Archives -- 2009 and 2010
DOMAIN NAME JURISPRUDENCE &
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COMMENTARIES ON UDRP DECISIONSGerald M. Levine, Esq.
(212) 596-0851, E-Mail
JANUARY 2009 NOTES , DATES ARE IN REVERSE ORDER
As a companion to yesterday’s Note, a respondent can have rights or legitimate interests in a domain name incorporating generic words or descriptive terms “even if those names correspond to a valid trademark,” Alexis C. Le Hara v. Vertical Axis, Inc c/o Domain Administrator, FA0809001225832 (Nat. Arb. Forum November 26, 2008) in which the disputed domain name is <sellersmarket.com>. The Complainant owned a valid trademark in SELLER’S MARKET which issued after the domain registration. However, registration of a domain name that antedates a trademark – an issue discussed in earlier Notes – is not a fact from which a negative inference can be drawn in the complainant’s favor, unless there is proof of exploitative intent. The fact that a domain name is identical or confusingly similar is evidence only that the complainant has a trademark that satisfies the ¶4(a)(i) requirement of the Policy. What this means is explained by the Panel in Bag Boy LLC v. Chad Wright & WebQuest.com, Inc., FA 530334 (Nat. Arb. Forum September 15, 2005) in which the panel 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 registered trademark in Alexis C. Le Hara although appropriate for the services offered is the epitome of generic. If closeness in time of the two registrations is suspicious – the Complainant argued for constructive knowledge of the mark prior to issuance – suspicion is not evidence of knowledge. Undermining the Complainant's argument is that the parties reside on opposite coasts of the United States, in California and New Jersey. This lowers the likelihood of exploitative intent. The Complainant offered no evidence that the mark used by its real estate broker services was recognized by an identifiable body of consumers in a market distant from its place of business who associated it with the Complainant prior to the issuance of the trademark registration.
The key to the Panel's analysis – which should come as no surprise and if it does complainants should do more homework before they initiate proceedings – is demonstrating a level of knowledge or awareness from which a strong inference can be drawn of exploitative intent. Nothing less is good enough.
Drawing Inferences from Little Evidence
Proof of a common law right is an undertaking that rises in difficulty as the alleged mark descends to generic and descriptive terms. Examples litter the databases and many have been discussed in these Notes. The consensus, set forth in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Para. 1.7, is that the “complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services.” The relevant evidence of such “secondary meaning” includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” A complainant’s right is not limited because “the secondary meaning ... exist[s only] in a small geographic area,” but unless the complainant's mark has wide currency – well known beyond dispute or sealed by judicial notice or having been found so in other cases by prior Panels – failure of proof is dispositive in favor of the respondent.
“College” and “Network” are generic singly and descriptive joined, The College Network, Inc. v. IV-MEDIA, LLC, FA0811001234688 (Nat. Arb. Forum January 23, 2009). Although the Complainant provided evidence of the dollar amount spent in advertising its products and of its net sales, 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.”
Inferences are drawn both from what is offered and what is omitted from the record. It is expected that the party who controls the evidence offers it. The Respondent's answer should have alerted Complainant of its deficiency of proof because Respondent cited cases setting forth the requirements to prove a common law right, but in its additional submission the Complainant still failed to supplement the record. As a result, the “Panel [could] only conclude Complainant does not have sufficient evidence to meet its burden of showing secondary meaning in the mark” because if it did, why naturally!, it would have offered it.
New Comment, LexisNexis Trademark Blog:
Bona Fide Use of Domain Name Prior to Notice
Of two parties equally entitled to a domain name, even though one has a registered trademark and the other does not, the first to register has a superior right unless there is proof that the respondent with knowledge of the complainant or its mark has taken advantage of the complainant’s good will to redirect Internet users to its own website. However, “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)....
Pieties of a Serial Cybersquatter
Texas International Property Associates- NA NA is one of the more artful serial cybersquatters. When caught in its own web, it is all Uriah Heep (Charles Dickens, not the band). Its modus operandi when the complainant is represented by counsel or knows what it is doing is to plead no fault, agree voluntarily to transfer and request that “in the interest of judicial economy” the Panel not conduct an analysis of the paragraph 4(a) requirements. On the other hand, when it has in its web a pro se complainant who knows not what he is doing either in prosecuting a UDRP proceeding or applying to the USPTO for a trademark, its piety in ridiculing his claim borders on the nauseating. The Complainant in Rask Cycle LLC v. Texas International Property Associates- NA NA, FA0808001221628 (Nat. Arb. Forum October 21, 2008) is a small business owner who alleges that it “sells motorcycle parts and accessories, some of which are in-house manufactured and sold only through the Complainant’s efforts as “Rask Cycle” and “Rask Cycles.” The disputed domain name is <raskcycles.com>; the disputed domain name is <raskcycle.com>; Texas International is thereby typosquatting its way into the Complainant’s cyberspace. (Ironically, the WIPO Final Report at ¶172 provided a safe harbor for small businesses as respondents, but now the wheel is turning and there are respondent predators of small businesses with immense war chests with sophists as counsel).
This having been said, it is useful to explore why the Complainant in Rask Cycle failed to make traction. A party cannot rely on allegations unsupported by proof. “Rask” is the Complainant’s surname, which combined with “Cycles” is a trade name. Surnames and trade names (together with geographic indicators) are expressly excluded from the remedies of the UDRP unless the complainant either has a registered trademark or can demonstrate that the public associates the asserted mark with its goods and services. Rask Cycles’ application to the USPTO was found deficient by the Examining Attorney in the several respects gleefully identified by Texas International in its answer. Surnames as such are not registrable; there was also a problem with the identification of the applicant’s services and its specimen. Thus, the Panel’s comment, “[a]lthough the Panel is satisfied that Complainant has rights in that business identifier, Complainant must have asserted rights in a mark (trademark or service mark).” In the Panel’s view, Rask Cycles did not provide enough evidence to pass the ¶4(a)(i) test. Although Rask Cycles still has time to respond to the Examining Attorney’s objections and move its trademark application along, it needs to do it correctly, on pain of abandonment.
Helpful though the WIPO and Nat. Arb. Forum Centers are in instructing parties and making material available to assist them, it clearly is not enough. Pro se litigants are at a particular disadvantage to scavengers operating PPC websites identical or confusingly similar to complainants’ marks or monikers. The Panel in Rask Cycle found that the Complainant failed to establish common law rights in the RASK CYCLE mark because “Complainant has provided no relevant evidence of secondary meaning or use in connection with the provision of goods or services.” There are always cases to cite as precedents for such a general proposition, but rejecting the minimal evidence offered for a common law right the Panel turned a blind eye to the obvious; it delivered a “gotcha” decision in favor of the Respondent. See Note for January 23rd Brent Redmond Transportation, Inc. v. SSI Express, D2008-1765 (WIPO December 30, 2008).
It would not offend the UDRP to invoke in appropriate cases either or both Rules 12 or 15(a) of the Rules of the Policy or to dismiss the complaint without prejudice to its refiling. Skyy Spirits LLC v. Krzenszsczynski, FA1220829 (Nat. Arb. Forum Nov. 26, 2008). There is also precedent for refiling a complaint based on subsequent registration of a trademark. Alpine Entertainment Group, Inc. v. Walter Alvarez, D2007-1082 (WIPO December 4, 2007), in which the Panel stated that “while [the Complainant] may have chosen the original time of filing ... [it] has nevertheless presented new and probative evidence which was not in existence at that point, and of which the previous panel did not have the benefit in rendering its earlier decision.”
An English speaking respondent registers a domain name incorporating a foreign word that in France is registered as a trademark. In Future France v. Name Administration Inc. (BVI), D2008-1422 (WIPO December 8, 2008) two of the three panelists are English speakers who deny the complaint to transfer; the third panelist, a French attorney dissents and finds bad faith registration and use. The majority “refuses to find it unreasonable for the Respondent to view the term ‘PC jeux’ as a combination of common or generic English and French terms meaning roughly ‘personal computer games’ in French.” Why? Because
the Panel does not view the Respondent’s use of French on the Respondent’s website connected to this disputed domain name as evidence of bad faith, since it would be reasonable to use the French language in connection with a domain name that is at least partly French.
Significantly, the evidence included proof that the Respondent uses “the French language in a portion of the Respondent’s website at the disputed domain name, <pcjeux.com>.” The dissent not unreasonably concludes that
The Respondent uses the domain name only to host links to third party websites that offer goods and services in areas corresponding to the Complainant’s products and he derives revenues from that activity.... The Respondent intended to capitalize on the value created by the Complainant’s well known trademarks in order to derive revenue from merely hosting French language links to third party websites. And the French Internet users are victims of that bad faith behavior.
What if, as is not infrequently the case, the circumstances were reversed, that the respondent a foreign speaker registers a domain name incorporating a trademark composed of an English word, arguably generic, but nevertheless well known in English speaking venues, and launches the website in English? And, the Center appoints an English speaking panelist? The respondent would have some explaining to do, particularly if it was – as is the Respondent in Future France – a large volume registrant who boastfully admits that it is “well known for its use of generic domain names.” Should the result in Future France be any different from that in Abu Dhabi Future Energy Company PJSC v. John Pepin, D2008-1560 (WIPO December 22, 2008) in which the Panel – an attorney trained in England and registered with an office in the United Arab Emirates – found that the registration of the disputed domain names evidenced “exploitative intent”? Or, is the majority in Future France simply as provincial as its decision appears?
The Panel in yesterday’s Note stated that his analysis of the Complainant’s deficiency of proof was “not intended as slavish insistence on procedure or the final stroke in a game of “gotcha,” Brent Redmond Transportation, Inc. v. SSI Express, D2008-1765 (WIPO December 30, 2008), but of course, in a sense, it was precisely that. Deficient though the record clearly was it was evident from the allegations that <brentredmondtransportation.com> was an abusive registration. The Panel himself could not have been clearer: “Indeed the facts pleaded in the Complaint, if true, make out a garden-variety case of cybersquatting: a newly-formed company registers a domain name incorporating a competitor’s mark and re-directs Internet users seeking Complainant to the competitor’s website.” But, as the Panel also noted, default in pleading is not an admission. That which the Complainant needed to do – support his allegations with proof – he could easily have done: “any number of publicly available data could have accompanied the Complaint to make that point.” In an analogous situation although involving insufficient evidence of trademark rights [¶4(a)(i)] the Panel in Gable & Gotwals, Inc. d/b/a GableGotwals v. Dave Jackson, FA0806001212305 (Nat. Arb. Forum September 18, 2008) and Thomas D. Hathaway v. DJ Wimberly, FA0807001216935 (Nat. Arb. Forum September 18, 2008) dismissed the complaints without prejudice; unusual perhaps but a way of ameliorating the harsh result.
Whether Brent Redmond would have fared better with a different panelist, there are certainly cases in which parties have been unlucky in the draw of appointment; what is serendipitous for one is grievous for the other. The Respondent in Fiat Auto S.p.A. v. Abarth Studio, D2008-1756 (WIPO January 7, 2009) registered four domains in the most valuable gTLDs, <abarth.com>, <abarth.biz>, <abarth.net> and <abarth.org>. The Complainant owns the trademark ABARTH. The Panel noted that the Complainant had “submitted incontrovertible evidence of its ownership of the trademark ABARTH showing continuity over many years and through the relevant time frame” but credited the Respondent’s statement that he was an afficianado of the racing cars produced by the Complainant and the sites were dedicated to noncommercial use [¶4(c)(iii)]. But why a fan needs to register four domains essentially monopolizing the generic opportunities, is not explained; neither is it explored by the Panel except passingly in a footnote which reads:
Nevertheless, it is not clear to the Panel why a genuine fan would necessarily have a need for coverage over four separate domains where each domain is itself identical to the mark at issue.
Perhaps a more vigorous skepticism was called for which a different panelist would have pursued. The Complainant’s only recourse other than taking the matter to a court of law is the Panel’s comment also in the footnote that “[i]If in the future such use were to take on an exploitative character, and action were to be brought by the Complainant, it would obviously be a matter for review on the record as it then stood.” An observation which is equally true for the Complainant in Brent Redmond.
Limitations on Panelists’ Authority
ICANN panelists undoubtedly have different views about the scope of the UDRP – especially when it shades into the penumbra – as they do to the reach of their authority even while acknowledging that both scope and authority are limited. “Many panels have noted that the Policy is intended solely for a limited class of cases, those involving cybersquatting,” Brent Redmond Transportation, Inc. v. SSI Express, D2008-1765 (WIPO December 30, 2008). However, the term “cybersquatting” is not inelastic and we know from decisions that panelists have construed the Policy to include abusive practices more generally as long as the dominant issue is the respondent’s intention in registering and using a domain name identical or confusingly similar to a complainant’s trademark.
Scope defines only part of panelists' authority. It does not address constraints in assessing the record, the most significant of which the consequence of failing to appear. “Unlike in civil litigation in the United States of America, failure to file a response in a Policy proceeding does not constitute an admission of any matter pleaded in the Complaint or result in the Policy equivalent of a default judgment, and a default does not require the Panel to accept as true any matter pleaded but not proven,” Brent Redmond. Since the UDRP model does not compel the respondent to appear the complainant's burden cannot lifted by admissions. In contrast to the more familiar ADR model it also does not confer on panelists the “broad” authority typified in traditional arbitration proceedings in which the parties submit to the arbitrator “all disputes, claims, or controversies arising from or relating to this contract or the relationships which result from this contract.” Rather, panelists’ authority is limited to determining based on a record most generally marshaled by the complainant whether the registration of a particular domain name violates the rights of a third party trademark owner. Authority derives not from a bilateral agreement between the trademark owner/complainant and the respondent, but rather from a contract between the registrar and registrant of which the complainant is a third party beneficiary.
Panelists have the basic authority “[l]ike any other tribunal” to determine jurisdiction, Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO March 14, 2000); more importantly, they are empowered to interpret the Policy “in such a way as to give effect to its aims and purposes,” Mamas & Papas (Holdings) Limited, Mamas & Papas (Retail) Limited v. QTK Internet/Name Proxy, D2004-0496 (WIPO August 14, 2004). They should not be deterred from either complexity of factual circumstances or arguments that the issues presented are outside the Policy’s scope. “Just because the record is complex does not mean that the Panel should decline to review it,” Bootie Brewing Company v. Deanna D. Ward and Grabebottie Inc., D2003-0185 (WIPO May 28, 2003). Indeed, the panelist has an “obligation ... to make the best findings it can, by a preponderance of the evidence, based on the record submitted.” Moreover, its jurisdiction cannot be divested “by attempting to characterize this matter as simply a ‘trademark dispute,” The Estate of Marlon Brando v. thewordbank twb, FA0506000505502 (Nat. Arb. Forum August 16, 2005).
These decisions, however, state what the panelist can do when the record before him or her proves a party’s contentions. There is a different situation when the record is incomplete. The panelist is then constrained because “[w]hen a registrant submits to a Policy proceeding in its agreement with a registrar, it consents to a proceeding operated in accordance with the Policy and the Rules; it has not granted a panel general jurisdiction to operate as he or she sees fit,” Brent Redmond. If there is “no evidence to support allegations necessary to establish that Respondent registered the disputed domain name in bad faith or lacks rights or a legitimate interest in it” the panelist cannot make the complainant’s case “[p]articularly when such proof, if it exists, is readily available to a party without recourse to discovery.”
The Panel in Brent Redmond noted that “[a]ny number of publicly available data could have accompanied the Complaint to make [the necesseary] point[s].” He offers this coda to his analysis:
The foregoing is not intended as slavish insistence on procedure or the final stroke in a game of “gotcha.” Requiring that each party submit available proof sufficient to establish the requisite Policy elements is a necessary corollary of the Policy’s purpose of providing an expeditious means of resolving a narrow class of disputes involving cybersquatting.... Complainant here failed to do so even when it responded to the Complaint deficiency notice.
The problem is one of not paying attention to the rules; misconstruing the different procedures of the UDRP and rules of civil procedure can be fatal. Brent Redmond was on notice from the Center that his complaint was deficient but he failed to recognize what he needed to do to satisfy his burden of proof, and lost this UDRP round.
Unsettled Standard of Bad Faith for Reverse Domain Name Hijacking
The sole remedy for an innocent respondent dragged into a UDRP proceeding is a declaration of Reverse Domain Name Hijacking (“RDNH”). The proscribed conduct is defined in the Policy and Rules, but the standard for measuring its application which can be clear in the best decisions is nothing short of fuzzy in the worst. There appears to be a reluctance on the part of some panelists to make the declaration in the absence some further aggravating element, which is elusive. How elusive the element is can be seen in two recent decisions by three-member Panels; Hologic Inc. V. Vertical Axis, Inc. c/o Domain Administrator, FA0811001233395 (Nat. Arb. Forum January 13, 2009) a three-member panel unanimously rejected RDNH; David Robinson v. Brendan, Hight / MDNH Inc., D2008-1313 (WIPO October 27, 2008), a split decision favoring RDNH. A single Panel in a third case, ADITO Software GmbH v. Domain Admin, Mrs. Jello LLC, D2008-1771 (WIPO January 12, 2008) rejected RDNH but on proper grounds, that although the Complainant may not have provided sufficient evidence to make its case it had a registered mark that entitled it “to take action to protect.” In other words, the evidence pointed to Complainant acting in good faith than otherwise.
Panelists start with the same definitions from the Policy and rules, but their analyses in the three cases offer divergent views. RDNH “means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name,” (Paragraph 1 of the Policy). This is expanded and clarified in Paragraph 15(e) of the Rules of the Policy: “[I]f after considering the submissions the Panel finds that the complaint was brought in bad faith ... or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” The act dominantly proscribed is “bad faith” for the particular end of capturing a domain name rightfully owned by the registrant. To this lexicon is added the word “harass” and the phrase “abuse of the administrative proceeding.”
