant in Sandra Andy. The “Respondent had a legitimate reason for choosing that term as his domain name in 1997 given that it corresponded to the nickname of his first name.” The evidentiary problem is that the Complainant failed to offer evidence of its international or national activities when the Respondent registered the domain name. This supported an inference that “the Complainant has probably assessed too generously the brand recognition of the Trademark in other countries, particularly in Germany ... in 1997.” Not all nicknames, however, get a pass. The Respondent in RedBull GmbH v. Gutch, D2000-0766 (WIPO September 21, 2000) claimed that he registered <redbull.org> because he had been known as “Red Bull” since childhood. Bull, indeed!

May 4, 2010

Applying Doctrine of Res Judicata to Dismiss Subsequent Proceeding

Refiling a complaint against the same respondent is not permitted as “of right.” I pointed out in the Note for April 28 that some panelists openly invite complainants to refile a complaint when the factual circumstances change and the new record supports a claim for abusive registration. When the factual circumstances remain the same the earlier adjudication bars a recommencement of proceedings under the doctrine of res judicata. VRSim, Inc. v. John Makara, FA1003001314947 (Nat. Arb. Forum April 30, 2010), refiling to reopen a dismissed claim in VRSim, Inc. v. Makara, FA 1233521 (Nat. Arb. Forum Jan. 2, 2009).

The grounds for recommencing a proceeding were first set forth in Grove Broad Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO November 10, 2000) in which the Panel applied well settled principles established in courts of law. A refiling against the same respondent may be granted under certain circumstances but it does not include denial of the first complaint for insufficiency of evidence or a determination on the merits since that would simply be a repetition of the same facts upon which the previous complaint was based.

Grove Broadcasting held that to reopen a decided case the complainant must show 1) serious misconduct by a judge, juror, witness or lawyer; 2) perjured evidence being offered to the Court; 3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and 4) a breach of natural justice /due process. “The integrity of the ICANN Policy and procedure requires that if a reconsideration of the same Complaint is to be entertained, there should be proof that one of the strict grounds discussed in this decision has been made out.” Ground 3 is the usual battleground in a UDRP case. The Panel in Grove Broadcasting concluded that where the complainant initiated proceeding without proper documentation or proof ... [it] has to take the consequences.”

The Grove Broadcating test was further refined in Creo Products Limited v. Website in Development, D2000-1490 (WIPO January 19, 2001) in which the Panel 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 Panel held that a complainant can satisfy its burden by including evidence of “both new acts of the Respondent occurring since the first decision and fresh evidence not available prior to the first decision.” This is what the Panel in Jetfly Aviation SA v. Jens K. Styve / Domains by Proxy, Inc. and Happy Landings S.A., D2010-0244 (WIPO April 5, 2010) had in mind in laying the foundation for a refiling. A judgment in a court of law establishing a party’s right to a trademark decision is “evidence which could not have been reasonably foreseen or known” in the earlier proceeding. Issuance by the USPTO of a certificate of registration for the trademark has been found to support a refiling, Alpine Entertainment Group, Inc. v. Walter Alvarez, D2007-1082 (WIPO December 4, 2007).

In the refiled VRSim the Complainant (whose trademark is on the Supplemental Register) “presented nothing that would support entertaining this second complaint. The Panel finds that this proceeding is barred by the earlier decision.” This can be interpreted to mean that the Complainant offered no new material evidence that could not previously have been offered.

May 3, 2010

Mandatory Proceeding to Resolve a Claim of Abusive Registration

It is useful to pause in dissecting cases and addressing evidentiary issues to outline for those unfamiliar with the UDRP the mechanism that compels a respondent to answer for its choice of domain name. The authority for hauling a domain name registrant into a UDRP proceeding in response to a trademark holder’s complaint that the registration is abusive is found in a contract provision incorporated in the respondent’s registration agreement. The provision requires the registrant/ respondent “to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that the respondent’s” domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights” (Paragraph 4(a) (i) of the Policy).

More likely than not, the arbitration panel is either sitting in a different country or remote from the registrant’s home state. “The Policy is of international scope and the framers required it to be capable of practical application by a panelist that might be drawn from any jurisdiction (and more often than not a panelist who would not be drawn from the jurisdiction of either of the parties to a dispute),” Aubert France SA v. Tucows.com Co., D2008-1986 (WIPO March 17, 2009).

Why should an arbitration be mandatory where the parties are strangers to each other? The question is important because as a matter of law no party can be compelled to arbitrate disputes. Arbitration has to be consensual. Parties must mutually agree to waive the right to be heard in a court of law. What is unusual with the UDRP is that while arbitration is a non-negotiable feature of the registration agreement it is not a bilateral contract with the trademark holder. Trademark holders aggrieved by violation of their rights are third-party beneficiaries to a weave of contracts between ICANN and the Registrar on the one hand and the Registrar and the Registrant on the other. The terms incorporated into the registration agreement are dictated by ICANN to its accredited Registrars who alone are authorized to register domain names pursuant to a Registrar Accreditation Agreement.

The registrant agrees to the procedure for weighing partyies' rights to a disputed domain name as a condition of registration. It expressly represents and warrants that its choice of domain name “will not infringe upon or otherwise violate the rights of any third party” and agrees to“submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider” that the respondent acquired the disputed domain name in bad faith. If the respondent is found to have registered and is using the disputed domain name in bad faith the penalty is either cancellation of registration or forfeiture of the disputed domain name to the complainant. The sole recourse for the unhappy party – in 15% of the time this is the complainant – is to challenge the Panel’s order in a court of law. In this respect the UDRP differs from the typical ADR model in which the decision is final (although challengeable under the Federal Arbitration Act and the Revised Uniform Arbitration Act).

Paragraph 4 of the Policy describes the arbitral procedure as a “mandatory administrative proceeding.” The term “mandatory” should not be misunderstood as meaning that the registrant must participate in the proceeding – indeed respondents default approximately 85% of the time. Due process dictates that the respondent be given notice of the complaint, but it is the disposition of the domain name that is in issue, whether or not the respondent appears. The term mandatory administrative proceeding refers to the respondent’s contractual agreement to submit the claim to an impartial or neutral arbitrator to determine the merits of the complaint. “It is these Rules with which all applicants for the registration of domain names agree to be bound,” Cimcities, LLC v. John Zuccarini D/B/A Cupcake Patrol, D2001-0491 (WIPO May 31, 2001). Respondent is also bound by its representations and warranties to the Registrar, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, D2002-0806 (WIPO October 16, 2002).