The unanimous Panel in Hologic concluded that “Perhaps Complainant should have also known that it could not prevail without presenting the Panel with at least some explanation tending to support its bare allegation that the Respondent acted in bad faith in registering and using such domain name.” The use of “perhaps” is inexplicable. The Panel had already reported that the Complainant had no trademark rights in FULL TERM at the time Respondent registered the disputed domain name. It cites a non-existent Supplemental Rule 1 for the correct proposition that “a finding of RDNH may be warranted where the Complainant ‘knew or should have known at the time it filed the Complainant that it could not prove one of the essential elements required by the Policy’.” The quotation within the quotation is drawn from an earlier case Carsales.com.au Ltd. v. On-Line Advice, D2003-0047 (WIPO April 8, 2004) in which the Complainant failed to offer “proof [supporting] one of the essential elements required on the Policy” despite being represented by counsel. In spite of the facts indicating otherwise, the Panel in Hologic found that it “does not rise to the level necessary for a finding of Reverse Domain Name Hijacking.” How could this be? Its less than persuasive explanation is that it found the Complainant presented a prima facie showing that the Respondent lacked rights or interest in the domain name, although in analyzing that requirement is also found that the Respondent had demonstrated that it did. The decision suggests that for these panelists the respondent must prove RDNH by a standard higher than a preponderance of the evidence. The fact is, given the evidence, the Complainant could never have succeeded.
The majority in David Robinson in contrast offers a clear analysis of the principle and its application. While it is true that a complainant’s failure to prove its case does not necessarily rise to the level of bad faith – “A complainant with a weak claim may present this complaint in good faith” – David Robinson’s complaint was “not simply the phenomenon of a weak case that failed such as, for example, an inadequately proven claim for a common law trademark. The case could never have succeeded.” Although nodding to Sydney Opera House Trust v. Trilynx Pty. Limited, D2000-1224 WIPO) (‘to establish reverse domain name hijacking, the Respondent must show knowledge on the part of the Complainant of the Respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge’), the Panel held that “bad faith” was the dominant element of Paragraph 15(e).
However, why would the complainant have initiated a complaint that had no chance to succeed and which it must have known it could not – knowledge of the law is presumed – except to harass the respondent. Carsales.com, supra. “[i]n the Panel’s view the Complainant’s actions must have inevitably imposed burdens and costs upon the Respondent. The Panel is also concerned that abusive complaints risk diminishing the credibility of the entire UDRP process.” Moreover, David Robinson was “represented by well-known United Kingdom solicitors [who] should have known at the time of filing the Complaint that he could not prove one of the essential elements of the Policy.”
The dissent in David Robinson (dissenting only on the issue of RDNH) believed that there should be actual proof of “harassment or bad faith or similarly reprehensible conduct,” thereby seemingly demanding a clear and convincing standard to prevail on RDNH. However, the term “reprehensible conduct” is not found in the WIPO Final Report and there is no jurisprudential basis for elevating the quantum of proof.
Occasions of Humor; Some Intended
Unintentional humor at the expense of one of the parties – most likely more appreciated by the reader of the decision than the losing party – is good for a chuckle and sometimes instructive. A favorite early case is Penguin Books Ltd. v. The Katz Family and Anthony Katz, D2000-0204 (WIPO May 20, 2000). The Respondent – whose residence is not reported – claimed that for many years he had been known by the nickname ‘Penguin’ and his wife ‘Mrs. Penguin’. According to the 3-Member Panel Penguin Books failed to offer any rebuttal to Mr. Penguin and Mr. Penguin walked away with <penguin.org>. Then there was Jollibee Foods Corp. v. Chrystman, FA 95561 (Nat. Arb. Forum October 31, 2000) in which the Panel found that the Respondent had rights or legitimate interests in <jollibee.com> – the trademark of a fast-food restaurant business with sales in 1999 from its numerous outlets exceeding $331,000,000 – because his wife’s nickname was “Jollibee.”
The Morgan-Stanley cases also deserve a chuckle, Morgan Stanley v. Michael Woods, FA0512000604103 (Nat. Arb. Forum January 16, 2006) decided in the Registrant’s favor; reprised in Morgan Stanley v. Meow, FA0604000671304 (Nat. Arb. Forum May 22, 2006), Woods substituting his cat as the Respondent. In the first case, the Respondent stated that he was using “the disputed domain name [in seminars he conducted] as an example of a large company’s negligence and ineptitude in the registration of domain names pertinent to its business.” The Panel found <morganstanleyplatinum> fair use because “[w]hen a non-trademark use is made, that does not depend for its value on the existence of the trademark, it is then appropriate to use the trademark as another’s domain.” This presumed that the use of the domain name was noncommercial, “without intent for commercial gain.” When reprised by “Meow” with <mymorganstanleyplatinum> the Panel was amused, but rejected the fair use protection: “This use cannot be considered legitimate, because there is no reason actually to register such domain names in order to discuss such failures to register”; concluding that the “Panel finds that Respondent’s assertions that it is a cat provide sufficient evidence to conclude that the Respondent registered and is using the disputed domain name in bad faith. And this despite the fact that the Panel, unlike Queen Victoria, is amused.”
In a 2008 case involving <hobbitts.com> the Respondent argued that the word was generic for “small people,” The Saul Zaentz Company d/b/a Tolkien Enterprises v. CheapYellowPages.com / Brian Wick, D2008-0021 (WIPO March 17, 2008); which case was soon followed by <narnia.mobi> in which the Panel was singularly unimpressed by the argument that the Respondent had purchased the domain name not in bad faith but as a birthday present for his son who was a fan of the Narnia books, C.S. Lewis (PTE.) Ltd. v. Richard Saville-Smith, D2008-0821 (WIPO July 21, 2008). In both instances, movies were on the cusp of being premiered.
All these earlier cases are prologue to Inmobiliaria Carso S.A. de C.V. v. RusliCyber.com and Trisakti University, Mr. Ahmad Rusli, D2008-1767 (WIPO January 5, 2009) disputing ownership to <carlosslimhelu.com>. The case has excited bloggers and commentators because the trademark CARLOS SLIM is also the name of the second wealthiest person in the world. “Helu” is the surname of Mr. Slim’s maternal family. The Respondent stated in inimitable prose that “the secure action happened when it was still 22 years old, or 750 days ago, or about 18,000 hours ago, or actually September 22, 2006. The vision and mission is clear, to help MR. CARLOS SLIM HELU get this domain name [sic].” He explains that he tried to contact Mr. Slim to sell him the domain name for varying amounts up to $55 Million, although indicating in his correspondence that these values were “only basic parameter.” He appears to have become offended that Mr. Slim failed to respond, which is evident in his plea that he “feel[s] un-appreciated to this condition [presumably of being ignored] and “feel[s] un-respected either [sic].” He thought his chances would improve if he threatened to divert traffic from the domain name to an “unpredictable destination,” actually a pornographic site, but of course he was only doing this to get Mr. Slim's attention and for his restraint Mr. Slip should “consider this good-faith.”
The Panel notes that “at the time of the filing of the Complaint [the domain name] was pointing to a home page of one of the web sites managed by the Respondent with the following advertisement “...Welcome guest: buy, donate, lease, barter or free services – please visit: RusliCyber.com....”
Respondent's Right or Legitimate Interest
Educational Testing Service v. TOEFL, D2000-0044 (WIPO March 16, 2000):
If mere registration of the domain name were sufficient to establish rights or legitimate interests for the purposes of Paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no Complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of Paragraph 4(a)(ii) of the Policy.
“There is” observed the Panel in Karsten Manufacturing Corporation v. Pingify Networks Inc., FA0811001232823 (Nat. Arb. Forum January 5, 2009) “ample authority for the principle that a respondent can not abrogate responsibility for use of its domain name,” meaning that if the website is being used for pay-per-click advertising the respondent cannot excuse itself by blaming the site contents on the registrar. The principle was discussed in the December 11, 2008 Note, Populating Web Pages; the “Not Me” Defense principally in connection with high volume purchasers of domains. However, the analysis does not stop at finding arguable bad faith use if there is evidence that the respondent had a legitimate interest in the domain name, although it may be a factor in balancing the parties' rights. Paragraph 4(c)(i) proof can demonstrate a respondent's good faith. The domain name in this case is <ping.me>. The Complainant is a manufacturer of golfing equipment sold under the trademark PING. The extension “.me” is a newly minted country code for Montenegro that the Respondent purchased at auction.
The Respondent in Karsten was a newly formed Canadian company that prior to notice, among other steps had filed an application for a U.S. provisional patent application for a software program which “notifies an Internet user of specific information in a timely fashion, otherwise known as ‘pings’.” While it was making “demonstrable preparations” for its business, it parked its domain name with the registrar. It excused itself for the website’s bad faith use and stated that it taken down it down as soon as it learned that the advertising included the Complainant’s competitors. “There is no doubt that these combined facts send mixed messages to the Panel.” While under these circumstances
[t]he Panel would be at liberty to find that Respondent’s use of the disputed domain name was not bona fide in terms of paragraph 4(c)(i) of the Policy ...[n]onetheless, the better view is that this conduct should form part of the complete equation which measures whether there were in fact preparations to use the domain name, or a name corresponding to the domain name, in connection with a bona fide offering of goods or services.
No cases are cited for the “better view” but the analysis strikes a reasonable balance and is a contribution to the jurisprudence. The decision to overlook the seeming bad faith revolves around the question whether the respondent’s alleged demonstrable preparations are real or sham. In Karsten, the Panel found that the
commitment in filing a US patent application speaks for itself, as does the fact that the name of the invention coincides directly with the acronym and, by coincidence, with the trademark. Bearing in mind the nature of Respondent’s software product, it seems to the Panel that the “.me” domain name extension would be naturally desirable over others.
It is “[a]gainst that landscape ... the Panel is of the opinion that the bad faith use in this should not disfigure Respondent’s other actions.” The decision takes into account both the history of the Policy and the conduct it is intended to address – blatant abuse of third party rights. Proof that demonstrable preparations prior to notice was not a sham is conclusive in the respondent’s favor.
Right to Retain Domain Name After Termination of License
Ordinarily, a domain name registered in good faith does not metamorphose to bad faith because the respondent subsequently uses it in bad faith. This bright line generalization, however, is modified if the respondent registered the domain name pursuant to contract that expressly provides for its disposition upon expiration or termination of the contract. Decisions such as Urbani Tartufi s.n.c. v. Urbani U.S.A, D2003-0090 (WIPO April 7, 2003) (<urbani.com>) and The Prudential Insurance Company of America v. Sheri Jones, FA0510000584625 (Nat. Arb. Forum December 19, 2005) )<prudentialmontana>) that conclude otherwise are distinguishable. These cases stand for the proposition that a respondent’s good faith registration survives expiration or termination of the contract or in the case of The Prudential Insurance Company a license if the agreement expressly fails to provide otherwise.
Analysis of rights post-termination is traceable to UVA Solar GmbH & Co K.G .v. Mads Kragh, D2001-0373 (WIPO May 7, 2001) in which the Panel was of the view that the Respondent did
have rights and legitimate interests in respect of the domain name in issue but only for the duration of his distributorship of the Complainant's SUNMAXX products. That distributorship having come to an end in late 1999 or February 2000, the Respondent no longer has any rights or legitimate interests in respect of the domain name. The Complainant, therefore, succeeds in establishing the second requirement of paragraph 4a of the Policy.
While it is possible for a complainant to succeed on the ¶4(a)(ii) and fail on ¶4(a)(iii) as in Urbani Tartufi and The Prudential Insurance Company, the existence of an express provision is fatal to the respondent’s good faith. Thus, again with UVA Solar, the Panel held that
In the circumstances, the Panel finds that registration of a domain name can lose its bona fides if the registrant subsequently breaches one of the terms upon which he was authorized to register it. Here, that breach is the Respondent's continued holding of the domain name in issue beyond the temporal limit of his distributorship for Denmark, compounded by renewing that registration in August 2001, when he had been on notice of the Complainant's position since January 31, 2000.
Maree Gaye Miller v. Peter Horner, D2008-1492 (WIPO December 29, 2008), citing R&M Italia SpA, Tycon Technoglass Srl v. EnQuip Technologies Group, Inc., D2007-1477 (WIPO December 7, 2007) sets forth the applicable principle:
(a) The respondent’s authority to register the disputed domain name had been ... given subject to certain terms and conditions; breach of such conditions can alter what would otherwise have appeared to have been a bona fide registration [; and]
(b) Breach of such conditions can be shown by the domain name registrant refusing to transfer the disputed domain name to the trademark owner when the agency contract ceased.
The lesson from the earlier cases is for the trademark owner to assure that the contract for licensing or authorizing use of the domain name clearly provides for its disposition upon expiration or termination. Failing to do so puts the complainant at risk in a UDRP proceeding.
New Comment: Personal Names as Domain Names; When Actionable
2008 has been fruitful for personal name decisions. As a general rule a person aggrieved by a registrant misappropriating his personal name for use on the Internet cannot look for a quick remedy under the UDRP unless he can bring himself within the rule’s exception. Paragraph 199 of the Second WIPO Report on personal names, tradenames and geographic indicators states that the “UDRP does not provide solace for all those offended sensitivities, nor was it intended to do so, as originally designed.” The unexceptional are “[p]ersons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations.” This pronouncement is not expressly contained in the Policy but is construed as among its foundation principles. Unjust perhaps, but persons who do not use their names in commerce are obliged to seek their remedy in a court of law....
Yesterday's Note cited two cases of complainants unable to satisfy the jurisdictional requirement of having a trademark right, Peter Bober v. National Institute for Mortgage Education, D2008-1668 (WIPO December 15, 2008) (Mayor and lawyer) and Margaret C. Whitman v. Domains For Sale, D2008-1534 (WIPO December 1, 2008) (former chief executive of eBay).
Construing the Prohibition Against Selling, Renting or Otherwise Transferring the Domain Name Registration to the Complainant
The WIPO Final Report denounces two types of predatory and parasitical practices [Paragraph 23]: “registering domain names of well-known and other trademarks in the hope of being able to sell the domain names to the owners of those marks” and registering them “simply to take unfair advantage of the reputation attached to those marks.” “The most offensive act of a cybersquatter is to hold another’s mark for ransom,” Freddy Adu v. Frank Fushille, D2004-0682 (WIPO October 27, 2004).
The first of the two practices has a provision to itself in ¶4(b)(i). However, in the history of domain name disputes “selling, renting or otherwise transferring” is less the favored form of predation than taking unfair advantage of the reputation of the trademark and examples of it have markedly declined. In the one area where opportunists operate openly, acquiring domain names of aspirants for political office, the Policy does not offer a remedy because the complainants – famous though they may be in the professions, business or in the public sector – are generally unable to satisfy the jurisdictional requirement in ¶4(a)(i) of having a trademark. Two recent examples of the genre are Peter Bober v. National Institute for Mortgage Education, D2008-1668 (WIPO December 15, 2008) (Mayor and lawyer) and Margaret C. Whitman v. Domains For Sale, D2008-1534 (WIPO December 1, 2008) (former chief executive of eBay). Ms. Whitman has recently commenced a federal action alleging violations of the Anticybersquatting Consumer Protection Act and the California Political Cyberfraud Abatement Act.
The prohibition of offering the domain name for sale “for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name” is not limited to the overt act; it subsumes any conduct that by inference – by hook or by crook – is designed to get the trademark owner to purchase the domain name. As though to circumvent the prohibition and avoid the appearance of predatory selling to the trademark owner, respondents have resorted to a variety of stratagems; offering to sell the domain name, as it were, by indirection. The idea is captured by the Panel’s comment in Scarlett Johansson v. Tristan Dare, D2008-1650 (WIPO December 16, 2008) (unregistered mark):
[The] probable explanation for the “contest” [a double entendre on the website] is that it was launched as some sort of prank, designed to embarrass Ms. Johansson (and possibly to provoke an offer of cash from her to have the “contest” taken down from the Respondent’s website, or for the website itself)....
The “consideration demanded in exchange for a domain name registration does not have to be monetary in nature to run afoul of UDRP ¶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). Thus, demands for concessions in pre-arbitrations 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).
Beyond this, there are a number of other variations to the stratagem, covert but obvious. Some involve explicit threats to use the domain name to direct Internet users to pornography, Motorola Inc. v. NewGate Internet, Inc., D2000-0079 (WIPO April 20, 2000) or to “critique” the trademark owner, Federal Home Loan Mortgage Corporation v. Karen Blodgett d/b/a KOG Enterprises, Inc., FA0509000566605 (Nat. Arb. Forum November 4, 2005). Other respondents have tried to disguise their intentions, Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, D2003-0372 (WIPO August 5, 2003) (the Respondent had ‘abused the system’ by registering and using the domain name for purposes of extortion); Citgo Petroleum Corporation v. Richard Antinore, D2006-1576 (WIPO March 14, 2007) (intended to “coerce the complainant into purchasing his gripe site and the domain names and thus extort a significant sum of money for the cessation of respondent’s negative criticism, hence effectively forcing the complainant to pay to silence the respondent”).