June 2010 NOTES , DATES ARE IN REVERSE ORDER

June 28, 2010

Actionable Opportunism Does Not Include Registering a Domain Name Before Complainant’s Acquisition of Trademark and Offering to Sell it for its Commercial Value

UDRP jurisprudence requires the complainant to plead and prove that the respondent registered and is using the domain name in bad faith. It implies opportunism in the first instance projected into future use. The two “bad faiths” must exist jointly. Country code policies are constructed on a different theory; a disjunctive rather than conjunctive requirement. Opportunism under those policies in either registering or using is sufficient to satisfy the bad faith requirement. The Panel in Editions Milan v. Secureplus, Inc., D2010-0606 (WIPO June 10, 2010) notes that the “disjunctive approach to bad faith demonstrated by the Nominet and similar Policies, used for ‘.uk’ and ‘.nz’ disputes for example has much to recommend it.” However, this approach is not importable into the UDRP. It is “not for this Panel to in effect alter the wording of the existing UDRP.” The Panel is emphatic in rejecting the Octogen line of cases that construe the Policy to hold respondents retroactively liable for subsequent opportunistic conduct.

The disjunctive approach (whether in country code policies or the Octogen construction) is insular rather than international. It protects complainants against subsequent opportunistic use of domain names that take advantage of later acquired or little known trademarks that subsequently establish themselves in the marketplace. Under UDRP jurisprudence a variant of the disjunctive approach has caught hold in one area of construction, namely against UDRP high volume respondents for failing to perform due diligence on trademarks. In these circumstances, a respondent’s disclaimer of knowledge of the trademark is insufficient to rebut a finding of opportunism.

This was emphasized recently by the majority in Oregon Freeze Dry, Inc. v. Vertical Axis Inc., FA1003001316531 (Nat. Arb. Forum June 10, 2010): “The profitability of PPC links engendered by a well-known name must, over time, increase the saleability, and therefore, the price, of the disputed domain name.” The majority found acquisition of the domain name opportunistic because although the Respondent was using the domain name for PPC revenue which is a bona fide use, it was also offering the domain name for sale. It was the latter that persuaded the majority to find conjunctive bad faith. Nevertheless, the decision gives the plaintiff a boost by reducing its burden of demonstrating actual knowledge of the trademark when it acquired the domain name.

The Panel in Editions Milan, on the other hand, reaffirms the precedential view in balancing parties’ rights. A complainant of a later acquired trademark does not have an actionable claim against a respondent for its retroactive registration (how could it?). This applies whether or not the respondent puts the domain name to active use. To hold passively a domain name in which the respondent has a “right” does not transform good faith into bad. “[I]f [the Respondent is] found to have registered the disputed domain name in good faith, then it can be said to have rights or legitimate interests in the disputed domain name.” In fact the analysis can go further. In such a case the respondent can be said to have both “rights” and “legitimate interests.” A respondent with a “right” has the power to alienate the domain name for its market value, which is certainly “in excess of [its] documented out-of-pocket costs directly related to the domain name.” The Panel stated

The Panel considers it irrelevant to consider the history of the transactions between the parties regarding the sale and purchase of the disputed domain name. The Respondent was perfectly entitled to deal with the disputed domain name. It was just its good fortune that Mr. Hill decided years ago to register a domain name in connection with an interest he had in Kokeshi dolls, that has turned out to have a popular use and which is sought to be used by a business of which he then could have had no knowledge.

While there is certainly opportunism in selling an earlier acquired domain name to a complainant of a later acquired trademark, it is not of the actionable kind. In fact, to commence a proceeding under those circumstances is sanctionable.

June 25, 2010

Registering a Domain Name as a Dot “US” TLD

Holders of trademarks composed of given or surnames compete for space and attention with persons who are known by those names. On the silly side of the ledger are respondents who successfully claim to be known by their nicknames, such as “Penguin” and “Jollibee” who are found to have legitimate interests (if not rights) superior to the more well known (internationally in the case of the first) complainants. Conventionally, however, names are treated no differently than generic words. Competing for space and attention with a trademark holder to use one’s own name for one’s own project does not rise to an infringement.

This is even more so where use of a country code extension such as “.us” is limited to certain classes of registrants. The Respondent in Arnoldo Mondadori Editore S.p.A. v. Grazia Solazzi, FA1005001323771 (Nat. Arb. Forum June 23, 2010) showed not only that as a “Grazia” she was entitled to her choice of <grazia.us> but that the Complainant, an Italian woman’s magazine has no nexus with the United States even though it holds a United States trademark for GRAZIA. The rules promulgated by the designated registrar for “.us” TLDs (Neustar, Inc.) require registrants for usTLDs to have a substantial nexus with the United States. The Respondent pointed out that the mark is not immediately associated with the Complainant in any event since it is multiply registered in a variety of Classes.

Under the terms of the “.us” TLD, a foreign entity or organization must “certify” that it has a “bona fide presence in the United States” on the basis of “real and substantial lawful connections with, or lawful activities in, the United States of America.” The Respondent contended that this requirement “is intended to ensure that only those individuals or organizations that have a substantive lawful connection to the United States are permitted to register for usTLD domain names.” The Respondent further contended that the Complainant is

neither a U.S. citizen, nor a resident or domicile of the U.S. It is not a U.S. entity or organization and has no ‘bona fide’ presence in the U.S. Thus, any attempt by Complainant to register a usTLD would be deceptive to consumers. Complainant seeks to achieve through this proceeding what it could not legitimately achieve through the registration process. That is improper and illegitimate.