Famous and Well Known Marks; and Domain Names that Mimic Them
Denying knowledge of a trademark is expected even if meritless; as a defense, more successful with the less well known, but rejected for famous marks entirely. For famous marks and those well known but shy of fame actual knowledge is either presumed or denial of knowledge unconvincing; for which reason few domain names incorporating them are generally defended, although there are instances in which the respondent attempts some kind of 4(c) defense, such as in Scarlett Johansson v. Tristan Dare, D2008-1650 (WIPO December 16, 2008) (unregistered mark) and Pernod Ricard v Tucows.com Co., D2008-0789 (WIPO August 21, 2008) (<ricard.com>. The respondent in Leineweber GmbH & Co. KG. v. Braxton Manufacturing Co., Inc., D2008-1057 (WIPO December 28, 2008) (<brax.com>) contended in opposition that the Complainant was not famous. A respondent’s knowledge of lesser known marks is judged on a sliding scale from plausible given the locations of the parties on different continents for example to incredible given the congruency of the parties’ market.
If fame is alleged, as it is in International Organization for Standardization ISO v. Sunrise Holdings, D2008-1782 (WIPO December 23, 2008) the complainant has to persuade the Panel that its mark meets the criteria. Concern for protecting famous and well known marks from predation was strongly expressed in the WIPO Final Report, subtitled “The Management of Internet Names and Addresses: Intellectual Property Issues,” dated April 30, 1999. Paragraph 246 reads
In the commercial area, fame is most often manifested in reputation, and reputation is most often attached to the expression of identity of the enterprise: its trademarks. Famous and well-known marks have been the special target of a variety of predatory and parasitical practices on the Internet. The consultations held throughout the WIPO Process and the submissions made in them have confirmed the singular nature of these predatory and parasitical practices with respect to famous and well-known marks.
The Report notes in Paragraph 252 that “international protection of famous and well-known marks is recognized in two multilateral treaties: the Paris Convention for the Protection of Industrial Property (the Paris Convention), to which 154 States are party, and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), by which 134 States are bound.” However, these covenants and agreements address the issue from the vantage of infringing use in respect of any goods or services rather than from unauthorized use of marks for domain names. What constitutes marks famous or well known is left to “the competent national authority,” but the Report lists what the experts believe are the appropriate factors in determining the question [Paragraph 282]. The competent authority should consider,
1. the degree of knowledge or recognition of the mark in the relevant sector of the public;
2. the duration, extent and geographical area of any use of the mark;
3. the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
4. the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
These factors are not dissimilar to those set forth in the Federal Trademark Dilution Act of 2006, 15 U.S.C. 1125(c). The Statute reads:
(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:
(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
The respondent in International Organization for Standardization ISO, registered <iso.mobi> after the registrar inadvertently allowed the domain name to become available. The Respondent argued that it intended to create a dating website, “I seek others,” a potentially good ¶4(c)(i) defense, but unsuccessful in this case because the Respondent offered no proof of “demonstrable preparations” pre-notice of the claim.
Suspending Proceedings for Settlement
There is no rule expressly authorizing suspension of arbitration except when a legal proceeding has been initiated [Rule 18 of the Rules of the Policy: “(a) 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.”]
Discretion to suspend proceedings for settlement purposes may be subsumed under Rule 10(a) – “(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules” – but if exercised at all panelists will closely monitor the parties’ progress.
It is not entirely clear whether both parties initially requested a suspension in Leineweber GmbH & Co. KG. v. Braxton Manufacturing Co., Inc., D2008-1057 (WIPO December 28, 2008), but “following ... repeated suspension” the Panel decided to proceed to a decision when the Complainant made a further request to “suspend this case for one year.” The Panel stated that the initial suspension for more than 3 months “should in the ordinary course of things be more than sufficient time to enable a settlement to be reached and implemented.”
Its reasoning in deciding the case rather than taking it off the calendar was two fold: first that the parties did not indicate that any settlement had been reached; and, second, that the intended purpose of the UDRP was its “expedited process.” Suspension offends the Policy. For the reasons stated in yesterday’s Note, the Complainant failed to prove that the Respondent lacked rights or legitimately interests in the domain name and the complaint was denied.
Buying and Selling Domain Names
Paragraph 4(b)(i) of the Policy makes it a violation for the respondent to acquire the disputed domain name “primarily for the purpose of 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.”
If not “primarily” for the proscribed purpose, however, the acquisition cannot be said to interfere with a complainant’s rights. The interpretation of the prescriptive phrase “selling, renting or otherwise transferring” does not prevent the respondent from doing any of those acts as long as it demonstrates a right or legitimate interest in the domain name. A domain name is no different from any other asset a party may own and is free to sell it to the highest bidder. The determination as to who may rightfully own the disputed domain name depends on the factual circumstances rather than offering the domain name for sale, etc.
The Respondent in Leineweber GmbH & Co. KG. v. Braxton Manufacturing Co., Inc., D2008-1057 (WIPO December 28, 2008) demonstrated its right to the domain name under both ¶4(c)(i) and ¶4(c)(ii). “It was [noted the Panel] the Complainant who approached the Respondent regarding the sale of the disputed domain name. The Respondent’s reply was that it would not sell the domain name for less than USF $1 million.” A hefty price to be sure, but putting a price on the domain name does not violate the Policy. The Panel’s reference to the value of the domain name is, I think, an ironic gloss on the Complainant’s imaginative argument that the Respondent must have registered the domain name – which it did ten years earlier – “awaiting a convenient opportunity sell the domain name to the real trademark owner.” The problem with this kind of argument is that it succeeds only if the complainant offers evidence that the respondent had knowledge or was even aware of the complainant or its trademark when the respondent registered the domain name as an abbreviation of its business name. In Leineweber, no such evidence was adduced.
Inferences Drawn from Active Websites
A respondent registers a generic term as a domain name that is identical to a complainant’s trademark and insists he registered it in good faith. The generic term in Factory Mutual Insurance Company v. Valuable Web Names, D2008-1014 (WIPO August 19, 2008) is “my risk” (<myrisk.com>). The Respondent argues that a Google search reveals a multiple of domain name 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).
See also Leineweber GmbH & Co. KG. v. Braxton Manufacturing Co., Inc., D2008-1057 (WIPO December 28, 2008) (“The Policy is not prescriptive about the nature of the rights or legitimate interests that a respondent must demonstrate to rebut a case against it. Whether a respondent has such rights or legitimate interests will depend on the facts of each case.”) In deciding Factory Mutual, the Panel noted that “[b]oth parties in their respective arguments appear to acknowledge, as is often the case in proceedings involving domain name aggregators [who are held to a higher standard], that whether Respondent has right or a legitimate interest in the disputed domain name and whether it registered that domain name in bad faith turn[s] on the same analysis.” One of the questions for which there has to be evidence is respondent’s knowledge of the complainant or its mark. However, the evidence can be deduced from the record. The Panel noted
Here, of course, Complainant’s mark was registered well before Respondent registered the disputed domain name. That fact alone does not establish bad faith. Unlike United States of America trademark law, prevailing practice under the Policy usually requires proof, even if the mark be registered, that the respondent actually knew of the complainant’s mark.
When “[e]ach party ... asserts a bright line rule in support of its position on these issues,” what does the Panel do? Ordinarily, one of the analytical tools is deconstructing the website. If the respondent denies knowledge of the complainant or its trademark the complainant must present sufficient evidence that the denial is untrue. Proof that the respondent had the complainant in mind tips the scale in the complainant’s favor. In Factory Mutual, the Panel found that although “[n]o one but Respondent knows for certain what its motivation was for acquiring the disputed domain name,” the record in this proceeding “points firmly toward actual knowledge.” This is inferred notwithstanding the Respondent’s denial
since its website identifies Complainant by name and includes a link to Complainant’s main web page. The main topic of Respondent’s website, as Respondent acknowledges, is insurance-related matters. While insurance is one subject suggested by MYRISK’s everyday meaning, it is not the only one or necessarily the most obvious or commercially exploitable one. Respondent’s election to use the phrase for Complainant’s line of business strongly suggests it was aware of Complainant’s mark.
The content of the website gave the Respondent away. It was found to have actual knowledge because it identified the Complainant as one of the suppliers of insurance products together with its competitors.
Bona Fide Offering of Goods or Services
Domain names identical or confusingly similar to trademarks can be legitimately used for a variety of business models that support a defense under ¶4(c)(i) of the Policy. Thus, 1) Vanity e-mail services, Stephen Wheatcraft v. Reison, Inc. c/o Domain Manager, FA0811001232650 (Nat. Arb. Forum December 22, 2008) (<wheatcraft.com>,); 2) Paid search advertising, Decal (Depositi Costieri Calliope) S.p.A. v. Gregory Ricks, D2008-0585 (WIPO June 11, 2008) (<decal.com>,); 3) Domain names for sale, CeWe Color AG & Co. OHG v. Shenbun Limited, D2008-0810 (WIPO July 10, 2008)(“The buying and selling of domain names is, of itself, a perfectly legitimate trading activity”); 4) Cultural activities, Velcro Industries B. V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, D2008-0864 (WIPO July 28, 2008) (<velcroart.net>); 5) Affiliate program, Authorize.Net LLC v. Cardservice High Sierra, D2008-0760 (WIPO June 30, 2008) (<authorized.net>), citing National Futures Association v. John L. Person, D2005-0690 (WIPO August 15, 2005) (<nationalfutures.com>, in which the registrant was a member of the Association). In the first two cases, the domain names are composed of trademarks that have entered a number of languages as parts of speech and become genericized. In none of the cases is there any evidence that the respondents registered the domain names with the complainants in mind; in other words, not a ¶4(c)(iii) – legitimate noncommercial – defense. As the Panel states in Velcro Industries, “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.”
To succeed on a ¶4(c)(i) defense, the respondent must demonstrate concretely and not by inference that “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name [is] in connection with a bona fide offering of goods or services.” Whether the operation of a business is bona fide depends upon a number of factors: its history, either of operation or in preparation of it, and registrant’s credibility for having a domain name allegedly confusingly similar to another’s trademark. “[U]se which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services,” Madonna Ciccione p/k/a Madonna v. Dan Parisi and “Madonna.com, D20000-0847 (WIPO October 12, 2000).
It is not the business model that upends a respondent’s contentions of legitimacy. The term “legitimate” in ¶4(c) refers “to the respondent’s entitlement to the domain name it has selected,” rather than to the legality of its business. 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 name evidenced “exploitative intent.”
“Masdar” is both a family name and a geographic indicator. However, the Complainant offered proof that the trademark had at the time the domains were registered aquired distinctiveness in the marketplace. While it is always possible for two persons to come up with the same name – coincidence being more probable and less suspicious when the words are generic – suspicion rises as the choice of words moves up the classification scale. In this case the Panel cited evidence that the Respondent registered the disputed domain names on the same date that Complainant made a significant media “launch” of “Masdar City.” Opportunism was also evidenced by the Respondent registering the name with a “.uk” extension the same day as a presentation in London.
As though this was not be enough, the Panel’s also concluded that the Respondent lacked credibility – he made “inaccurate representations to the Panel about various subjects, including his involvement in prior UDRP proceedings.”
Personalized Domain Name Service
Complainants objecting to domain names mimicking trademarks of their founders’ surnames have to overcome the fact that as a business moniker a surname – unless contemporaneously famous as a source of goods or services – is a generic term. If the domain name is used as a service for persons bearing the surname, there can be no actionable claim. A personalized domain name service is one of the business models accepted as a “bona fide offering of goods or services” [¶4(c)(i) of the Policy]. However, a defense is viable only if and to the extent that the respondent does not stray from the vanity model. Respondents in Ancien Restaurant Chartier v. Tucows.com Co., D2008-0272 (WIPO May 6, 2008) (<chartier.com>); Raccords et Plastiques Nicoll v. Tucows.com Co., D2008-1322 (WIPO December 2, 2008) (<nicoll.com>) and Stephen Wheatcraft v. Reison, Inc. c/o Domain Manager, FA0811001232650 (Nat. Arb. Forum December 22, 2008) (<wheatcraft.com>) proved that they were using the domains for such e-mail services.
In contrast, the Respondent in Hoerbiger Holding AG v. Texas International Property Associates, D2007-0943 (WIPO October 19, 2007) –although insisting otherwise – was using the domain name in a way that could only confuse Internet users. “Many Panels have recognized that it is not a legitimate or bona fide use to use someone’s trademark to generate advertising revenues through links to the trademark owner’s competitors.” The Panel found that it had
no reason to doubt that the term “horbiger” is a surname... [but] [c]ontrary to the Respondent’s contention ... it is not being used just for a generic search portal. As noted above, it is being used for a website according to its own banner “For resources and information on Compressor and Automation”.
Moreover – and an illustration as to how credibility is factored into a decision – “it is not correct to claim that the Sponsored Results are only triggered by computer users looking for descriptive and generic terms. The particular terms that trigger the Sponsored Results are already listed on the website at the URL to which the domain name resolves.”
At bottom, straying from the model and asserting good faith suggests pretense. The principle applied here is that a respondent has no right or legitimate interest in a domain name that diverts Internet users by pretending to be the Complainant. The “initial interest confusion” noted for December 31, 2008. Proof that the coincidence of names is a charade for targeting the complainant’s trademark and feeding on its reputation violates ¶4(b)(iv) and satisfies both elements of ¶4(a)(ii). This is made even clearer in Pernod Ricard v Tucows.com Co., D2008-0789 (WIPO August 21, 2008). The “surname/domain name in question (Ricard) [is] a very famous trademark in France and abroad.” According to the Panel it was
patently clear that the Respondent does not use the disputed domain name solely with a vanity email service. The domain name is the address of a web portal which displays a list of sponsored links to third-party websites and through which the Respondent receives revenue.... Those links, coupled with the Panel’s finding that the Respondent was aware of the Complainant and its mark when the disputed domain name was registered, point inevitably to the conclusion that the Respondent appreciated that some Internet users looking for sites associated with the Complainant would mistakenly come to the Respondent’s website.
This being the case, “it is but a short step to conclude that the Respondent must have intended that such mistakes would occur, and was to that extent seeking to profit from the trademark value of the word ‘Ricard’.”
(Next Note January 5th)
Trademark Searches
mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., D2007-1141 (WIPO November 30, 2007) (three member panel):
Although there may be no obligation that a domain name registrant conduct trade mark or search engine searches to determine whether a domain name may infringe trade mark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be wilfully blind to whether a particular domain may violate trade mark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.
FEBRUARY 2009 NOTES , DATES ARE IN REVERSE ORDER
Topical Notes (Registration and Use of Domain Name in Bad Faith)
The UDRP is unlike its country code younger siblings in that it requires the complainant to prove bad faith in the conjunctive rather than either/or registration or use. As a rule, ICANN Panels examine the evidence for bad faith use first; from which – in the absence of other evidence under the respondent’s control – it is possible to draw an inference of bad faith registration.
8/28/08 – Renewal of Registration vs. New Registration
9/10/08 – Inferences from the Whois Directory
10/30/08 – Use and Registration: Determining Bad Faith
12/23/08 – Each Requirement Demands its Own Proof
See also Lexis/Nexis Trademark Blog:
Bad Faith Requirements Under Two ADRs: UDRP and ukDRS
Pairs: Similar Facts, Different Results
Consequences of Default
Topical aggregation for
¶4(a)(i) of the Policy;
¶4(a)(ii) of the Policy.
Complainant’s Exposure to Reverse Domain Name Hijacking
An earlier Note on RDNH [January 21, 2009] looked at several cases and pondered whether there was an unsettled standard for a complainant’s exposure to a declaration of abusing the proceedings. It is clear that a finding in respondent’s favor on the complaint although a necessary element does not support what would be the equivalent in a civil context of “abuse of process” or “malicious prosecution.”
The Respondent in BFS of the Americas LLC, dba Battery Filling Systems v. Matthias Pahlke, Fillwatch Landau GmbH, D2008-1786 (WIPO January 29, 2009) alleged that “the Complaint was superficially investigated and not done in a professional way.” The Panel “accepted” this judgment – “The Complaint was obviously prepared without the benefit of legal advice, and there was evident naivete in the Complainant telling the Center that it had attempted to have the claimed trademark registered, but had been unable to do so because ‘it is a generic naming nomenclature’.”
However, the Complainant’s “frank acknowledgment” of what it could not do “does not seem to the Panel to be consistent with any dishonest intent.” The analogy with “malicious prosecution” may be instructive. The victim has to prove that the accused (1) intentionally (and maliciously) instituted and pursued or caused a legal action to be instituted or pursued) that it (2) brought the action without probable cause.
In BFS, the worst that could be laid at the Complainant’s feet was that it was inexpert in marshaling evidence – “the Complainant might have made (but did not make) an argument that it has relevant rights in the BFS device logo, incorporating the letters “bfs”, the grey and blue circle, and the words “battery filling systems”, and that the Domain Name is confusingly similar to such a (common law) mark.” There was also another component to the Panel’s thinking: the Respondent’s credibility in denying knowledge of a Complainant in the “same field” of business. The Panel’s skepticism is barely concealed:
On the other side of the ledger, the Respondent, after apparently operating contentedly under a FILLWATCH mark for many years, and using <fillwatch.de> and <fillwatch.com> domain names for its principal website, decided in 2005 to register a domain name which differed by only one letter from the domain name used by one of its competitors. The Complainant has proved that some level of marketplace confusion has since arisen, and, if the Respondent was aware of the Complainant and its domain name, the Respondent must surely have expected that there would be some market confusion caused by its registration of the Domain Name. The Respondent denies that it was aware of the Complainant or its Domain Name, but the reverse domain name hijacking question is whether it was reasonable for the Complainant to believe, when filing the Complaint, that the Domain Name was registered by the Respondent with knowledge of the Complainant. In the Panel’s view, that would not have been an unreasonable belief. (Emphasis added).
The Respondent in other words has to show both that it has “clean hands” and that the Complainant pursued the disputed domain name by abusively invoking the UDRP to capture it without probable cause of its right.