The Complainant contended that the Respondent was “leveraging on [its] reputation.” Generally, this is a potent argument, but here the Panel did not penalize the Respondent for having her website parked with links to fashion magazines. That piece of evidence is offset by another, that she presented strong evidence of demonstrable preparations for the website dedicated to food reporting [paragraph 4(c)(i) of the Policy.] In addition, the Panel found “through Respondent’s use of her name in reference to her journalistic activities and projects that Respondent has become commonly known by the disputed domain name,” a defense under paragraph 4(c)(ii).

June 24, 2010

Authority for Mandatory Arbitration of Domain Name Disputes

The domain community is well aware of the UDRP, but other registrants are less familiar with the contractual matrix that binds them to a mandatory arbitration. At the request of the Provider upon receiving a complaint the Registrar is required to confirm the following basic information: “the domain name is registered with it; the Respondent is listed as the registrant of the domain name; the current contact details for the respondent are as given in the Complaint; and [English or another language] is the language of the registration agreement.”

The authority for hauling a domain name registrant into a UDRP proceeding to answer a trademark owner’s complaint that the registration is abusive is found in a contract provision incorporated in the respondent’s registration agreement. By signing the registration agreement the respondent assents to a mandatory administrative proceeding to determine rights to a disputed domain name where a trademark complainant asserts a claim of abusive registration. More likely than not, the arbitration panel is either sitting in a different country or remote from the registrant’s home state. “The Policy” (as the Panel in Aubert France SA v. Tucows.com Co. noted) “is of international scope and the framers required it to be capable of practical application by a panelist that might be drawn from any jurisdiction (and more often than not a panelist who would not be drawn from the jurisdiction of either of the parties to a dispute).”

Why should an arbitration be mandatory where the parties are strangers to each other? The question is important because as a matter of law no party can be compelled to arbitrate a dispute. Ordinarily, parties must mutually agree to waive the right to be heard in a court of law. What is unusual with the UDRP is that while arbitration is a non-negotiable feature of the registration agreement it is not a bilateral contract with the trademark holder. Trademark holders aggrieved by violation of their rights are third-party beneficiaries to a weave of contracts between ICANN and the Registrar on the one hand and the Registrar and the Registrant on the other.

The terms incorporated into the registration agreement are dictated by ICANN to its accredited Registrars who alone are authorized to register domain names pursuant to a Registrar Accreditation Agreement (“RAA”). The latest version of the RAA dated May 21, 2009 is available at <http://www.icann.org/en/registrars/ra-agreement-21may09-en.htm>. The RAA contains two provisions as conditions for registration of a domain name. In the first, “The Registered Name Holder shall agree that its registration of the Registered Name shall be subject to suspension, cancellation, or transfer pursuant to any ICANN adopted specification or policy” [Art. 3.7.7.11]. The second requires the Registrar to “have in place a policy and procedures for resolution of disputes concerning Registered Names ... [which u]ntil different policies and procedures are established by ICANN under Section 4, Registrar shall comply with the Uniform Domain Name Dispute Resolution Policy” [Art. 3.8]. Acceptance of the provisions in the registration agreement that incorporates the UDRP is a condition for registering a domain name.

The registrant’s agreement to submit to a mandatory proceeding is joined with a representation and warranty provision that its choice of domain name “will not infringe upon or otherwise violate the rights of any third party” [Para. 4 of the Policy]. The UDRP is designed to determine whether the registration does infringe upon or otherwise violate the rights of the trademark holder and if it does the respondent forfeits the disputed domain name.

June 23, 2010

Broad Interpretation of the UDRP For Standing and What Constitutes Valuable Consideration

Standing to maintain a UDRP proceeding is not limited to persons actually having a trademark. It is “well-established” notes the Panel in The Old Course Limited v. Patrick Woods, D2010-0682 (WIPO June 6, 2010) that “a high profile announcement of a new corporate name can generate goodwill in that name ... and [is] recognised as sufficient for the purposes of the first element of the UDRP.” The principle is set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions at paragraph 3.1 as a consensus. It reads

In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.

The “potentiality” principle was initially applied against domain names combining trademarks of merger partners. This is made clear in the WIPO Overview: “This often occurs after a merger between two companies, before the new trademark rights can arise.” All the early cases cited in the Overview were of this type. For example, combining MONSANTO and PHARMACIA [Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., D2000-0446 (WIPO August 1, 2000)]; combining MAERSK and SEALAND [A.P. Møller v. Web Society, D2000-0135 (WIPO April 15, 2000)]. However, the final clause of the Overview extended the principle to include a circumstance in which “the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.”

In The Old Course the Panel applies the principle to the Complainant’s change of name of its hotel from “Hamilton Hall” to “Hamilton Grand.” “The Panel notes that the Respondent registered the Domain Name and the corresponding ‘.co.uk’ domain name the day after the exhibition at which the Complainant announced its intention to renovate Hamilton Hall and rename it ‘The Hamilton Grand’.” No mystery here that the Respondent saw an opportunity to cash in on a nascent trademark.

Opportunistic registrations generally involve paragraph 4(b)(i) of the Policy, that the domain name was acquired primarily for the purpose of exchanging it for “for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Panels have also interpreted the Policy in the broadest possible manner. “Valuable consideration” can include demands for assistance in developing a business for example. The Respondent in The Old Course fits this mold. “On April 19, 2010, the Respondent wrote by email to the Complainant, referring to earlier telephone calls, and stating that he owned the website domains <thehamiltongrand.com> and <thehamiltongrand.co.uk>, which (he said) Kohler Group should really own on the basis that the new Hamilton building in St. Andrews was going to be called ‘The Hamilton Grand’.” The Respondent was not so crass (he insists) as to “want money for handing over these websites to you.” But he wanted something in exchange. Rather, what he wanted was “to discuss how Kohler can help me to build my business in St Andrews.” Very entrepreneurial!

June 22, 2010

Status of Respondent’s Right or Legitimate Interest When Trademark (Of Which it is the Assignee) is Cancelled Under Section 8 of the Trademark Law

Domain names identical or confusingly similar to trademarks are not for that reason infringing another's right. It is basic UDRP law that preexisting or concurrent rights (there being no evidence of opportunism) are sufficient to defeat a claim of abusive registration. This is not undermined by a respondent failing to comply with its statutory deadline. It continues to enjoy its benefits regardless of having its trademark cancelled for failure to submit a Section 8 affidavit. It affects a respondent only to the extent that it loses (if it has one) its trademark registration . Otherwise, its right or legitimate interest in a domain name is not dependent on its having a trademark but in its using the domain name for a bona fide offering of goods or service “before notice” from the trademark holder [paragraph 4(c)(i) of the Policy]. Trademarks and domain names have in common pithy lexical arrangements that sometimes conflict but also allow for co-existing rights.

“Before notice” applies to respondents whose legitimate interest accrues by reason of their business activity on the Internet (which is the more usual application of the defense) as well to those respondents having a registered or unregistered trademark priority in the disputed term – a legal right rather than or in addition to a legitimate interest. The Respondent in Denis Freiden v. 411WEB Directory, FA1005001323356 (Nat. Arb. Forum June 18, 2010) for example appears to have both a “right” (as assignee of a registered trademark MYCITY) and a “legitimate interest” in the disputed domain name. Complainant nevertheless argues that its newly registered trademark MYCYTY (a deliberate misspelling of “city”) trumps the Respondent’s <mycity.com> because it has a present trademark and the Respondent (presently) does not. The parties are in competition in the online directory business. A current application by the Respondent has been indefinitely suspended.

On the issue of the Respondent’s “trademark right” as alleged assignee of MYCITY, while the facts are not entirely clear it is certain that there was a registration for that trademark, although now cancelled. The USPTO records show that the trademark holder for MYCITY (name of the assignee not disclosed) failed to file a Section 8 affidavit of continuing use between the 5th and 6th years (15 U.S.C. 1058(a)). Although the Respondent offered no evidence to prove that it was the assignee of the trademark (it only asserted that fact), the Complainant at least “acknowledge[d] that the Respondent’s rights [if it had any] date back to 1995 through the lapsed Trademark Registration.”

At worst, therefore, the Respondent in Denis Freiden is operating its business without a registered trademark, which it does not need. However, it established its right or legitimate interest from its use of the domain name “as early as October 31, 2004 [before the first use in commerce of the Complainant’s MYCYTY], and [it] showed that the use continues to the present day with the same mark and logo displayed at <mycity.com>.” The Respondent had both a preexisting as well as (arguably) a concurrent right to the domain name

June 21, 2010

Domain Names Composed of Foreign Words Directed to English Language Consumers

Domain names composed of common foreign words (allegedly without knowledge that they are identical or confusingly similar to complainant’s trademark) are generally treated as generic terms. Dictionary words like “mariposa”, “mirabella” and “clara” have been unsuccessfully challenged by domestic and foreign trademark holders. Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010) (<clara.com>, meaning “clear” in Spanish); Mirabella Beauty Products, LLC v. Mrs Jello, LLC., D2009-0673(WIPO July 29, 2009) (<mirabella.com> meaning “look beautiful” in Spanish); and Mariposa Ltd. v. Stonecutter, Don Sawtelle, D2010-0200 (WIPO March 28, 2010) (<mariposa.com”, meaning “butterfly” in Spanish). Bad faith registrations in this kind of case turn on the use to which the domain name is being put; that is, does the website exhibit any signs that the complainant or its trademark is known to the respondent?

Where the content of the website is derivative or runs parallel with that which the Complainant offers or upon which its reputation rests the domain name is more likely than not to be found abusive. The Respondent in Vaga-lume Midia Ltda v. Kevo Ouz d/b/a Online Marketing Realty, FA0910001287151 (Nat. Arb. Forum December 7, 2009) simply dropped the country code extensions used by the Complainant who projects itself on the Internet through <vagalume.com.br> (and other country code extensions in South America). The majority concluded over a vigorous dissent that the registration and use of <vagalume.com> (which means “firefly” in Spanish) constituted abusive registration. The majority found that the Respondent was essentially capturing the Complainant’s audience; had, in fact, acquired the domain name for its traffic generating power. A foreign word equally common in its own language but less familiar to the targeted Internet users coupled with an English pronoun raises an alarm of abusive registration. Such was the case in Teva Pharmaceutical Industries Ltd. challenged Protected Domain Services / Dworld c/o Basil Administrator in D2010-0532 (WIPO May 28, 2010) for <myteva.com> in which “teva” means beauty in Hebrew but has no meaning in English.

A more subtle variant involves a trademark that has no meaning in any language but by happenstance is similar to a common word in a foreign language. The Complainant in West Corporation v. Domain Admin c/o Mrs Jello, LLC., FA1004001321540 (Nat. Arb. Forum June 14, 2010) cries foul because the disputed domain name <entrado.com> is “confusingly similar” to its trademark INTRADO. However, “intrado” is a made up word while “entrado” is a common word in Spanish meaning “coming in” or “entrance.” The Panel agreed that the domain name was confusingly similar to the trademark, but rejected the contention that the Respondent lacked rights or legitimate interests in it or that the domain name was registered in bad faith. A trademark holder’s failure to consider similar (in fact, confusingly similar) linguistic constructions in other languages is at the root of the problem. “Complainant’s use and registration ... of a mark similar to the common term constituting the disputed domain name cannot prevent others from using the term in a wholly different context that is aligned with the term’s common descriptive meaning.”

The extended or figurative meaning of “entrado” appears to include a sexual reference. However offensive this may be to the Complainant it is an unintended consequence of its choice of trademark. The “mere fact that a domain name resolves to a website featuring adult content does not per se render the registrant devoid of rights or legitimate interests in the domain name.” There was no evidence that the domain name was registered to capture the Complainant's traffic.

June 18, 2010

Denying Renewal and Reopening of a Closed Case

A number of panelists have expressly granted permission to complainants or paved their way to refiling complaints on grounds that would not ordinarily be permitted under the test announced in Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd. D2000-0703 (WIPO November 10, 2000). The Panel in Umpqua Investments, Inc. v. Private Registrations Aktien Gesellschaft, FA1005001324718 (Nat. Arb. Forum June 15, 2010) for example denied the complaint with the surprising ruling that it was “without prejudice” without any discernible basis for inviting the Complainant to refile. The question is, Under what circumstances and on what proof is a complainant permitted to renew its claim? “Without prejudice” is arguably appropriate for certain situations, where the trademark is being currently contested administratively or judicially. In Family Watchdog LLC v. Lester Schweiss, D2008-0183 (WIPO April 23, 2008) for example the Complainant’s trademark registration was being contested before the Trademark Trial and Appeal Board in a cancellation proceeding. In such circumstances, Panels have invited complainants to refile a UDRP complaint once the issue has been resolved, Jonathan Ive v. Harry Jones, D2009-0301 (WIPO May 5, 2009).