Suspending or Terminating Proceedings
Rule 18(a) of the Rules of the Policy grants panelists “discretion to decide whether to suspend or terminate the proceeding, or to proceed to a decision” in the event of “any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute.” The 3-member Panel in Galley, Inc. v. Pride Marketing & Procurement / Richard’s Restaurant Supply, Inc., D2008-1285 (WIPO February 12, 2009) was unanimous in ruling against suspension, but split on terminating the proceedings. The majority issued a ruling on the merits and denied the complaint; the dissent favored “judicial” restraint and would have terminated the “present proceedings without prejudice pending final resolution of that [federal court] litigation.” There is authority for both positions, although the weight (if number of decisions count) favor ruling on the merits if the issue is within the scope of the Policy.
Suspension would be inappropriate because it “would potentially leave this proceeding unresolved for a long and indefinite period.” Moreover, “[a]s a technical matter, it would also leave the disputed domain name on ‘lock’ status during that period.” The intent of the Policy is “to provide a simple and expeditious remedy” which suspension would not accomplish. The discretion to be exercised, therefore, was whether to proceed “to a decision on the merits or [terminate] the proceedings.”
Moving on from there, the majority favored exercising its discretion for a decision on the merits, although it prefaced its analysis – to counter the dissent’s argument – with a discussion on the rational for termination. It explained that there was precedent for proceeding to a decision “despite concurrent or prior court proceedings” in a number of circumstances including those dealing with similar issues – without trespassing on the broader issues raised in a federal lawsuit – citing Western Florida Lighting, Inc. v. Samantha Ramirez, SamiRami, SESCO Lighting, Inc., and Cynthia Parker-Chillemi, D2008-1122 (WIPO October 2, 2008):
This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation (see Policy, paragraph 4(k)).
Other precedent for proceeding to a decision on the merits include circumstances in which the concurrent or prior court proceedings 1) related to matters different to those which were the subject of the UDRP complaint; and 2) sought a different remedy than in the administration proceeding.
The dissent (clearly derisive of the majority’s position) believed that as a forum inferior to a national court panelists should defer because “realistically speaking, what real benefit can be gained by this Panel issuing a decision on the merits...?” To this argument, the majority noted that such arguments were “based on a number of assumptions” with which it disagreed:
They assume that the matter will necessarily proceed to trial (in practice, cases which are filed frequently do not progress that far). They assume no possibility that a decision rendered by the Panel could assist, resolve or narrow even part of the dispute between the parties. The argument based on paragraph 4(k) of the Policy assumes that the decision will be made in the Complainant’s favor. (This is because the “implementation” to which paragraph 4(k) relates is only an order that the domain name be “cancelled or transferred”. An alternative decision to deny a complaint, while it leaves nothing to be implemented by the Registrar, does not mean that the decision would have no effect.) As such, it is an argument based merely on the possibility that the Panel’s decision will have no effect.
The majority’s decision to proceed to a decision on the merits was influenced by the record. “The nature of the parties evidence ... means that the Panel majority cannot make a positive finding that the Respondent has ‘no’ rights or legitimate interests.” This is particularly so “as the evidence presented by the Respondent, on its face, otherwise suggests that the Respondent has been using the disputed domain name in connection with a bona fide business for a substantial period of time... [as well as] using the disputed domain name because ‘galley’ is an apt term for the goods marketed by the Respondent.”
Other than declaratory relief relating to the ownership of the disputed domain name – and issuing an order of cancellation or transfer if in the complainant's favor – which is all UDRP was intended to grant the broader issue as to whether the use of <galley.com> is a statutory violation under Trademark law is thus left for the federal court to unravel if, as and when the case proceeds to trial.
Close Call, Missed Call or Right Call?
The passionate intensity of Bloggers critical of panelists’ decisions and commentary thereon makes for an entertaining sideshow. Take the cases of <lh.com> [Deutsche Lufthansa AG v. Future Media Architects, Inc., FA0802001153492 (Nat. Arb. Forum April 17, 2008)] and <jackass.com> [Viacom International Inc. v. Future Media Architects, Inc. , D2008-1833 (WIPO January 30, 2009)]. Same Respondent in both; loser in the first – over a scoffing dissent in favor of denying the complaint – winner in the second, from a single member Panel. Both decisions found sympathetic Bloggers to hammer away at pet themes. In the case of <lh.com>, “A scandalous decision has once again been reached by the so called wipo arbitration panel” [http://okok.com/lhcom-lost/]; <jackass.com> drew an equally vocal denunciation [“The World Intellectual Property Organization knew that the FMA was full of it but decided that they cannot hand Jackass.com over to Viacom.”] [http://pulse2.com/2009/02/18/viacom-wants-jackasscom-domain-name-but-future-media-architects-wont-give-it-to-them/]; “And, with that, WIPO dismissed one more case of utter jackassery.” [http://arstechnica.com/tech-policy/news/2009/02/wipo-jackasscom-an-owner-a-real-jackass-but-can-keep-site.ars].
What, one may ask, generates such fervor of belief, waxing indignant and disdainful in turns, that a Panel should either award to one or take away from another the disputed domain name? What is remarkable is that Bloggers and commentators thereon are never be placated by the evidence that leads the Panel to the perceived unsatisfactory conclusion or his or hers jurisprudential reasoning. In any event, it is useful to look more carefully at the evidence the Viacom Respondent offered in defense of <jackass.com>, although first to note the Panel’s skepticism of the Respondent’s intentions:
The Response states that the Respondent currently intends to use the disputed domain name for a website about donkeys. A number of draft web pages for a proposed, soon-to-be-released website about donkeys were exhibited in the Response. The Panel does not find this convincing. The Respondent offered no explanation as to why it has taken approximately 4 years to launch the donkey website. The Respondent also made no effort to explain why it suddenly wishes to operate a website promoting donkeys, and what benefit it will receive from pursuing this course of action.
Not so much offsetting this skepticism, but an issue to consider, the Respondent had gone to the trouble of registering JACKASS as a trademark in Class 42 (search engines); not however, before the Complainant, who registered JACKASS in Class 41 (entertainment) several years earlier. As to the Respondent’s registration, the Panel noted, properly, as follows:
A trademark registration owned by the Respondent is a relevant consideration, but further analysis is necessary to determine whether the Respondent, before any notice of the dispute, used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as set out in Paragraph 4(c)(i) of the Policy.
There happens to be some domain name law on this subject, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and Madonna.com, D2000-0847 (WIPO October. 12, 2000), which essentially held that a respondent cannot legitimize a right by subterfuge. If it could “then the ICANN procedure would be rendered virtually useless.” In BECA Inc. v. CanAm Health Source, Inc., D2004-0298 (WIPO July 23, 2004) the Panel suggested examining the “chronology of events” to determine whether the trademark registration was opportunistic. Thus, “[i]In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.”
However, if in Viacom the Respondent is determined to create a donkey site, and there is evidence that it is preparing to do so – thereby satisfying the burden of proving “demonstrable preparations” [¶4(c)(i) of the Policy] – then its use of the domain name cannot be said to be in bad faith. What a donkey site will be is anyone's guess.
Getting it right, that is making a “right call”, means consistency and predictability over skepticism of intent. In Viacom, the Respondent submitted a Declaration in which it committed itself to a donkey site. And, this having been skeptically received notwithstanding, it is legitimate to ponder a What if? for a re-filing of the complaint if, as and when the domain name ever resolves to a conventional advertising site on which donkeys are not the subject matter.
New Comment, LexisNexis Trademark Blog:
Factual Circumstances Favoring Respondents
The mere fact that a significant proportion of proceedings are decided without any respondent participation – an equivocal advantage because default is not an admission under the UDRP as it is in a court of law – is no guarantee that the complainant will prevail; and, the incidence of dismissal or denial of the complaint is increased when the respondent appears and answers. Loss of even an equivocal advantage is traceable to the complainant’s failure to observe the Policy’s evidentiary requirements. A handful of recent cases illustrate a variety of factual circumstances – some being self-created obstacles – favoring respondents that could potentially have been avoided with a proper understanding of the law applied to domain name rights....
Legitimate Use of Another’s Trademark
Looked at from the perspective of U.S. law “initial interest confusion” and “nominative fair use” are yin and yang; the complainant arguing for the former and the respondent for the latter. This opposition of principles – there must be some circumstances under which incorporating another’s trademark is legitimate and not abusive – was early harmonized in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001) (<okidataparts.com>) and is “codified” in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1. In Oki Data, while the addition of “parts” was insufficient to distinguish the Respondent’s Internet moniker and exonerate it from having registered a domain name confusingly similar to the Complainant’s trademark, the use to which the domain name was put was sufficient to rebut initial interest confusion under ¶4(a)(ii). This principle of law, discussed previously on November 20, 2008, applies to both sellers and dealers, authorized and unauthorized, using complainant’s trademark.
Rather than the right or legitimate interest being established by permission, it is established and justified by the respondent’s business model. If the incorporated trademark plus descriptive word resolves to a website offering complainant’s goods, disclaims any association with the complainant – although presence or absence of a disclaimer is not in itself conclusive or fatal, Volvo Trademark Holding AB v. Auto Shivuk, D2005-0447 (WIPO June 5, 2005) – in which the respondent is engaged in a legitimate business with the goods, its registration and use of the domain name is not abusive.
The principle is clearly stated in IVECO S.p.A. v. Zeppelin Trading Company Limited, D2008-1725 (WIPO February 3, 2009) involving the addition of two descriptive words “cheap” and “parts” to form <cheapivecoparts.com>. The 3-member Panel pointed out that a “review of the materials for the Respondent’s website at the disputed domain name included in the Complaint do[es] not disclose any dealing in brands of products other than IVECO products.” The words describe the Respondent’s business; not used “in a manner consistent with a typical case of cybersquatting, such as to simply post pay-per-click links to competitors of the Complainant.”
To cover itself from any imputation of riding on an association with Complainant more than conveying the nature of its business [¶4(b)(iv)], “the Respondent’s website clearly states that the Respondent is an independent dealer in genuine IVECO products.” Importantly, the “disclosure is not buried in some obscure part of the website. It appears very early and, as already noted, clearly on the website. The website states ‘We are an independent Iveco parts and spares specialist based in London dealing in genuine and new parts only.’ The use of the description of the business as ‘independent’ is both accurate and clear.”
In these cases, violation is found when the respondent is either not a reseller at all and/or its landing page offers together with the complainant's, competing goods.
Topical Posts (Lack of Rights or Legitimate Interests)
Whether prosecuting or defending a proceeding, the end to which all effort to marshal must be directed is proof; not speculation; not conjecture; not argument; not accusation (in either direction), but an affirmative showing why one should prevail. The complainant has to lay before the Panel sufficient evidence to support a prima facie case that the respondent has “no rights or legitimate interests in the domain name”; the respondent has to make its case that it does, although failing to do so is not fatal since the complainant must still prove bad faith registration and use under ¶4(a)(iii) of the Policy.
The concept of a prima facie case is judge made; or, in the lexicon of the UDRP, Panel made. It was invented within the first few months of the Policy's introduction to solve a particular problem, that without discovery there was no way for the complainant to prove conclusively respondent's intention or motivation for registering the disputed domain name; why it did what it did and what it knew about the complainant or its trademark was peculiarly within the control of the respondent.
The best that a complainant can do is to present evidence at hand from which an inference can be drawn that the respondent lacks rights or legitimate interests; setting the stage thereby for a rebuttal – if the respondent appears, which most often it does not – of such inferences the Pane finds persuasive. It has to be said that some care should be taken in meeting this challenge of a prima facie case. Some of these thoughts are spelled out in the following Notes over the past several months:
9/2/08 – Variant Spelling But Not Typosquatting
11/4/08 – Scientific Term; Common in Profession
12/18/08 – Prima Facie Case for Lack of Rights or Legitimate Interests
12/15/08 – Timing of Domain Name Acquisitions and Inactivity
2/17/09 – Prima Facie Proof and Burden of Production
Topical aggregation for Paragraph 4(a)(i) of the Policy.
Source of Declarant’s Knowledge
Proof can be direct evidence, pages of the historical and current record from the USPTO or snapshots from the Wayback Machine, for example, or by Declaration from an individual with personal knowledge of the facts, or both. There is of course greater certitude with the former; some hesitation with the latter, particularly when the statements are imprecise and lacking in documentation, which raises an issue of credibility. Persons without personal knowledge, not infrequently attorneys who should know better, are dismissed out of hand, testily. How Declarations are treated and what documentary support should accompany them is discussed in Which? Limited v. Whichcar.com c/o Whois Identity Shield / Vertical Axis, Inc. D2008-1637 (WIPO January 27, 2009). We are told that “Complainant’s registered trademarks WHICH and WHICH? CAR are widely known trademarks in the UK.”
In an attempted rebuttal to th prima facie case the Respondent filed a Declaration of a manager in which “based on his own personal knowledge” he stated that “We registered the Disputed Domain [<whichcar.com>] on February 20, 2002 because it was a descriptive term to which we believed no party could claim exclusive rights.” He also stated that after receiving a cease and desist letter in September 2006 “we arranged for the system to override the software program and avoid links that included the word ‘which.’ We did this as an accommodation to Complainant in an attempt to avoid this dispute.”
The 3-member Panel was not impressed by the Declaration. It noted that
[1] It is not clear if the Declarant is an officer of the company having access to company records. [2] There is no evidence of when or in what jurisdiction the Respondent company is incorporated.... [3] The Declaration filed by Respondent is not attested to by a Notary Public or person having authority to attest a Declaration as required in many jurisdictions. [4] The Declarer states that: ‘We registered the Disputed Domain on February 20, 2002”. It is not clear if ‘we’ is the company. [5] It is not evident if the Declarer was employed by the Respondent Company on February 20, 2002.... [6] The Declarer did not file any documentation concerning the previous owner or webpages used by the previous owner, if any, or any webpages showing the use of the words ‘which car’ in a descriptive manner that support Respondent’s conclusion that there was no trademark significance associated with the disputed domain name [Etc., Etc].
Some things are only shockingly clear from a distance; that is to say when an impartial judge has his or her say about the matter. Respondent Vertical Axis, specializing in common words, has a mixed history in UDRP proceedings, scoring equally in keeping and losing disputed domain names. But, in the case of Which? the deconstruction to which the Declaration’s content and omissions were subjected indicates counsel’s inability to marshall the necessary evidence for <whichcar.com>.
Prima Facie Proof and the Burden of Production
If either complainant fails to prove that respondent lacks rights or legitimate interests or the respondent proves affirmatively that it does the complaint must be denied. The consequences are fatal to the complainant; only if the Panel finds in its favor does the analysis proceed to the bad faith elements. Paragraphs 4(a)(ii) and 4(c)(i-iii) are designed to level the playing field; each party having the opportunity to present its best case. Although ¶4(a)(ii) requires the complainant to prove lack of rights or legitimate interests, panelists early construed the provision to mean something less than conclusive proof.
The complainant satisfies its burden under this construction by offering a prima facie case – one that is tentative and subject to rebuttal. A consensus quickly formed that this construction was necessary owing to the difficulty of proving a negative. As explained in Educational Testing Service v. Netkorea Co., D2000-0087 (WIPO April, 2000), the complainant’s burden is “relatively light” for the reason that “[b]y and large, such information is known to and within the control of the respondent.” The prima facie case is not a difficult concept, but instances are not uncommon of complainants flubbing the burden by failing to understand what it entails, of which a recent exemplar is Nike, Inc. v. nikerotterdam, FA0804001180664 (Nat. Arb. Forum August 19, 2008) (<nikerotterdam>). To satisfy the requirement “Complainant must bring evidence of Respondents use of the disputed domain name in a way that infringes upon Complainant’s rights.” It must do this “by alleging that Respondent has not made a bona fide offering of goods or services at the site or that it has not made a legitimate noncommercial or fair use.” Here, continued the Panel
Complainant did not make allegations as to Respondent’s use or non-use regarding the disputed domain name. Moreover, Complainant did not offer evidence, such as an Internet screenshot indicating where the disputed domain name leads. Therefore, because Complainant did not make any allegations or supply any evidence towards a Policy ¶¶4(c)(i) and/or (iii) finding, the Panel has no choice but to find that Complainant failed to make a prima facie case under Policy ¶4(a)(ii).
At the very least – rising in difficulty with common words and generic terms even if registered as trademarks – the complainant must be preemptive; that is, persuade the Panel that respondent cannot satisfy any defense under Paragraph 4(c) of the Policy. The Respondent in NetApp, Inc. v. July Linett c/o Jolly Co., FA0812001238829 (Nat. Arb. Forum February 5, 2009) did not deny that <netapp.org> incorporated the Complainant’s trademark NETAPP, but contended that the term “has a dictionary definition, namely, it is an acronym for the phrase ‘network application’ and also is defined as ‘a purpose built appliance that performs a specific limited function on a network’.”
There are two steps in determining legitimacy; first, for the complainant to offer sufficient evidence to shift the burden; second, for the respondent to rebut complainant’s tentative proof. In NetApp,
[1] The Complainant asserts that it has never authorized the Respondent or the company Zerowait, to which the disputed domain name leads, to use its trademark. [2] The Complainant further contends that by using the Complainant’s logo and framing blogs from the Complainant’s website, as well as confusing consumers looking for the Complainant’s products on the Internet, the Respondent is using the website to promote its own competitive product. [3] Finally, the Complainant contends that the Respondent is not commonly known by the <netapp.org> name or has any other apparent relationship to that mark/name.
This showing satisfied the prima facie requirement. The Panel then examined the Respondent’s rebuttal and found it wanting because
*** the only evidence the Respondent has provided is an extract from the Free Dictionary Online where the acronym is also associated with the Complainant’s trademark and name. This is not sufficient to establish that NETAPP is a term commonly used. Furthermore, the contention of the Respondent that the use of the domain name is that of a blog site providing commentary news is contradicted by the fact that there is a need for a disclaimer on the website and that the resolving website contains a prominent hyperlink to a commercial website in direct competition with the Complainant’s business. This does not, as the Panel finds, constitute a bona fide offering of goods or services or making a legitimate non-commercial or fair use of the domain name.
On the other hand, if the respondent demonstrates rights or legitimate interests in the domain name it cannot be said to have registered or be using it in bad faith. The intermediary requirement for proving lack of rights or legitimate interests is critical precisely because failure to offer a prima facie case ends the proceeding. All the more reason therefore to assure before initiating it that the complainant understands what is required for the complaint, evidence to be marshalled and it presentation.
Criticism Incompatible with Commercial Gain
Ginn Real Estate Company LLC v. Hilton Wiener, FA0806001211342 (Nat. Arb. Forum August 20, 2008):
What is clear, however, from all of the discussion on this issue is that a respondent must not be seen to be using the criticism site for commercial gain. If that is really what the respondent is doing, the conduct is contrary to the plain words of paragraph 4(c)(iii) of the Policy and hence it cannot give rise to a legitimate interest.
New Comment, LexisNexis Trademark Blog:
Marshaling Private Information and Researching Private Facts
It is elementary that the evidence a party needs to successfully prosecute or defend a UDRP case comes from two sources: that which it controls (private information) and that which it must obtain from others (unobtainable private – anything that reveals motivation and intent – and accessible public information about one’s adversary). Statistically successful though complainants are, many trip for failing to marshal private facts – NA PALI SAS v. BWI Domains, Domain Manager, D2008-1859 (WIPO January 27, 2009) (that its license authorized it to maintain a UDRP proceeding) – or public facts – Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited. D2008-1768 (WIPO January 22, 2009) (that the respondent had a history supporting its legitimate interest in the disputed domain name). The first Complainant could have gone to its licensor and obtained written proof of its right; the second Complainant could have investigated the Respondent’s history from online resources....
Invitation to Enlarge Scope of UDRP, Declined
Except for the Complainant inviting the Panel to enlarge the scope of UDRP, Consejo Regulador del Cava v. Adrian Lucas, D2008-1939 (WIPO January 28, 2009) is of negligible interest. Even if the Complainant could prove a trademark the right it offers was not acquired until after registration of the domain name, (<cava.com>). Of interest rather is the geographical indicator for Cava, “a well-known and well-respected variety of sparkling wine made in certain specified municipalities mainly in and around Catalonia under strictly controlled conditions.” The Complainant contends that the Domain Name is identical to “the reserved denomination and geographical indication Cava”.
While geographical indicators can be intellectual property protected under European Community Council Regulation (EC) No 1493/1999 of 17 May 1999 (on the common organisation of the market in wine) and TRIPS – Agreement on Trade-related Aspects of Intellectual Property Rights, Part II — Standards concerning the availability, scope and use of Intellectual Property Rights, which includes geographical indicators, Articles 22 (Protection of Geographical Indications) and 23 (Additional Protection for Geographical Indications for Wines and Spirits)– they are excluded from protection under the UDRP. There is no question that the disputed domain name is identical to Cava, the reserved denomination and geographical indication, but the Policy is limited to a specific category of intellectual property, trademarks and service marks. “Other rights have been specifically excluded from the operation of the Policy... [and in] the view of the Panel, there is no room for maneuver in the present case,” Consejo Regulador del Cava, supra. WIPO Second Report, entitled Report of the Second WIPO Internet Domain Name Process: Recognition of Rights and the Use of Names in the Internet Domain Name System, dated September 3, 2001.
TRIPS, Article 22 reads:
1. Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
2. In respect of geographical indications, Members shall provide the legal means for interested parties to prevent:
(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;
(b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).
The case Complainant cited as authority for “room for maneuver” did “not seek to take the scope of the Policy beyond the realm of trade mark rights.” Accordingly, “the Complainant is not able to rely in these proceedings on the reserved denomination and geographical indication “Cava” (per se) as a trademark or service mark in which the Complainant has rights for the purposes of Paragraph 4(a)(i) of the Policy.”
Topical Notes (Jurisdictional Issues)
Notes are impermanent: here today; Archive tomorrow; oblivion thereafter; so I thought it useful to aggregate them from time to time into topics centered on formal requirements of the Policy and its Rules and various transcending and jurisprudential issues.
The first topic, then, is Paragraph 4(a)(i), the jurisdictional requirement for maintaining the proceedings. The requirement has two elements, both of which must be satisfied. The Paragraph calls for complainant to prove that respondent’s “domain name is [1] identical or confusingly similar to a trademark or service mark in which [2] the complainant has rights.” Surprisingly, there are complainants – and this despite the instructional materials from WIPO and Nat. Arb. Forum – who misunderstand the requirement to mean that they can capture a domain name identical or confusingly similar to their trademark recently acquired. The right that must be demonstrated is one that came into existence prior to the registration of the domain name.
8/7/08 – Construing the Threshold Requirement
9/24/08 – Trade and Company Names Excluded from Protection Under the UDRP
10/9/08 – Timing of Rights
10/13/08 – Relation Back for Trademark Right
10/16/08 – Geographic Indicators Purely Descriptive
11/11/08 – Proving a Trademark Right
12/3/08 – Authority to Prosecute a UDRP Proceeding
2/6/09 – Proper Party Complainant (Real Party in Interest)
See also LexisNexis Trademark Blog:
Common Law Marks, Recognition in the Marketplace and Proof of Secondary Meaning
The Consequence of Disclaiming Design or Design-Plus-Word Trademarks
Personal Names as Domain Names; When Actionable
Ordinarily, mere application for a trademark or service mark is not evidence of a right. When this circumstance is coupled with a complainant’s loss of a domain name identical to the mark by its inadvertently failing to re-register the domain name timely, the likelihood is increased that its complaint will be dismissed or denied. On the other hand, its chances of recapturing the domain name are markedly improved by demonstrating use of the mark in commerce prior to its application and by affirming that the domain name was supernumerary – that it intentionally allowed its registration of the domain name to expire because it had other domains incorporating the mark.
Three principles are in play in Intagent LLC v. Dominor LLC, D2008-1878 (WIPO January 29, 2009) (<intagent.net>). The first applies to applications pending for a trademark or service mark; the second applies to lapsed or expired domain names; the third applies to a respondent’s knowledge of the complainant or its mark. The tension among these principles is more likely to be resolved in complainant’s favor if the respondent is found to have registered the domain name for its value in the marketplace. For example, the Majority in Red Nacional de los Ferrocarriles Espanoles v Ox90, D2001-0981 (WIPO November 21, 2001) (involving a Spanish Complainant and a U.S. Respondent for <renfe.com>) concluded that given the nature of Respondent’s business and his expertise of the Internet registering domain names after they inadvertently lapse is opportunistic. For Respondent Dominor, although there is no record of its being a serial abusive registrant, it admitted in its pleading that “its real intention for purchasing the disputed domain name was ‘to utilize its Google Page Rank and its aging for our search engine optimization work’.” Rather than having knowledge specifically of the complainant it recognized an opportunity because of the “Google Page Rank [of the expired domain name] and its aging.” Since the Complainant had a presence on the Internet, it came to the conclusion that it did not need its trademark in all gTLDs.
The Panel noted 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.
In other words, blaming the system is not a defense for the reason that it is “the responsibility of domain name bidders and registrants to determine whether and how they may be entitled to use the domain names.” It is here that the tension among the principles is manifest. On the one hand, Paragraph 2 of the Policy as well as the underlying authority in the WIPO Final Report is clear that a registrant does not have to search databases before it registers a domain name; on the other hand, it is equally clear that even if Respondent does not have actual knowledge of Complainant or its mark it “cannot avoid a finding of bad faith registration if it shielded its eyes with willful blindness,” Champagne Lanson v. Development Services/MailPlanet.com, Inc., D2006-0006 (WIPO March 20, 2006).
The Panel in Intagent held that the Complainant owned a common law trademark and resolved the tensions in the following manner:
Respondent has indicated that it purchased the disputed domain name to take advantage of the Google Page Rank associated with Complainant’s website. This implies that Respondent’s intent in purchasing the name was to direct Internet users to its own website based on association with Complainant’s service mark. Respondent has redirected the disputed domain name to a page with a heading that describes services in the same area as those of Complainant. Respondent appears to have registered the disputed domain name intentionally for commercial gain for the purpose of confusing Internet users as to Complainant’s association as source, sponsor or affiliate of Respondent’s website.
Respondent argued that it acted “in good faith d because the former registrar of the disputed domain name offered it for sale at auction.” The reason this is “not a viable defense under the Policy ... is that Registrars may offer domain names for sale and registration in the United States without assessment of whether they may conflict with trademark rights.” Finally, “[i]t is up to the purchaser and registrant to assess its legal position.”
Coming to Terms with Nominative Fair Use
It may be permissible as nominative fair use for a respondent to use another’s mark if it shows that its incorporation of the mark as part of the domain name is for legitimate purposes, but “the right ... is not an unlimited one,” Starwood Hotels & Resorts Worldwide Inc. v. Franck Dossa, D2008-1812 (WIPO January27, 2009) . Nominative fair use as a “fair use” defense under ¶4(c)(iii) has been applied in cases where the factual circumstances support the respondent’s use of the trademark as its Internet presence.
Two examples early in the database illustrate the point, although in the first (in which only the respondent was a U.S. domiciliary) the Panel does not use the term “nominative fair use”; it is nevertheless implicit in the reasoning. In DaimlerChrysler A.G. v. Donald Drummond, D2001-0160 (WIPO June 18, 2001), a spare parts case involving the domain name <mercedesshop.com> the Panel concluded that “[u]nder the present facts, if [it] were to find for the Complainant, the majority can conceive of no case in which a legitimate competitor in the sale of parts and aftermarket accessories could ever register a domain name descriptive of that business.” In the second case, Pfizer Inc. v. Van Robichau, D2003-0399 (WIPO July 16, 2003) (U.S parties), the Respondent, an attorney with a tort practice focusing on pharmaceuticals, registered <lipitorinfo.com> for the “purpose of providing information to the public concerning legal rights and treatment options ‘should it ultimately be learned that ‘lipitor’ causes injuries to the consumer.” In denying the complaint in Pfizer the Panel noted that although incorporation of the trademark in the domain name raises an issue of initial interest confusion that fact alone “cannot act as a per se preclusion” of nominative fair use despite “commercial gain” – the domain name is both a public service and, arguably, an advertisement for legal services – but its purpose is not “to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Curiously, the two more recent decisions were authored by the same panelist and in both the parties were domiciliaries of the United States, for which reason the legal issue was deemed appropriate for application of U.S. law. U.S. courts look to three cumulative factors to weigh nominative fair use: (1) the product must not be readily identifiable without use of the mark; (2) only so much of the mark may be used as is reasonably necessary to identify the product; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302,308 (9th Cir. 1991); Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002); Horphag Research v. Mario Pellegrini, 328 F. 3d 1108 (9th Cir. 2003).
Respondent in Starwood Hotels argued that “as a real estate broker licensed in the state of Florida he is lawfully entitled to market properties to prospective clients, and that to do so he must use the names of the properties he is marketing, in this case ‘W South Beach Residences’.” While the Panel was satisfied that the Respondent “could only reasonably identify the W South Beach Residences property by use of Complainant’s service mark [factor one],” it held against it on the second and third factors because “Respondent used far more of Complainant’s distinctive mark than was reasonably necessary to identify the subject condominium property he proposed to market.” The Panel found that
Respondent undertook to copy the stylistic elements of Complainant’s proprietary website to give Internet users the unmistakable impression that his website was owned or operated by Complainant. The distinctive service mark form of Complainant was used, and link headings (and presumably links) to various facilities of the property were copied. To put it plainly, Respondent’s website looked essentially identical to websites operated by Complainant.
In an attempt to align itself with the nominative fair use factors, the Respondent offered “at some length to revise his marketing approach, including to modify his website so that it no longer appears to be operated by Complainant, and to add links to Complainant’s hotel services.” If not too little, certainly too late because the “Policy ... is directed to prior registration and use of domain names, and not to whether the registrant of a disputed domain name might act differently in the future.” The Panel concluded that it was “worth noting that Complainant notified Respondent of its concerns about his website in early November 2008, and at that time Respondent did not reply with a proposal to alter the website. He only did so in response to initiation of this proceeding.”
Panelists have discretionary authority to request “further statements or documents from either of the Parties [Rule 12 of the Policy]” and, not expressly set forth but implicit, to undertake a modicum of factual research to make a decision. The consensus on the question whether “a panel may perform independent research when reaching the decision” is expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions at paragraph 4.5:
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. If the panel feels that it requires further information to make a decision in a proceeding then it can issue a panel order to the parties.
Performing independent research in conjunction with a Rule 12 Procedural Order is discussed in Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited, D2008-1768 (WIPO January 22, 2009). The Panel issued an Order to obtain further statements and documents from the respondent and made use of the Wayback Machine, “[m]ore properly known as the Internet Archive”; it is he stated “now common practice.” He explained that “the Wayback Machine is a non-profit organization that constructs a library of web pages that have appeared on the Internet over time. It maintains these historical web pages in an archive which is accessible to the public. To research a particular domain name, one simply goes to 'www.archive.org' and enters the domain name that one is researching in the Wayback Machine browser.”
What the Panel found in its research corroborated the Respondent’s response to the Procedural Order that it “had an active commercial website [at <arena.com>] connected to the disputed domain name [in 2001].” Proof of such supports a conclusion that “before any notice” the Respondent was using the domain name for a “bona fide offering of goods or services.” The Complainants’ attempt to position “their brand alongside Gucci, Prada and Coca-Cola” was rejected for the reason that
there is a distinction between ‘ARENA’ and the other brands cited, a distinction, which has nothing to do with the comparative levels of fame of the various brands.
The distinction is that ‘arena’ is an ordinary dictionary word. “Where the brand is a unique name such as ‘Coca-Cola’ or ‘Kodak’, the brand owner has a much easier task in convincing a panel that the name must have been adopted by the third party with the brand owner in mind. The task is easier because the brands are unique and are household names.” That is not the case with “arena.”
Hypothetically, a complainant could have obtained more information about the respondent, its location, goods or services offered, its market, etc. particular in those cases in which the respondent denies knowledge but its location is within hailing distance of the complainant’s market and it populates the domain name with competitors' links. However, in Descente the nature of the proof – the use to which the domain name was put even though no longer active – the fact that the disputed domain name is a common word and the location of parties far distant from each other supported rather than undermined the Respondent’s legitimate interests in the disputed domain name.
Proper Party Complainant (Real Party in Interest)
There are two elements to the ¶4(a)(i) requirement: first, that the domain name be identical or confusingly similar to a trademark and second that it be a trademark in which the complainant has rights. As with proof of other requirements, the complainant cannot rest on a mere assertion of its rights. This has been discussed in earlier Notes, but as it applies to the threshold requirement a registered trademark owner typically attaches its registration as an exhibit to the complaint as evidence of its right and for a licensee the complainant must present a full accounting of its rights which may and probably should include a copy of the license or a declaration by the trademark owner or both. With respect to a registered trademark the complainant can be any one of a number of persons other than the registered owner – suing jointly or severally – although if severally it must establish its relationship within the family. It “need not be the only person or entity with rights in the trademark. This aspect is sometimes expressed by saying that the rights that must be established in the complainant need not be exclusive rights,” DigiPoll Ltd. v. Raj Kumar, D2004-0939 (WIPO February 3, 2005) (the registered trademark owner, who was also the founder of the Complainant Company, issued a statement that the Complainant had been given “full authority and license” and that the Complainant was “the de facto owner of the trademark”). In HQUK Limited v. Head Quarters, D2003-0942 (WIPO February 5, 2004), the Complainant and the trade mark owner were “sister companies” and the latter had consented to the UDRP proceeding. In Miele, Inc.v Absolute Air Cleaners and Purifiers, D2000–0756 (WIPO September 11, 2000) the Panel found that the complainant had rights in and duties concerning the trademark “through its affiliation with its grandparent corporation which owns the trade-mark registration.”
The right a complainant must demonstrate is the core issue in NA PALI SAS v. BWI Domains, Domain Manager, D2008-1859 (WIPO January 27, 2009). The Complainant failed despite opportunity by a Rule 12 Procedural Order to supplement the record. “In its reply to the Panel Order, the Complainant stated that it is the exclusive licensee of the QUIKSILVER trademark in Europe, and further that the former owner Quiksilver International PTY Ltd has assigned its ownership of QUIKSILVER to QS Holdings Sarl.” The Panel pointed out that although a “licensee may be regarded to have ‘rights’ in a trademark ... the contractual text of the license agreement as well as the further relationship between the licensor and licensee are crucial in determining the scope of such rights.” However, “based only from the documentation and the Complainant’s statements [the Panel could not] draw the conclusion that the license as such has placed the Complainant in a position that it has the power to have assigned and to hold a domain name which is confusingly similar to a trademark belonging to a third party (namely, the licensor).”
While it may be – and generally is – apparent in this class of case that the respondent has no rights or legitimate interests in the disputed domain name, that alone cannot be a basis for transferring it to another who also has no rights. The Panel in NA PALI SAS cites a case early in the canon, NBA Properties, Inc. v. Adirondack Software Corporation, D2000-1211 (WIPO December 8, 2000) in which the panelist, similarly confronted with a request to transfer <knicks.com>, held in denying the complaint that it “would place ownership ... in an entity other than the trademark owner without consent from the trademark owner.”