The Grove test as refined in Creo Products Limited v. Website in Development, D2000-1490 (WIPO January 19, 2001) is a simple formulation that limits reargument or renewal of a prior application for relief to 1) serious misconduct by a judge, juror, witness or lawyer; 2) perjured evidence being offered to the Court; 3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and 4) a breach of natural justice/due process. “The integrity of the ICANN Policy and procedure” (the Panel in Grove Broadcasting stated) “requires that if a reconsideration of the same Complaint is to be entertained, there should be proof that one of the strict grounds discussed in this decision has been made out.” Ground 3 is the usual battleground in a UDRP case.

The more rigorous answer to the issue of refiling is provided in Fondazione Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH), D2009-1421 (WIPO May 31, 2010) (citing Creo Products), attempting to reopen and reargue D2001-0566 (WIPO June 25, 2001). The Complainant contended that it had received a decision from the Verona Tribunal in which the Tribunal held that its “trademark rights” existed “long before the disputed domain name was registered.” Evidently, the Verona Tribunal’s jurisdiction is limited. It appears not to resolve the issue of rights to a disputed domain name.

Having a trademark (or a right assimilable to it under Italian civil law) is not conclusive. In the earlier case the Panel “avoided making a determination regarding whether Complainant had established rights in a trademark.” Rather, it determined that the Respondent had “established rights or legitimate interests in the disputed domain name through a bona fide offering of services prior to notice of a dispute.” “[E]ven though the litigious designations are confusingly similar and that Complainant may have well established rights in the designation ‘Arean di Verona’” the Complainant could not prevail in a UDRP proceeding.

The Complainant offered the Verona Tribunal decision as a change of circumstance, but no other basis to support reopening the case. In rejecting the complaint, the Panel made two points that are relevant to an understanding of this issue. First, the “Verona Tribunal does not have some form of appellate jurisdiction regarding legal or factual determinations made by an administrative panel operating under the Policy” any more than “does an administrative panel operating under the Policy ... [have] authority to intervene in the processes or decisions of an Italian civil court.” Second, and more to the point, “this Panel finds that Complainant has not presented any materially changed fact postdating the decision by the prior panel in 2001.”

June 17, 2010

Recovering Domain Name After Failing to Renew Registration

Domain names and trademarks alike can be lost by termination or cancellation if registrations are not renewed (UDRP) or affirmed (Trademark Act) and once lost are retrievable, if at all, with effort. Under U.S. law, a trademark “shall be canceled” (15 U.S.C. 1058(a)) unless the registrant takes affirmative steps between the 5th and 6th years to maintain its currency by filing “an affidavit setting forth those goods or services recited in the registration on or in connection with which the mark is in use in commerce” (Id. 1058(b)(1)). For domain names, timing of renewal depends on the number of years for which they were registered and while registrars have notice procedures in place to forewarn of imminent termination lapses continue appearing on the UDRP dockets.

A lapse, however, an inadvertence to perform an administrative task, is not fatal if the trademark holder acts reasonably quickly to remedy the oversight. Zevex, Inc. v. Isaac Goldstein, FA1005001323005 (Nat. Arb. Forum June 15, 2010). On the other hand, a lengthy passage of time gives credence to the argument that the domain name has been abandoned. Radio Italia S.p.A. v. Mdnh Inc, Brendhan Hight, D2010-0329 (WIPO May 14, 2010). The Complainant owned <radioitalia.com> until 2000. A moderate passage of time can be offset by the complainant showing that the respondent is taking advantage of the trademark by populating the website with links to the complainant’s industry and its competitors.

Panelists have essentially rejected the view expressed in Corbis Corporation v. Zest, FA0107000098441 (Nat. Arb. Forum September 2, 2001) involving <digitalstock.com> that losers should be weepers and finders keepers (“There is an element of “finders keepers, losers weepers” in this decision. We believe that is as it should be.”) Nevertheless, the complainant should take care. When a domain name comes onto the market registrants have no way of knowing that it belonged to a trademark holder who inadvertently allowed it to lapse. Berenson & Company, Inc. v. Berenson Corp. c/o Babij, Terry, FA0909001283183 (Nat. Arb. Forum October 23, 2009). The Respondent was innocent of bad faith; it benefitted from the fortuity of the Complainant’s lapse.

It may to the respondent appear unfair that it can be deprived of the domain name. The Panel noted in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum February 10, 2003) that while “it is understandable that Respondent considers it unfair that a domain name registrar may auction an expired domain name the use of which may be encumbered by trademark rights, such auction of expired names is [] consistent with the registration system adopted and implemented by ICANN.”

Inadvertently allowing a registration to expire “does not mean that any Registrant is permitted to swoop in and acquire the registration.” This was the circumstance in Zevex and recently in ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010). Both these Complainants had owned their respective domain names for a long period of time and acted quickly to redeem what they had lost. The Zevex Respondent registered the disputed domain name on April 1, 2010, one day after Complainant’s redemption period ended. “Zevex” has no meaning in the English language so the term could not be used in any dictionary sense. The Panel inferred bad faith registration from bad faith use in populating the website with links to the pharmaceutical industry and Complainant’s competitors.

June 16, 2010

Likelihood of Confusion Not Relevant Unless Trade Name Qualifies as a Trademark

Although “trade names perform the same ‘origin function’ as trademarks, indicating the source or nature of the business entity they represent, and perform the same investment or advertising function” they are not (or not formally) accorded protection under the UDRP (Second WIPO Report, para. 311). Interjecting “not formally” is meant to emphasize that Panels have (to some extent) lowered the proof demands for protection of unregistered trademarks under common law principles reflecting perhaps the majority of commentators referred to in the Second Report who supported protection of trade names in the DNS “equivalent to that accorded to trademarks.” (id.) Nevertheless, the proof requirements are significant and the evidence for unregistered marks must be given the attention demanded to make a case for standing.