The teaching of these cases is that a UDRP proceeding must be initiated by the party who has the right to maintain it and if that party is a licensee it has to demonstrate that its license to use the trademark also authorizes it to own a domain name incorporating the trademark.
Accrual of Right or Legitimate Interest
Paragraph 3(c)(i) of the Policy achieves its goal of balancing rights by requiring the respondent to prove two separate but related elements that as of a specific date – “before any notice to you [the respondent] of the dispute” – it is using or has “made demonstrable preparations to use” the domain name “ in connection with a bona fide offering of goods or services.” While laches in initiating a proceeding is no defense, delay in giving notice may be consequential if in the interim between registration and notice the respondent is able to satisfy the requirements. Accordingly, it is in the complainant’s interest to reduce the time between the two points.
A respondent’s right must accrue not after but “before any notice” and optimally be certain as of the date of registration; actions taken post-Notice favor the complainant. Poker Host Inc. v. Russ "Dutch" Boyd, D2008-1518 (WIPO December 1, 2008) (“If use following complaints were taken into account, the Policy could be rendered wholly ineffective by respondents rapidly posting websites which ostensibly constituted fair use of disputed domain names.”) Timing therefore is a significant factor for both parties. Its importance is illustrated in Pacific Bearing Corp. v. Pacific International Bearing Sales Inc., FA0812001238265 (Nat. Arb. Forum January 28, 2009). The parties had “co-existed for years, indeed, Respondent sold Complainant’s product for years.” Although the registration of <pacificbearingsales.com> post dated the issuance of the Complainant’s trademark, the domain name had for years been the Respondent’s presence on the Internet.
The fact that the respondent’s preparations have not resulted in an active website is not determinative against him as long as he can demonstrate steps toward that goal “before any notice ... of the dispute.” California Farm Bureau Federation v. Steven A. Sokol, FA0811001235897 (Nat. Arb. Forum February 2, 2009). “Demonstrable preparations” is for the respondent what proving common law rights is to the complainant: neither can be satisfied by assertion. RAI Radiotelevisione Italiana S.p.A. v. The Netwizzy Company S.L., D2008-1862 (WIPO January 24, 2009) (“The fact that the Respondent has not yet developed its website for the Domain Name is no bar to it demonstrating that it has a right or legitimate interest in respect of the Domain Name, but it must nonetheless produce to the Panel something more than a bare assertion.” The Respondent in California Farm Bureau proved that from the mid-1980s he styled his interior decorating as “California Country,” contemporaneous it appears with the issuance to the Complainant of an identical trademark.
Making Rights Contractually Clear
If an owner intends to restrict a reseller from using its trademark in a domain name it must spell out the restrictions clearly in a written contract. Respondents benefit from any uncertainty. The Complainant’s inattention to this basic prescript is at the core of the dispute in Dakota Alert, Inc. v. WinterHaven, Inc., FA0812001236721 January 29, 2009). It argued that absent a specific agreement to the contrary a reseller has no right to use an owner’s trademark. This is a misreading of the minority view stated in the WIPO Overview which reads: “Without the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name.” In other words, a right to use the trademark “as the basis for a domain name” requires express permission. The proposition that a reseller or distribtor has no right may be persuasive where it elects itself to that position, an interloper trafficing uninvited in the trademark owner's goods – Genzyme Corp. v. Robert Brown d/b/a BladSpray, Inc., FA902965 (Nat. Arb. Forum March 9, 2007) – but in Dakota Alert the Respondent alleged that “Complainant solicited [it] to be a reseller of [its] products.” Unless complainant has issued guidelines that expressly address use of trademarks the respondent will be found to have registered the disputed domain name in good faith.
The settled law is that acquiescence gives rise to a right, unless abused. For example, in Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, D2002-0936 (WIPO December 16, 2002) the Panel found that “at the time of registration that Complainant had no distribution agreement or policy in place to prevent Respondent from registering and using the domain name... [and that] Complainant's representatives appear to have known of Respondent's conduct and encouraged her in her use.”
The majority view of a respondent reselling or distributing goods of a trademark owner is capsulized in Oki Data, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001). A respondent can successfully defend itself if it 1) actually offers the goods or services at issue; 2) uses the website to sell only the trademarked goods – “otherwise, it could be using the trademark to bait Internet users and then switch them to other goods”; 3) accurately discloses the registrant’s relationship with the trademark owner – “it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents”; and 4) “is not out to corner the market in all domain names that use the mark, thus depriving the trademark owner of reflecting its own mark in a domain name.”
In Dakota Alert, the Panel held that “Complainant’s own submissions show that Respondent substantially conformed to [the Oki Data] requirements” whereas in Genzyme the “reseller” although it was dealing in the Complainant’s products was someone acting without permission; an interloper.
Injunction Against Use of Domain Name versus Limiting Use of Infringing Trademark
If on balance, the respondent in a UDRP proceeding or a defendant in an ACPA action [15 U.S.C. Sec. 1125(d)] proves it acted in good faith in registering a domain name identical or confusingly similar to a distinctive (registered or unregistered) trademark, it will not be compelled to give it up or enjoined from using it. The ACPA's legislative history – which thematically is similar to findings and recommendations in the WIPO Final Report – supports the view that “Congress sought to stop ‘individuals seeking extortionate profits by reserving Internet domain names that are similar or identical to trademarked names with no intention of using the names in commerce.’ H.R. Rep. 106-412, at 6 (1999),” quoted in Dudley d/b/a Healthsource Chiropractic v. Healthsource Chiropractic, Inc., 585 F. Supp. 2d 433, ft 5 (W.D.N.Y 2008). However, if – as is the case in Dudley – the federal action includes a claim under 15 U.S.C. Sec. 1125(a) (False Designation of Origin) and the plaintiff proves he is the senior user of the mark, the defendant will be compelled to limit its use within the senior’s market. If the issue of limiting use had been asserted in a UDRP proceeding it would have been rejected for consideration as outside the Policy’s scope. WIPO Final Report, Para. 137, noted that the proposed regime “is not properly concerned with matters that fall within the purview of [Court litigation governed by the civil law of sovereign States] ..., except insofar as those laws, in accordance with recognized international principles, leave open areas of choice.”
Dudley illustrates the odd coincidence of two persons, residents of different non-contiguous States, one an individual practitioner and the other a corporation franchising a chiropractic service, selecting the same name for their businesses, “Health source Chiropractic.” The plaintiff’s Internet presence is <healthsourcechiropractic.com>; owing to the unavailability of that domain name, the defendant registered <healthsourcechiro.com>. Complicating the situation, the defendant was the registered trademark owner of HEALTH SOURCE CHIROPRACTIC [Sec. 1125(d)(B)(i)(A)(I)]. While the plaintiff successfully relied on a common law right – equivalent to satisfying ¶4(a)(i) of the Policy – it failed to prove the other elements, lack of rights or legitimate interests in the disputed domain name [Sec. 1125(d)(B)(i)(A)(II) and (III) equivalent to ¶4(c)(i) and ¶4(c)(ii) of the Policy] and bad faith [Sec. 1125(d)(B)(i)(A)(V - IX) equivalent to ¶4(b)(i - iv) of the Policy]. Since there was no evidence of bad faith registration – or “exploitative intent,” discussed in Note of January 29, 2009 – the Court denied the application for injunctive relief enjoining use of the domain name.
In terms of limiting the use of the domain name, which is outside the scope of the UDRP, either in opposition to the motion for preliminary injunction or in narrowing the issues prior to its filing, the defendant agreed to limit its use of the trademark by refraining from advertising its services with the trademark in a stipulated market. The Court accepted this restriction and concluded that the geographic range was appropriate. However, if
plaintiff can show in the future that defendants have not cured their use of the name "HealthQuest Chiropractic" versus "HealthSource Chiropractic" with respect to Dr. Divito's advertising materials and if plaintiff can demonstrate that the Franchisor is once again listing Dr. Divito's office as "HealthSource of Rochester" instead of "HealthQuest of Rochester," then the Court will revisit its ruling to determine whether defendants' acts should be enjoined.
Would the result for the domain name half of the federal complaint have been any different in a UDRP proceeding? Likely not, because the defendant’s evidence in opposition to preliminary injunction supported its contentions that 1) “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name [was being used] in connection with a bona fide offering of goods or services” [¶4(c)(i) of the Policy]; and 2) “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” [¶4(c)(ii)].
A UDRP decision on point – of which more will be said in a later Note discussing the timing of a respondent's right or legitimate interest – is Pacific Bearing Corp. v. Pacific International Bearing Sales Inc., FA0812001238265 (Nat. Arb. Forum January28, 2009) disputing over <pacificbearingsales.com>. Evidence that the Respondent conducted its business under its trade name using the “domain name in connection with a bona fide offering of goods or services” was conclusive even “if [it had] acquired no trademark or service mark rights.”
Pattern as Evidence of Bad Faith
It is bad faith to register “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” [Paragraph 4(b)(ii) of the Policy]. Webster’s Ninth New Collegiate Dictionary defines “pattern” as conduct that is “frequent or widespread.” It can be established by proving number of abusive registrations of one or many different trademarks over a shorter or lengthier period of time. “Due to the ease with which an innocent domain registrant can create an inadvertent collision with an existing trademark ..., the Policy requires a pattern of such conduct in order to establish bad faith, ” Smokey Mountain Knife Works v. Deon Carpenter, AF-230 (a,b) (eResolution July 3, 2000). The Panel continues:
“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.
The condemnatory conduct applies to two types of registrants: 1) those who have an ICANN history of registering names that incorporate well-known and famous trademarks; and 2) those others who register multiple domain names within a short period of time, within hours or days. For example, it has been held that where “a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks,” Mobile Communication Service Inc. v. Webreg RN, D2005-1394 (WIPO February 24, 2006).
To take the most recent example, the Respondent in National Cable Satellite Corporation d/b/a C-SPAN v. New Media Nexus c/o Lyle, Rumble, FA0811001236010 (Nat. Arb. Forum January 26, 2008) registered on the same day 91 domain names incorporating C-SPAN, in forty one of which it omitted the hyphen. Under Smokey Mountain, this constitutes vertical targeting. Leaving aside the Respondent’s risible denial that it knew not of C-Span and that it was unable to establish that National Cable Satellite had multiple trademarks, of particular interest is the issue of adding generic terms. There is a difference between trademarks vulnerable because they are generic and domain names composed of trademarks plus a generic term.
In National Cable, the Respondent [in its own words] “added very specific, distinctive words to reinforce the acronym ‘Cyber SPace Astro Network’ i.e. CSPAN as used in our astronomy/space publishing and internet business that Respondent founded 21 years ago.” The “very specific, distinctive words” are no more than generic terms of which many describe the services the Complainant itself provides. They include, for example, “coverage”, “download”, “movies”, “videoclips”, “schedule” etc. The law pithily stated is that a “non-distinctive addition of a generic term to a trademark does not sufficiently differentiate the domain name at issue from the Complainant’s [C-Span] trademarks.” If the dominant term of the domain name is the complainant's trademark generic additions are disregarded.
March 2009 NOTES , DATES ARE IN REVERSE ORDER
“Fanatics,” as one Panel put it in dissent talking of fan sites, are “are the flip side of critics,” Richard Starkey v. Mr. Bradley, FA0612000874575 (Nat. Arb. Forum February 12, 2007) (<ringostarr.mobi>). Panelists split on fan sites as they do for criticism sites generally, whether it is permissible to register a domain name identical to the celebrity’s. As a rule, if a respondent is not authorized to use a complainant’s mark and benefits financially or otherwise from its use, then the registration is abusive. This is no different from a non-fan site; misappropriation is bad faith, but unlike the non-fan site, the respondent cannot argue lack of knowledge of the celebrity. But, the split goes further. According to the majority,
Some panels believe that an active, noncommercial fan site may be a legitimate interest; others believe that a fan does not have the right to express his or her views, even if positive, on a fan site that uses a domain name that is identical to the celebrity’s trademark.
The more restrictive view, 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. In particular, where the domain name is identical to the trademark, the respondent, in its actions, prevents the trademark holder from exercising the rights to its mark and managing its presence on the Internet.
The proviso for View 1, which recognizes the legitimacy of fan sites, is that it has to be genuine and active. As with criticism sites, a domain name cannot be passively owned and be a fan site. Stevland Morris a/k/a Stevie Wonder v. Unofficial Fan Club, FA 453986 (Nat. Arb. Forum June 22, 2005) (“[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.”
The Respondent in Eddy Merckx Rijwielen Cycles NV vs. Irfan Khalil, D2009-0074 (WIPO March 12, 2009) (eddymerckx.com) advised the Panel “that he 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 does offer goods and services that compete with those of the Complainant.” In arguing for safe harbor use, it was pointed out in a case from 2000, Helen Fielding v. Anthony Corbert aka Anthony Corbett, D2000-1000 (WIPO September 25) that while “while paragraph 4(c)(i) of the Policy refers to ‘preparations to use’ a domain name in the context of offering goods or services, paragraph 4(c)(iii) refers only to the active ‘making’ of a ‘legitimate noncommercial or fair use’.” The first test accepts “demonstrable preparations” while the third test requires actual use, that is “making.” This indicates
that its drafters intended to limit the circumstances in which legitimate noncommercial or fair use could successfully be claimed. Applying the express language of the Policy to Respondent’s claim of legitimate noncommercial or fair use, the Panel finds that Respondent is not "making" such legitimate non-commercial or fair use of Complainant’s mark in the disputed domain name.
For a fair use defense, by fan or critic, it is not enough for a respondent to have plans for the future. For a non-fair use defense, the respondent must prove that he or she is moving demonstrably to actualize his or her plans.
Using Common Words to Attract Internet Traffic
A trademark owner’s enforceable rights do not include taking away a registrant’s domain name composed of common words chosen for their descriptive value. Volume registrants may have a heightened duty to assure that they are not trespassing on a trademark owner’s right, Land Mark Group v. Digi Media.com, FA0406000285459 (Nat. Arb. Forum August 6, 2004) (<landmarks.com>), but absent proof that the domain name was registered to take advantage of a complainant’s trademark, Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006) (<mobilecom.com>), there can be no question of abusive registration.
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.”
An illicit purpose has been found, for example, where the respondent populates its website with advertising competitive with the complainant’s goods or services, Factory Mutual Insurance Company v. Valuable Web Names, D2008-1014 (WIPO August 19, 2008) <myrisk.com>); or, designs it website to emulate the complainant’s, Starwood Hotels & Resorts Worldwide Inc. v. Franck Dossa, D2008-1812 (WIPO January27, 2009); or is offering the domain name for sale, Royal Bank of Scotland Group plc v. TA Funds c/o Kison Patel, FA0807001218036 (Nat. Arb. Forum September 17, 2008). Indeed, these are the most conspicuous examples of inconsistency between what the respondent contends in defense and its conduct. A party’s conduct, not its contentions, are more telling and frequently conclusive of bad faith.
Bradley D. Mittman is an example of the Respondent’s evidence consistent with its contentions. The Respondent acquired its interest in <frontrunners.com> from the original registrant prior to the Complainant’s application for a trademark but after the Complainant’s alleged first use of the trademark in commerce. Even if the Respondent had accessed TESS, it would not have found any trademark right for the Complainant, thus no proof of actual knowledge. Unawareness of the Complainant or its trademark is evidenced by the history of the website. The Panel observed
that the Wayback Machine (“www.archive.org”) has cached six versions of the site to which the disputed domain resolved between October 18, 2000 and January 9, 2007. In none of those versions is there any apparent link to a product or services of the Complainant or any product or service competitive with that of the Complainant. That is corroborative of the Respondent’s contentions both in respect of the Respondent’s use as well as that of its predecessor.
It is not a violation of the Policy to use “a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms.” Creating an advertising portal is a legitimate business; it is a bona fide offering of goods or services.
Inconsistency Between Avowal of Good Faith and Content
There are a limited number of epithets that can be added to a trademark to signify disapproval and criticism of the complainant. The most ubiquitous is “–sucks”. Other examples include “stop–,” “ban–,” “–campaign,” and “boycott–.” The question early in UDRP history was whether a domain name composed of a trademark + epithet was confusingly similar to the complainant’s trademark. It was answered inconclusively in the WIPO Overview Paragraph 1.3. It found that there was a majority view and a minority view:
Majority view: A domain name consisting of a trademark and a negative term is confusingly similar to the complainant’s mark. Confusing similarity has been found because the domain name contains a trademark and a dictionary word; or because the disputed domain name is highly similar to the trademark; or because the domain name may not be recognized as negative; or because the domain name may be viewed by non-fluent English language speakers, who may not recognize the negative connotations of the word that is attached to the trademark.
Minority view: A domain name consisting of a trademark and a negative term is not confusingly similar because Internet users are not likely to associate the trademark holder with a domain name consisting of the trademark and a negative term.
The Panel in Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) opined – based on a “review of the more recent WIPO cases ... involving a ‘sucks’ domain name ... panels have found confusing similarity” (footnote 5). This led him to conclude that “[i]t thus appears that the majority view has become the consensus view, and that panels no longer follow the minority position (which, in any event, was based only on a handful of cases from the very early history of the UDRP).”
Important to note about the footnote opinion in Sermo is that the determination on the issue of confusing similarity only concerns jurisdiction. It does not predetermine whether the respondent has a right or legitimate interest in the disputed domain name or that its registration and use of it is abusive. In fact, in Sermo the Panel denied the complaint on the grounds that “[f]air use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy.” A finding of confusing similarity, therefore, makes no difference to the outcome of the proceeding and for that reason the minority view is more or less meaningless. It was applied for the use of “boycott–,” Wal-Mart Stores, Inc. v. Traffic Yoon, D2006-0812 (WIPO September 20, 2006) (<boycottwalmart.com>). The Panel found that there was no confusing similarity and denied the complaint, but suggested that if the verb were positioned after “walmart” it may have supported a contrary finding).