Trade names may be protected as common law trademarks, but only where the complainant offers sufficient proof that the public associates the mark as a source of goods or services. The Complainant in Glasgow Signs v. 1st Signs Limited trading as Sign-A-Rama, D2010-0409 (WIPO May 4, 2010) alleged that it had traded under the name “Glasgow Signs” since 2004. However (the Panel pointed out) “a person claiming rights in a descriptive term must show that the term has acquired a secondary meaning denoting its business.” Thus, although there may be a likelihood of confusion as the Complainant alleges the Panel stops his analysis on standing. The complainant either has trademark rights or it does not. If it does not the UDRP complaint must be dismissed.

WIPO’s recommendation two years into UDRP, “[d]espite the majority opinion that protection should be extended to trade names within the DNS, we do not consider that it is appropriate to modify the UDRP so as to allow complaints for the bad faith and misleading registration and use of trade names as domain names.” Among the reasons, was the following:

The UDRP was designed for, and applies to, straight-forward disputes, where there are rights on one side and no rights or legitimate interests on the other side. It was not designed to accommodate disputes involving interests on both sides.... Many trade name disputes, because of the relatively light burden imposed to establish eligibility for trade name protection, will involve interests on both sides.

In Glasgow Signs, “the Complaint fail[ed] at first base” for the reason that “the Complainant has not provided any specific evidence as to the extent of its use of the descriptive term, ‘Glasgow Signs’ in which it claims rights.” The specific evidence referred to by the Panel that would support unregistered trademark rights includes “the value of [the Complainant’s] sales using the alleged mark or of its expenditure on any advertising or other promotion under the mark. Nor has it disclosed the nature of any advertising or promotion.”There also was “no evidence showing that customers or suppliers of the Complainant have been taught to regard or have come to perceive the term as a brand.”

The Second Report does note in paragraph 320 that “[i]n the case of ccTLDs, we believe that much greater scope exists for allowing complaints under a dispute-resolution procedure for abusive registrations of trade names. Within the ccTLD, the problem of diversity does not exist in the same way and there is greater scope for applying the relevant national implementation of protection of trade names.” Thus, the Australian and New Zealand Policies, for example, protect trade names as well as trademarks. The Panel in Supre Pty Ltd v. Paul King, DAU2004-0006 (WIPO December 22, 2004) explains that “unlike the Uniform Domain Name Dispute Resolution Policy, the .au Domain Name Dispute Resolution Policy prohibits identity or confusing similarity with a ‘name’ as well as with a trade or service mark. ‘Name’ is then defined to include a complainant’s registered company name. So, in the present case, the Respondent has chosen a domain name, which is confusingly similar to the Complainant’s company name.”

Under UDRP, however, Complainant's use of a trade name, without any showing of secondary meaning associated with it, insufficiently demonstrates that Complainant has rights that support standing to complain about likelihood of confusion.

June 15, 2010

Prevailing Against One Respondent Does Not Guarantee Proving Bad Faith Against Another

There are many repeat complainants policing their trademarks in UDRP proceedings. Those of well known brands invariably prevail against defaulting, but not always against appearing respondents. Pharmaceuticals (Sanofi-Aventis), banks and finance (Citigroup, Inc., MasterCard International Incorporated) , fashion (Christian Dior Couture), retail (Harrods Limited, Burberry Limited), hotels and travel (Sheraton International Inc.), automobiles (Bayerische Motoren Werke AG (BMW AG)) and toy manufacturers (LEGO Juris A/S) are frequent targets. Lesser known brands composed of common words or descriptive phrases prevail some of the time. The demand for proof is inversely proportional to the strength of the mark. The less the strength, the more persuasive the proof required.

Aspen Holdings, Inc. owns the trademark 1ST QUOTE on the Principal Register. In the past year it has policed its trademark against three different respondents for the second level domain with the numeral spelled out, “first quote.” “1ST” and “first” are phonetically identical. The Complainant prevailed in the two earlier of the three cases, Aspen Holdings Inc. v. Christian P. Vandendorpe, D2009-1160 (WIPO October 16, 2009) (<firstquote.net>) and Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, D2009-0776 WIPO August 20, 2009) (<firstquote.org>). The Respondent defaulted in the first case and appeared in the second. In the most recent case, the Respondent also appeared and its defense was persuasive, Aspen Holdings, Inc. v. Isaac Goldstein, D2010-0576 (WIPO June 3, 2010) (<firstquote.com>).

Why does the Complainant lose when its experience has been to prevail? Or, turned around, what proof has the new Respondent offered that differs markedly from other records? The resolution of all cases depends on the factual circumstances supported by concrete evidence. Victoria Woo known by her stage name “Kianna Dior” prevailed over Christian Dior while other Dior respondents forfeited the disputed domain names. When a respondent defaults it is permissible to draw an adverse inference from its failure to defend its registration. It does not change the complainant’s burden to prove bad faith, but default is generally conclusive on the issue of right or legitimate interest in the disputed domain name. The Panel in the case of Aspen against Goldstein wants to make sure that she clearly distinguishes the facts before her from the record in the earlier two cases. “In this Panel’s assessment, the present case needs to be distinguished from previous - though not binding - cases decided under the UDRP.”

In Aspen Holdings against Vandendorpe the Panel found that while the word “quote” was frequently used in connection with financial products, the phrase “first quote” called for some explanation that was not forthcoming. The domain name – <firstquote.net> – “was registered only 5 days after the Complainant had first started using the term 1STQUOTE in commerce. As the respondent in the case had been involved in an earlier UDRP proceeding, and as he had not replied to the Complainant’s contentions, the panel in that case decided that these ‘factors when combined together are sufficient to tip the scales in the Complainant’s favour on the balance of probabilities’.”

In Aspen Holdings against Natsch the Respondent is a high volume registrant of domain names. I have mentioned in earlier Notes that Panels have reached near consensus that more is expected from this class of respondents. “The Panel notes that paragraph 2 of the Policy implicitly requires a registrant to make some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.” Moreover, citing cases that hold respondents accountable for their choices under the retroactive bad faith construction of the Policy, “the obligations imposed by paragraph 2 are an integral part of the Policy applicable to all registrants, [which] cannot be ignored.”