There are of course respondents who abusively register domain names composed of trademarks + epithet and when challenged avow good faith. Thus, <airaustralsucks.com>, Air Austral v. Tian Yi Tong Investment Ltd., D2009-0020 (WIPO March 4, 2009). The Panel found that the domain name was confusingly similar to the Complainant’s trademark, but in examining the website to which the domain name resolved determined that the Respondent’s avowal of good faith was contradicted by its contents. Gripes that warrant protection must concern the complainant in particular not criticisms in general. Thus,
Even if the disputed domain name in this case was as the Respondent apparently claims registered because of a perceived potential business value in connection with its site as <suetheairlines.com>, it is not at all clear that this would have entitled the Respondent to make use of Complainant’s trademark in particular for such purpose, unless the Respondent’s grip was with the Complainant in particular.
Content of a website is put in issue when the respondent contends that it has a right or legitimate interest in the domain name under the noncommercial or fair use privilege granted under ¶4(c)(iii) of the Policy. The evidence, however, has to support the contention, which it did not in Air Austral.
Dominant Word Elements of Design + Words Mark
It is a hard argument that a domain name identical or confusingly similar to words disclaimed in a design + words trademark violates a right a complainant may have in it. The 3-member Panel in Airborne Systems North America and Airborne Systems Group, Ltd. v. Virtual Point, Inc., D2008-1669 (WIPO March 6, 2009) chose to defer finding confusing similarity “until taking up that argument below in connection with the issue of bad faith.” “[W]hether a domain name is identical or confusingly similar to a mark, is to be judged against the dominant textual elements of a complainant’s mark. This approach is supported by a series of prior panel decisions,” Borges, S.A., Tanio, S.A.U. v. James English, D2007-0477 (WIPO June 21, 2007). Apart from the fact that the words “Airborne Systems” were disclaimed, they clearly were not the dominant element.
In fact the Panel never reaches the jurisdictional issue because the “Complaint is not persuasive on this point [bad faith].” Under the heading “registered and used in bad faith” the Panel states that the predicate for each of the examples [¶4(b)(i-iv) of the Policy] is “the Respondent’s awareness of the Complainants’ mark.” Moreover, there “cannot be bad faith, for the purposes of the Policy, unless the Respondent had the mark in contemplation and sought to take illicit advantage of it.” The predicate for bad faith is not awareness alone, unless coupled with purpose to take advantage.
In Airborne Systems like another recent case Salmi Oy v. PACWEBS, D2009-0040 (WIPO February 4, 2009) there were pre-initiation discussions about purchasing the domain name, but in Airborne Systems the Complainant used the information in an attempt to establish awareness. However, “nothing in the record indicates that the Complainants asserted to [the Respondent] their claims of common-law trademark rights in the words ‘airborne systems,’ either in those discussions or at any time before the Domain Name registration was transferred to the Respondent.”
Although by virtue of the parties’ discussions the Respondent was aware of the Complainants qua Complainant it was even more aware that “the Domain Name had value to the Complainants and may even have harbored the hope it could eventually sell it to them.” But, absent awareness of the Complainant’s trademark right when it registered the domain name or proof that the domain name was registered to take advantage of any associated good will no inference could be drawn of bad faith. Complainants failed to “overcome [the Respondent’s denial of knowledge] with persuasive evidence that they had a protected mark when they discussed purchasing the Domain Name and made that fact known to [the Respondent].”
Divining Respondent’s Intention
In some cases it is impossible to judge – based on the record before the Panel – whether the respondent’s registration is abusive even though there may be suspicion that it is. An example of this in one of its guises was illustrated in the March 19th Note, solved by the Panel issuing Procedural Orders; unusual because the procedural device is a form of compelled discovery. Other Panels would have dismissed the complaint on the grounds that the complainant had failed to prove its case. A middle way, rare rather than unusual, is for the Panel to defer making a judgment, allowing the respondent to keep the domain name but advising the complainant to try again if the content tips to a violation. This was the case in SAP AG v. Raffael Caspi, D2009-0060 (WIPO March 6, 2009) (<sap-microsoft.com>). The Panel stated he “remains in doubt on the provided record as to the Respondent’s intentions in the matter.” In a footnote he puts the Respondent on notice that if “evidence of abusive use ... was to come to light only after issuing of the present decision, such new development may provide possible grounds for a re-filing.”
The WIPO Overview notes at Paragraph 4.4 that a “refiled complaint will ... be accepted if it includes newly presented evidence that was unavailable to the complainant during the original case.” There is consensus in rejecting the argument of res judicata as a defense against a refiled complaint, that it does not apply when the factual circumstances change. Abt Electronics, Inc. v. Gregory Ricks, FA0701000904239 (Nat. Arb. Forum March 27, 2007). The point was also made in Storey v. Cello Holdings, LLC., 347 F.3d 370, 385-387 (2nd Cir. 2003). The circuit court rejected the notion advanced by the district court that a registrant’s right to use a domain name was akin to a property interest, fixed by events that occurred at a specific point in the past, and shielded from subsequent attack. “Congress intended the cybersquatting statute to make rights to a domain name registration contingent on ongoing conduct rather than to make them fixed at the time of registration.” If the contents of the website change to commercial exploitation of the trademark the complainant is not precluded from its UDRP remedy.
The Panel’s uncertainty in SAP was based on the Respondent’s contention that the website was noncommercial and what it in fact contained, four articles on SAP and Microsoft, which was not inconsistent with that assertion. For “a complaint to succeed under the Policy, the Respondent’s motivation when registering the Domain Name has to have been abusive.” There has to be proof that Respondent “intended to exploit the complainant’s rights unfairly.” This is not unusually achieved by inference. However, bad faith is not proved by the “mere fact that the Respondent registered the Domain Name with knowledge of the Complainant’s rights.” In SAP, there was no evidence to contradict the Respondent’s stated intention to create a website “for a noncommercial forum site providing information and comment relating to the programs and software of the Complainant and Microsoft.” Suspicion of bad faith is not evidence of bad faith.
New Comment, LexisNexis Trademark Blog:
Slumbering on One's Rights; Laches vs. Lapse of Time
Against cases initiated under the Uniform Domain Name Resolution Policy the consensus is that laches is not a defense to a claim of violation. Paradoxically, however, lapse of time may be fatal. In contrast, laches can be a viable defense to a claim for trademark infringement under the Lanham Act if “during the plaintiff’s delay in bringing suit, the infringer developed an identity as a business based on the mark,” Internet Specialties West, Inc. v. Milon-Digiorgio Enterprises, Inc., 2009 U.S. App. Lexis 5454, 15 (9th Cir. 2009). Offsetting this principle is another that holds that mere delay cannot be said to be prejudicial – even, as in Internet Specialties West, when the plaintiff takes no action for six years – if the defendant developed its business based on strategies other than the mark. Prejudice requires proof that the defendant “has continued to build a valuable business around its trademark during the time that the plaintiff delayed the exercise of its legal rights,” citing Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088, 1102-03 (9th Cir. 2004)(Court’s emphasis). The emphasis on “around its trademark” and “based on the mark” rests on....
Timing in Determining Respondent’s Conduct
Carlyle Coutts Capital Corporation registered two domain names that The Carlyle Group complained were confusingly similar to it trademark THE CARLYLE GROUP. There is no issue that the domains are as alleged, but confusing similarity alone is insufficient to support a violation of the Policy. The Carlyle Group v. Carlyle Coutts Capital Corporation, D2008-1960 (WIPO February 19, 2009) (<carlyle-coutts.com> and <carlylecoutts.com>). A party whose name is identical to the trademark and conducts business under it prior to the complainant or prior to notice from the complainant is prima facie legitimate. To take a theatrical example the Respondent in Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO October 16, 2003) used the stage name LEXUS MICHAELS in defending his incorporating the LEXUS mark in <lexusmichaels.com>.
The determinative factor is timing. There was in The Carlyle Group no evidence that the Respondent was not what it claimed to be, a business entity duly formed in 2000 under the laws of Toronto with an associated company Carlyle Coutts Capital Corporation SA formed under the laws of Panama. The genealogy of the founding member of the Respondent is less than credible, even risible, but the issue was not whether they were historically related to the Carlyles and the Coutts families of England and Ireland, but that their company existed prior to a critical event in the Complainant’s business, a partnership between The Carlyle Group and The Royal Bank of Scotland which occurred two years after the creation of the Respondent’s business. “Coutts” is the brand of the private banking arm of the Royal Bank of Scotland Group. The Panel noted that “although it might have assisted its case, the Respondent is not required to provide evidence as to why it selected its corporate name.”
The Respondent defended on both ¶4(c)(i) and ¶4(c)(ii) grounds. There are cases, and The Carlyle Group is among them, in which the Panel determines to defer making a decision under ¶4(a)(ii) of the Policy – “rights or legitimate interests” – and proceeds to examine the record for bad faith. This is done precautionary, because a finding in the respondent’s favor defeats the complaint. For this reason, “a Panel must be careful,” Banco Espírito Santo S.A. v. Bancovic, D2004-0890 (WIPO December 16, 2004). In The Carlyle Group the evidence that the Respondent did not register “the disputed domain names to intentionally attract internet users, for commercial gain, by creating a likelihood of confusion between the disputed domain names and THE CARLYLE GROUP trademark” preponderated in the Respondent’s favor.
In passing, the Panel pointed out an interesting line of enquiry: “[i[t is course possible that the Respondent could have established its corporate name to somehow reflect the reputation of or confuse the public as to its association with the Complainant.” The big “But,” however, “is that the Complainant does not make this allegation and on the provided record the Panel does not find it to be probable.”
It is always eye opening to learn that an unfamiliar word is in fact current in English. “Salmi” is short for “salmagundi,” a “ragout of partly roasted game stewed in a rich sauce.” It is also a trademark of a Finnish company in the business of manufacturing zippers.
However, “[t]he mere existence of Complainant’s trademark rights at the time Respondent registered the disputed domain name does not, as Complainant argues, create any presumption of knowledge,” Salmi Oy v. PACWEBS, D2009-0040 (WIPO February 4, 2009). That the respondent has knowledge must be demonstrated, either inferentially – content of the web site for example – or actually by some literary tick – contained in pre-initiation correspondence for example. With famous or well known trademarks the Panel may conclude bad faith by the respondent denying the obvious; that is, by being willfully blind to a third party's rights.
In Salmi, the Complainant did “not allege that the SALMI mark is famous in the trademark sense ... and nothing on the [Respondent’s] website maintained at the disputed domain name betrays knowledge of Complainant or its mark.” Neither of the two factual circumstances cited by the Complainant led to the conclusion it wanted the Panel to draw, namely that there had been an exchange of correspondence to purchase the domain name, giving rise to the inference that the Respondent was offering it for sale, or that the Respondent as a self proclaimed aggregator of domain names gave rise to a heightened duty to determine whether its registration violated another’s rights.
The first circumstance in Salmi proved nothing because the correspondence was initiated by the Complainant. Paragraph 4(b)(i) is only triggered when the respondent initiates the offer to sell the domain name. The second factual circumstance, respondent as aggregator becomes relevant only when the disputed domain name is either higher on the classification scale or the complainant offers evidence of opportunism with domain names composed of generic or common terms, that is that the respondent had reason to know or could not have been unaware that it was appropriating a trademark for its domain name.
As far as awareness was concerned – interchangeable with knowledge – while the Complainant in Salmi had registered trademarks in many foreign jurisdictions it had no trademark in Australia, the Respondent’s residence, and no evidence of marketplace activity there. Therefore, the Respondent’s denial of knowledge – its unawareness of the Complainant or its mark – was not implausible.
Topical Notes (“Pattern of Conduct")
The second of the four examples of bad faith [Paragraph 4(b)(ii) of the Policy] reads:
[Y]ou 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.
The example contains two elements for violation, both of which must be satisfied.
The phrase “corresponding domain name” refers to the Second Level Domain that allegedly “prevents the owner of the trademark from reflecting [its] mark.” It is not a defense that the complainant has other TLD’s available to it, provided however that the complainant also demonstrates that the respondent has “engaged in a pattern of such conduct.”
The second element contained in the phrase “engaged in a pattern of such conduct” is elucidated in the WIPO Overview at Paragraph 3.3. The consensus view is that the element may be satisfied by showing either “multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to known trademarks.” The consensus concludes with the proviso that “the registration of two domain names in the same case is not generally sufficient to show a pattern.”
For sufficiency in showing a pattern, “Panels have considered number of transfers, general frequency of cases commenced, procedures implemented to prevent inadvertent registration of others’ marks, among other things.” However, “[n]ever to this Panel’s knowledge [has there been] a case in which Respondent prevailed substantially on grounds argued here [simply registering large swaths of domain names – some further showing of conduct is required – or complainant initiated offers to buy domain names],” Salmi Oy v. PACWEBS, D2009-0040 (WIPO March 4, 2009).
Serial cybersquatters battle credibility – they may, after all, really and truly got there first; serial typosquatters have no credibility because varying a trademark is evidence of knowledge of it.
9/23/08 – Pattern of Conduct
10/29/08 – History of Cybersquatting: “Pattern of Conduct”
2/2/09 – Pattern as Evidence of Bad Faith
Topical Notes for
¶4(a)(i) (Jurisdiction)
¶4(a)(ii) (Rights or Legitimate Interests)
¶4(a)(iii) (Bad Faith)
¶4(b)(i) (Selling, etc)
Asserting facts based on private knowledge unsupported by evidence of their truth risks losing the contest. This is illustrated certainly in cases involving unregistered rights in which the complainant’s failure to adduce sufficient evidence of secondary meaning is fatal to jurisdiction. It also occurs in cases in which one or the other party relies on a history, the facts and documents of which are under the party’s control and not produced. UDRP proceedings in this regard are not dissimilar to national court expectations as regards proof. The party with the burden must bare his hand.
In Renalo Investments Limited v. Dot Coms, Inc. / Mr. Fulviu Fodoreanu, D2008-1791 (WIPO February 28, 2009) the Respondent alleged that the Complainant’s facts were “fabricated” to “create confusion and deceipt [sic] to infringe on our patented invention <sentimente.com> and should be ignored by this panel, and the complaint should be dismissed.” The question was, Who was fabricating to confuse? The Panel noted two different kinds of problems with the Respondent’s submission. First, its alleged patent or patents applications to the USPTO for software were dated subsequent to the institution of the UDRP proceedings, thereby highlighting its misguided attempt to improve its position. Second, the Respondent refused to produce evidence requested by the Panel to supplement the Record, thereby undermining its credibility.
Setting aside the unusual scope of the Procedural Orders, the Panel simply wanted more evidence to supplement deficiences in the Record, to prompt the Complainant to establish priority of rights or the Respondent to demonstrate rights or legitimate interests. The Complainant had to provide “relevant evidence of the registration and use of the domain name <sentimente.ro> in 2001 and/or prior to January 3, 2002 [the date of registration of <sentimente.com>]. The Respondent was directed to “produce documentary evidence supporting or in connection to [its] statement of ‘have been promoting and selling the software to numerous prestigious companies’ such as copies of communication sent and also received from such companies before November 20, 2008.”
The Panel gave each party an opportunity to produce documentary evidence under its custody and control. The Complainant complied with the Procedural Order. The Respondent did not; rather it “indicat[ed] that the communications pertaining to the software transactions were ‘sealed under confidentiality agreement and thus could not be disclosed’ to the Panel.” Since it refused to produce its evidence and the Complainant did the Respondent could not establish any rights or legitimate interests in the disputed domain name. And, since the Respondent’s composition of the website was “almost identical to the Complainant’s official website” – raising a specter of copyright infringement [see Note March 10, 2009, Copyright Infringement as an Issue in UDRP Cases] in addition to a violation of ¶4(b)(iv) of the Policy [falsely implying an association with the Complainant] – the Panel inferred that the domain name had been registered and was being used in bad faith.
Marks that share a common characteristic can receive protection as one of a family of marks. CITI is an example, Citigroup Inc. v. Ian Templeton, D2002-0231 (WIPO April 29, 2002). However, complainants whose marks are common words, for example MALL, are less capable of showing confusing similarity when accompanied by a generic or descriptive affix or suffix, as in PC Mall, Inc. v. Pygmy Computer Systems, Inc., D2004-0437 (WIPO August 25, 2004) contesting <mobile-mall.com> in which there was no obvious typosquatting as there was for <citimorgage>.
The Complainant in Goodwill Community Foundation Inc. v. Texas International Property Associates - NA NA, FA0901001242250 (Nat. Arb. Forum March 10, 2009) alleged ownership in the GCF family of marks, which the Panel accepted. The Respondent rested its defense entirely on the date of its acquisition as earlier than one of Goodwill Community Foundation's trademark applications, unalleged in the complaint. However, the fact that the Complainant failed to allege a trademark registration earlier than the registration of the disputed domain name but corrected course by alleging it in its supplemental submission – which it then mistakenly served on the Respondent rather than its counsel – was of no consequence because “it does not appear that Respondent could be said to have been unfairly surprised in the circumstances.” Procedurally improper though it was,
this panelist agrees that the Complainant should have served the Additional Submission on counsel for Respondent and that it is not the best practice to make an argument for the first time in an additional submission...