In contrast to the two earlier cases, the Respondent in Aspen Holdings against Goldstein “gave well-founded reasons why he was unaware of any known corporations operating under the brand name ‘first quote’ when acquiring the disputed domain name. Moreover, brought evidence to the Panel’s attention that numerous insurance companies are advertising under the term ‘first quote’.” The plethora of uses argues against any monopoly absent proof that the Respondent is taking advantage of the trademark rather than using the expression in its lay meaning. “To sum up .. compelling facts and circumstances on the record of this case do not suggest that the disputed domain name was registered in bad faith.”

June 14, 2010

Application of the Willful Blindness Standard to Registration and Use of an Expired Domain Name

Ordinarily, registration and use of dictionary words singly or combined to form a descriptive phrase are available to the first to register on the principle that common words cannot be monopolized. This principle, however, is not without qualification. It does not mean in every instance that a respondent is entitled to register common words that have achieved (by registration or common law) trademark status. On one side of the divide there are clearly common words available on a first come first served basis. Closer to the divide are combinations of common words. In many instances the difference between good and bad faith depends on the reputation of the trademark and the location of the parties. It also depends on the status of the respondent. There is a developing consensus that high volume purchasers and users of domain names are more accountable for their choices.

The existence of trademarks with a reputation in the marketplace cannot simply be ignored because they are composed of common words. Where the respondent is a domain name reseller it must show the steps it took in good faith to avoid registering domains which correspond to trademarks. “In mVisible Techs., Inc. v. Navigation Catalyst Sys., Inc., D2007-1141 (WIPO Nov. 20, 2007), a distinguished Panel underscored, as have other Panels, the notion that a sophisticated domainer cannot be ‘wilfully blind’ to whether a particular domain name may violate trademark rights.” Asserting ignorance of a complainant’s “trademark is not enough to avoid a finding of bad faith registration.”

The Complainant’s in Oregon Freeze Dry, Inc. v. Vertical Axis Inc., FA1003001316531 (Nat. Arb. Forum June 10, 2010) owns the trademark EASY MEAL which it acquired in 1984. The Respondent purchased <easymeal.com> after the prior registrant (not the Complainant) allowed it to expire in 2006. The Panel was divided. The case is in the murkier area of the divide. The majority based its finding of bad faith registration and use on a combination of facts. First, that as a high volume registrant the Respondent had a duty to investigate; second that it was offering the domain name for sale; third, that the website contained hyperlinks to the Complainant’s competitors.

While the general rule does not require a respondent to search trademark registers, in Oregon Freeze Dry the “Respondent has obvious and close links with the United States and is in the business of looking for opportunities generated by domain names becoming available for registration.” The dissent saw the circumstances differently: “To argue that a registrant who chooses descriptive terms and then must be held accountable because it later discovers them to be trademarked by some relatively obscure mark owner is completely the opposite of the UDRP principle.” The trend is toward greater accountability. The fact that undercuts the dissent’s position is the content of the website. Was it mere happenstance, or were the contents created to take advantage of the trademark? Actual knowledge is not required; willful blindness is not tolerated.

Panels have reached consensus on content. “The Respondent cannot say it does not bear responsibility for the sponsored links appearing on its website. It cannot disclaim responsibility for those links which concern the field of commercial activity in which the Complainant is a major player.” Indeed, “[t]he profitability of PPC links engendered by a well-known name must, over time, increase the saleability, and therefore, the price, of the disputed domain name. It is no excuse to say that the offer to sell is standard on a particular PPC website.”

June 11, 2010

Implausibility of Defensive Proof to Complainant’s Demand for Transfer of Domain Name

It is incongruous to combine words drawn from different languages to create a domain name in which the dominant word is identical to a complainant’s trademark. In Teva Pharmaceutical Industries Ltd. v. Protected Domain Services / Dworld c/o Basil Administrator, D2010-0532 (WIPO May 28, 2010) the Respondent combined the English word, “my”, with a transliteration of a Hebrew word, “Teva” to form <myteva.com>. Generally, combinations preceded by “my” have not fared well. Some explanation is expected if the respondent is to prevail. For example, Southwest Airlines Co. v. Cattitude a/k/a LJ Gehman, D2005-0410 (WIPO June 12, 2005) (<mysouthwest.com>): “a complainant’s adoption of a common geographically descriptive term for its service mark “faces a greater risk that the combination of that term with another common term will in fact distinguish the new combination.”

While “Teva” is a common term in Hebrew, its currency appreciates in its transliterated form as a trademark. In defense, the Respondent in Teva Pharmaceutical tried a number of tacks: that it had no knowledge of the Complainant or its trademark when it registered the domain name; that the dominant word corresponded with the manufacturer of sandals; that the dominant word was the name of a sporting event; that the transliteration was a common dictionary word meaning “nature.” In the Panel’s view

[w]hile the term “teva” might have meaning in Hebrew, there was no evidence that it has any meaning in English. The Panel does not consider that an ordinary Internet user would see the combination “myteva” and naturally think that the first word was used with its English meaning, while the second was used with its Hebrew meaning.... This suggests that the term “teva” in this context would be looked at for its trademark significance, rather than any generic meaning it might have in Hebrew, or otherwise.

The Respondent’s explanations were inconsistent. The content of the Respondent’s website is entirely in English. It “provided no evidence of it having any connection with ‘the Teva Mountain Games’, or any demonstrable preparations to use the disputed domain name in connection with shoes, notwithstanding the fact that as of the date of this Decision, the disputed domain name resolves to a website which concerns Teva footwear.” Indeed, the reference to Teva footwear was clearly an afterthought invented for the occasion because it only appeared on the webpage after the Respondent received the complaint. Images of the webpages captured prior to the change displayed sponsored links relating to the pharmaceutical industry, the Complainant’s industry. “The Respondent’s assertion in its Response that the website at the disputed domain name is the ‘original site that was developed in 2008' is without factual support and does not overcome the Complainant’s prima facie case.”

Caught prevaricating is not helpful to any party. Here,

[t]he Respondent’s inability to demonstrate any legitimate interest in the disputed domain name, and the internal inconsistency of its explanations for why it registered the disputed domain name, further support a finding against it on this ground.

The Respondent complained that “it made no meaningful financial gain from pay-per-click revenue.” This is both irrelevant, nonsense as a defense and, curiously, an admission that the Respondent’s purpose was to create a stream of income which would violate paragraph 4(b)(iv) of the Policy.

June 10, 2010

Favoring Complainant in Pornosquatting Case Where Respondent Lacks Rights or Legitimate Interests in the Domain Name

Respondents have a heavy burden in proving rights or legitimate interests in domain names for purveying pornographic content identical or confusingly similar to a trademark. Correspondingly, the complainant’s burden is lightened in proving bad faith. The question in these cases is whether the respondent had the complainant or its trademark in mind when it registered the domain name; and even if it did not, whether the use of the domain name for that purpose establishes bad faith registration? With international brands and famous names, evidence of targeting is manifest in the trademark chosen. There is a telling observation in David Green v. cafeinternet.com E-mail Services, NA NA, D2010-0425 (WIPO May 25, 2010) that “the textual string of the disputed domain name <cafeinternet.com> does not call to mind any generic or descriptive association with an adult-content website.” This is an ironic analogue for expressing the often stated principle applied to domain names composed of generic words or descriptive phrases that it is bad faith to register and use domain names for their trademark value.

Generally, regardless of the subject matter of the website and as long as there is no infringement of the complainant's rights, “[domain names] registered because of their attraction as dictionary words, and not because of their value as trademarks [do not contravene the Policy],” The Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum August 6, 2004) (<landmarks.com>). This principle carries over into pornographic websites. As the Panel in Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, D2005-0636 (WIPO August 18, 2005) states, “display of pornographic imagery on a web page, without more, no matter how offensive, repulsive or antithetical to contemporary society mores – and some of Respondent’s imagery certainly falls within that rubric – does not as such constitute bad faith under the Policy.” Indeed, “adult sex sites are perfectly legal and constitute bona fide offerings of goods or services,” Motorola, Inc. vs NewGate Internet, Inc., D2000-0079 (WIPO April 20, 2000).

However (the Panel in Sound Unseen continues) :

[B]ad faith under the Policy may very well arise where a domain name, which infringes on the mark of another by virtue of being identical or confusingly similar to that mark, is used by a respondent as an instrumentality to intentionally link and direct unsuspecting users, who seek information on a good or service associated with that mark, to a pornographic site instead. In such instances, those users would not be exposed to a respondent’s pornographic content but for that linkage.

The split decision in David Green -- some commentators have found the majority's reasoning puzzling -- is understandable because the record did not unequivocally and concretely establish that in registering the disputed domain name the Respondent had the Complainant’s trademark in mind; the website had also been operating for 13 years without objection which made the having in mind connection less than convincing. Even so, the dissenting member recognized that “this was a close call.” For the majority, the facts that tipped the scale lie not in or not specifically in the commonness of the name “café internet” but in the Respondent’s failure to comply with its registration duties to maintain accurate disclosure of its identity. “Respondent has failed to provide details of its true name or identity.... These facts suggest that Respondent provided a false name and false contact details in an effort to make identification and communication impossible, thereby supporting a finding of bad faith in this particular case.” The dissent did not condone Respondent's failure but rested his conclusion on the paucity of the record.

Lacking right or legitimate interest in the disputed domain name and, according to the majority in David Green, “linking [it] to adult-oriented websites is a widely accepted evidence of use in bad faith.” While the decisions cited by the majority for this proposition are hardly conclusive it is true that a pornographer has to demonstrate a clean record even in equivocal circumstances where it may even have registered the domain name before the trademark, that it is in compliance with its registration duties and is using the domain name in its dictionary sense. For example, the Respondent in CHRISTIAN DIOR COUTURE v. Paul Farley, D2008-0008 (WIPO February 2, 2008) (she “offers bondage, discipline and sado-masochism services ... to customers in the San Francisco Bay and Washington D.C. areas of the United States”) is known by her stage name "Anna Dior", hence she passes her legitimacy test for <annadior.com>.

June 9, 2010

Unawareness of Complainant or Its Trademark Supports Good Faith Registration

There can be two independent reasons for unawareness of a complainant or its trademark. One is the trademark’s lexical composition – generic through fanciful; the other is geographic distance. A lexically unrecognized trademark outside its territorial market is less likely to be known to a domain name registrant. Both these reasons are present in GoFit LLC v. Dom Administration, DI S.A. and International Services Company SA, D2010-0367 (WIPO May 19, 2010). The disputed domain name <gofit.com> and the trademark “GOFIT.NET” is (as the Respondent alleges) an expression in common use, meaning “getting fit” or relating to “fitness.” The parties are respectively in the United States and Europe. They could also be in different states of the United States, CNRV, Inc. v. Vertical Axis, Inc., FA01300901 (Nat. Arb. Forum May 3, 2010).

The Panel held that the domain name in GoFit was confusingly similar to the trademark, but the Complainant offered “no evidence that the Respondent used the disputed domain name in bad faith or that there is any [likelihood of] confusion.” The case illustrates the uphill battle for a holder whose trademark interest is later in time, not the only user of the registered term and whose market reach is limited. “In addition it appears from the evidence before the Panel that the term ‘GoFit’ is in common usage with 1443 domain names incorporating the term which suggests that even had the Complainant undertaken some degree of Internet or trademark searching at the time of registration it would have found numerous co-existing users of marks or domain names incorporating ‘GoFit’.”

The Respondent argued and the Panel agreed that “this is not a case of cybersquatting which the Policy was designed to address but is rather an example of a Complainant deciding after the fact that it wishes to obtain a domain name which was not available when it initially chose its domain name and brand.” The Panel held that in its view

it appears to be a case in which the Complainant is trying to obtain the Disputed Domain Name after the fact. When it originally tried to register the Disputed Domain Name , the Complainant found that it was already registered by a third party other than the Respondent and consequently chose <gofit.net> as its domain name and developed its website at this domain name