The sole difference between the disputed domain name, <gcflearningfree.com> and the domain name used by the Complainant, <gcflearnfree.org> was the internal addition of a gerund, which is in the same category as phonetic variations or adding or deleting a plural or generic term. Even though GCF LEANFREE.ORG as a trademark was not registered until after the Respondent’s registration of the disputed domain name, the Complainant had an earlier certificate of trademark registration for GCF GLOBAL LEARNING. In any event, the Panel found that “GCF’s entire family of marks ... substantially predate the registration of the domain name in issue.”
Appropriating Target’s Trademark for Criticism
There is a split among panelists whether a critic has the right to appropriate its target’s trademark as a domain name. Instead of a consensus, the WIPO Overview, Paragraph 2.4 lists two views:
View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.
View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.
The Panel in The First Baptist Church of Glenarden v. Melvin Jones, D2009-0022 (WIPO February 26, 2009) adheres to View 1. The Respondent (a former member of the congregation) employs <fbcglenarden.com> as a faux location rather than a criticism site; for the criticism, Internet users are redirected to another site, <pulpit-pimps.org>. Adherents of View 2 include Howard Jarvis Taxpayers Association v. Paul McCauley, D2004-0014 (WIPO April 22, 2004). The Policy is not designed to insulate
trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain.... Use of the Policy to provide such insulation may undermine freedom of discourse on the Internet and undercut the free and orderly exchange of ideas that the First Amendment seeks to promote.
There is no question that the kind of criticism offered on the redirected site in The First Baptist Church is entitled to protection under Constitutional law. The only question is whether its use of the Complainant’s trademark for that purpose falsely implies an association with the Complainant [bringing into play bad faith under ¶4(b)(iv) of the Policy], in which event the mistaken belief continues until the redirected domain name reaches the new site’s landing page. This has been condemned as initial interest confusion. The theory is stated in a split decision in Joseph Dello Russo M.D. v. Michelle Guillaumi, D2006-1627 (WIPO April 27, 2007) (the presiding panelist in the majority is the sole Panel in The First Baptist Church). Ironically, the composition of the three member Panel included the panelist who adheres to View 2 (writing of course in dissent) .
In support of applying “initial interest confusion” the Panel in The First Baptist Church restates his position (“applies with equal force here”) in Joseph Dello Russo:
Respondent’s selection of Complainant’s name for her criticism site allows her to make use of Complainant’s service mark in a manner that would lead an ordinary Internet user initially to believe that Respondent was Complainant or that Respondent had Complainant’s permission to distribute her message. Such use is not legitimate under paragraph 4(a)(ii) of the Policy, and the safe harbor of paragraph 4(c)(iii) is not available because Respondent undeniably intended ‘to misleadingly divert consumers’.
And, citing (or, better, self citing) Justice for Children v. R neetso / Robert W. O’Steen, D2004-0175 (WIPO June 4, 2004), “By intentionally selecting Complainant’s mark to present his views, he has not made a legitimate use of the domain names.”
The tussle among panelists comes down to this: Should the respondent be permitted to use the complainant’s trademark (or typo variant) to publish his criticism of the complainant? Limiting the vehicle of criticism has not found support in federal case law, Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) (the circuit court rejected the opinion of the district court as well as the ICANN Panel’s reasoning in the The Reverend Dr. Jerry L. Falwell and The Liberty Alliance v. Lamparello International, FA0310000198936 (Nat. Arb. Forum November 20, 2003) (<fallwell.com>). Although see, Bosley v. Kremer, 403 F.3d 672 (9th Cir. 2005) (the Court held that unlike trademark infringement, there is no commercial use requirement for relief under the ACPA. In remanding, the Court further noted that: “Allowing a cybersquatter to register a domain name with a bad faith intent to profit but get around the law by making noncommercial use of the mark would run counter to the purpose of the Act.” On remand, a subsequent motion by the defendant to dismiss the complaint was denied, 01cv1752 (March 22, 2007).
The Panel in The First Baptist Church based his conclusion of bad faith registration and use on principles laid down in typosquatting cases “where bad faith is presumed from the intentional similarity to the Complainant’s mark.” What the Panel correctly points out and would seem determinative in The First Baptist Church is that “Respondent does not post any content at the domain name...; copying Complainant’s mark is not used for free speech, indeed for any speech at all.” The free speech is on the site to which the Internet user is redirected. Respondent essentially makes a false promise that he taking the Internet user to the owner of the trademark.
Businesses whose monikers are composed of generic or descriptive terms, distinctive and registered as trademarks notwithstanding, compete for the name with others who innocently choose the terms for their domain names. WIPO Final Report ¶172 provides that
the behavior of innocent or good faith domain name registrants is not to be considered abusive. For example, a small business that had registered a domain name could 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.
Trademark owner and small firm match up is present in Dynamic Language Center, Ltd v. LeAnn Hillman, FA0901001242911 (Nat. Arb. Forum March 4, 2009). The Respondent describes herself, as “an honest local South Carolina business woman” who is the principal of a limited liability company, Dynamic Language Services LLC registered in South Carolina. The Complainant is a company formed under the laws of Washington State, owner of DYNAMIC LANGUAGE who has clients in the Carolinas. The disputed domain name is <dynamiclanguageservices.com>.
On the first requirement, the Panel found the domain name conceptually (and confusingly) similar to the Complainant’s trademark. Because the Respondent was acting pro se and “because she is clearly not familiar with the nuances of the Policy and a Complaint under it” the Panel explained that he was going “into greater detail to explain [his] reasoning than if both parties were represented legally.” This involved examining the factual circumstances for each of the ¶4(c) elements, an exercise useful in this case because the Panel pointed out that the Respondent having registered the domain name in her personal name she could not rely on ¶4(c)(ii) – “[Y]ou (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.”
However, the Respondent was successful under ¶4(c)(i) of the Policy (“before notice” etc.):
Of course Complainant offers the same set of skills, but it is true that the website at the disputed domain name carries a prominent Notice that it is located in the Charleston, South Carolina area and serves three surrounding county areas. There is no evidence to support Complainant’s contention that Respondent is diverting some of its business to herself or her company.
Respondents impinge on complainant's rights when they choose domain names for their trademark value thereby misleading Internet users falsely into believing an association with the trademark owner [¶4(b)(iv) of the Policy]. On the other hand, choice of a domain name is allowable when it acts as “a descriptor of the site’s intended content or theme,” Advanced Drivers Education Products & Training, Inc. v. MDNH, Inc., FA 567039 (Nat. Arb. Forum November 10, 2005).
Beating the Competition to the Registrar
The parties in Organic Mattress, Inc. v. Jeffrey Cik, D2008-1922 (WIPO February 20, 2009) both sell mattresses. The Complainant has a registered trademark for ORGANICPEDIC, initially applied for as an “intent to use” and when converted to a 1A the Complainant represented that the trademark’s first use in commerce was a date later than the Respondent’s registration of <organicpedic.com>.” The Respondent has a registered trademark for NATUREPEDIC and numerous other domain names each incorporating “pedic.” The suffix “pedic” is “much used in the sale of mattresses and other orthopedically-friendly products.”
Complainant and Respondent are not unknown to eachother; the former alleges that the latter had actual knowledge of its use of the term “organicpedic” prior to the registration of the disputed domain name through conversations they had at that time to conduct business together. The issue is “knowledge” proof of which would support bad faith. In this case, proof was equivocal at best, inconclusive at worst. “Neither party accurately stated the proper test for proof of registration and bad faith:
Contrary to Complainant’s argument, the United States doctrine of constructive notice is rarely applied in a Policy proceeding. Except in extraordinary circumstances not present in this proceeding, Complainant must show that Respondent had knowledge of Complainant’s mark and selected the disputed name intentionally to take advantage of whatever goodwill attached to the mark or otherwise in bad faith.
And
Contrary to Respondent’s contention, if Respondent had such knowledge bad faith may be found even if the mark at issue be “generic” or “descriptive” or incapable of registration.
The Respondent by sworn affidavit denied having had any conversations or knowledge of the Complainant’s prior use of the term “organicpedic.” The Panel points out that “[w]hen a disputed factual issue as to which both parties provide equally credible evidence of their position, [complainant’s] burden [to prove lack of rights or legitimate interests] had not been carried.” Forfeiture is too severe a penalty absent persuasiv evidence.
This conclusion rests on “[t]wo related Policy precedents.” First, “in a close case, the panel should lean toward the Respondents’ view of things,” citing (or self citing) eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, D2004-0552 (WIPO September 11, 2004). Second, “both parties reside in the United States and their identities and addresses are known to each other. Should Complainant be dissatisfied with the Panel’s decision it has ready recourse to United States courts,” self citing Greyson International, Inc. v. William Loncar, D2003-0805 (WIPO December 3, 2003).
The Panel could also have cited another precedent governing specialized and invented terms as common currency associated with niche businesses and arcane (scientific, medical, etc) activities that chosen as domain names are legitimately owned by the first to register.
Copyright Infringement as an Issue in UDRP Cases
It is not out of the question for a copyright violation in a website to support a finding of bad faith registration and use of a domain name, Sun Microsystems, Inc. v. Mohammad Mahdi Rafiee, DIR2006-0005 (WIPO February 1, 2007) (<sun.ir>), but it cannot be used to confer jurisdiction under the UDRP where none exists. Thus, Nat’l Sports Services Inc. v. Global Media Res. S.A., FA 335580 (Nat. Arb. Forum November 18, 2004):
[T]hough Complainant asserts that it has rights under copyright in the disputed domain name, any such rights are totally irrelevant for purposes of a dispute occurring under the Policy as the Policy requires complainants, as a threshold matter, to hold trademark or service mark rights, not rights under copyright.
The separateness of trademark and copyright would seem self evident, but apparently the theory of jurisdiction under the UDRP continues to be misunderstood even by magna media corporations with untold counsel assets. Two different Panels had to remind Viacom Internation, Inc. that the UDRP is a forum of limited jurisdiction, Viacom International, Inc. v. Domains by Proxy, Inc. / Max Fret, D2008-2001 (WIPO February 24, 2009) and Viacom International, Inc. (“Viacom”) v. na, Max Crossan and Max Fret, D2008-2003 (WIPO March 2, 2009).
There is a practical distinction between “slavish copying” of the complainant’s web site as evidence of bad faith, TPI Holdings v. JB Designs, D2000-0216 (WIPO May 22, 2000), which is within the scope of the Policy, and a domain name that resolves to web site containing copyright infringements, which is not. Copying a complainant's art, phishing for a catch for example is prima facie abusive. In determining jurisdiction it is not content that matters, but resemblance of name (“identical or confusingly similar to a trademark or service mark in which the complainant has rights”). WIPO Overview Paragraph 1.2.
Viacom International holds a trademark in SOUTH PARK; the “disputed” domain names, respectively <stansdad.com> (first case) and <allsp.com> (second case), are “streaming video indexing site[s] for exterior media and [are] in no way associated with or authorized by Viacom or the creators of South Park, Matt Stone and Trey Parker.” The <stansdad> website contains “a cartoon character’s face corresponding to Mr. Marsh [otherwise known as ‘Stan’s Dad’] ... of the “O” in .COM” and “includes episodes of the television show South Park, and the tagline W-W-WATCH SOUTHPARK ONLINE FREE!” The copyrights belong not to Viacom but to a third party.
The Complainant cannot cross the jurisdictional threshold in either case because (in the Panel's conclusion on the first case) the “domain name at issue is clearly not confusingly similar to any trademarks or service marks asserted by Complainant. [The domain name] <stansdad.com> is not remotely similar to SOUTH PARK.” The Panel pointed out that it seemed clear to him that the Complainant’s principal concerns were not the domain name “but ... with what is occurring on Respondent’s web site.” While the concerns “may be legitimate and perhaps entitled to legal redress, the UDRP is not the vehicle to provide such redress.” The second Panel agreed that the “present dispute appears to be more in the nature of a copyright and/or trade mark dispute, and this is not the appropriate forum to decide such issues.”
Proof of Acquisition: Trademark and Domain Name
The Complainant in Eidos Interactive Limited v. BWI Domains, D2008-1818 (WIPO February 12, 2009) acquired its trademark right many years after the registration of the disputed domain name, <justcause.com>. The Respondent is not the original registrant, but acquired the domain name one and a half to two years after the Complainant’s first use of the trademark. Whereas in some cases lapse of time is fatal to the complainant’s claim – where the respondent itself has acquired rights or legitimate interests in the domain name – in Eidos it is not an issue because in the interim the registration of the domain name changed hands and its new owner offered no proof of its bona fides.
A critical issue in determining bad faith is the respective timing of the parties’ rights. See Note December 15, 2008 (Timing of Domain Name Acquisition and Inactivity). A subsequent acquirer of a domain name is regarded as a new registrant and as such is answerable to a complainant from the date of his acquisition. The relevant date for assessing bad faith is when the current owner of the domain name acquires its interest, not the date of the original registration, BWR Resources Ltd. V Waitomo Assoc. Ltd., D2000-0861 (WIPO October 4, 2000).
The interest in Eidos, however, is the Complainant’s offer of proof and the source from which the proof was derived. The investigator hired by the Complainant was unable to unearth ownership information about the Respondent – “[It] carried out extensive searches through a variety of sources, including sources in Grand Cayman, but were unable to identify the owners of BWI Domains. It appeared that the Registrant had gone to great lengths to maintain anonymity” – but reported that “the Respondent is the proprietor of some 36,959 domains, including a number that are closely linked to legitimate third-party corporations. Some of these are listed in the Complaint including, <2005mustang.com>, <ahonda.com>, <athensstateuniversity.com>, and <benandjerrysice cream.com>.” This evidence (according to the Complainant and accepted by the Panel) yielded a strong inference that the Respondent's business model was designed mala fide to take advantage of distinctive and famous trademarks; with Complainant but one of the Respondent’s many trademark victims.
The Complainant drew its evidence principally from the Internet Archive (also referred to as the Wayback Machine). It showed for September 26, 2001 that the disputed domain name was in use by ‘Chesapeake Bay Internet Associates’. Thereafter, “[f]rom around November 27, 2001 to approximately December 22, 2003, the website at the disputed domain name was in use by ‘Just Case Consulting Firm’. Then
[t]here is a gap in the archive showing no use of the disputed domain name from 2004-2005. The first subsequent apparent use of disputed domain name as shown in the Internet Archive is on December 2, 2006, which screenshot shows the text: “justcom.com expired on 11/20/2006 and is pending renewal or deletion” (screenshots throughout all of 2006 reflect the same text). Then, according to the screenshot of January 1, 2007, the website at the disputed domain name was “under construction and coming soon”. From January 6, 2007 to the present, screenshots of the website at the disputed domain name are not in the Internet Archive.”
The inference thus drawn “places the registration of the disputed domain name with the Respondent after December 2, 2006.” Given that the Complainant’s first use of JUST CAUSE occurred in May 2005 and the mark’s increasing strength in the market place, the Panel found that the Respondent had “registered” the domain name and was using it in bad faith.
Topical Notes (Non Exclusive Illustrations of Bad Faith)
The UDRP lists four, non exclusive illustrations of bad faith. Paragraph 4(b) of the Policy does not presume to cover the universe of actionable conduct. 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...
Application of this evidentiary rule finds expression, for example, in the phrase “totality of circumstances.” Wendy Ida v. Farid Azam, FA0901001240643 (Nat. Arb. Forum February 27, 2009) (“Additional factors can also be used to support findings of bad faith beyond those enumerated under Policy ¶4(b),” citing Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
The first of the four examples of bad faith reads as follows:
[C]ircumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of 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.
10/2/08 – Valuable Consideration for Transferring the Domain Name
10/22/08 – Soliciting an Offer to Sell
11/24/08 – Offering a Domain Name for Sale: When Not in Violation
1/8/09 – Buying and Selling Domain Names
1/13/09 – Construing the Prohibition Against Selling, Renting or Otherwise Transferring the Domain Name Registration to the Complainant
Topical Notes for
4(a)(i) [Jurisdiction]
4(a)(ii)[Rights or Legitimate Interests]
4(a)(iii)[Bad Faith]
Trademark Identical to Geographic Location
Hitachi is a geographic region in Japan; it is also a famous trademark [Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. Hilaire Shioura, DWS2004-0002 (WIPO July 23, 2004) (<hitachi.ws>) (the country code “ws” is Samoa)]. Superga is a well-know place name, “a hill overlooking the city of Turin (Torino) and the site of an 18th Century basilica and royal tombs” [Superga Trademark, S.A. v. Gilberto, Publinord S.r.l., D2008-1890 (WIPO February 24, 2009)].
As with trademarks composed of descriptive terms, in these instances names of places, the question is, What was the respondent’s purpose for registering a domain name identical or confusingly similar to a third party’s trademark? In the case of the Hitachi Respondent he wanted to be a co-user of the “Hitachi” name as an Internet presence and that he intended “Hitachi City and Hitachi-Ota to have complete use of <hitachi.ws> following completion of these proceedings.” He argued further that the Complainant’s trademark was invalid. The first argument fails the ¶4(c)(i) test. The second argument is irrelevant to a resolution of a domain name dispute.
The Respondent in Superga presented an entirely different face. It neither claimed a relationship with the Complainant nor disputed that its registration of the domain name was unauthorized. On this admission, the Panel held that the Complainant had satisfied its prima facie burden on the issue of rights or legitimate interests [¶4(a)(ii) of the Policy], but could not conclude from the record that Respondent had any or at best the scale was in equipoise. It then proceeded to examine the record for bad faith.
When the Panel finds either that the respondent has no rights or legitimate interests in the disputed domain name or is unable to decide one way or the other, the resolution turns on the respondent’s motivation for registering the domain name, whether in good or bad faith. The burden is on the respondent either to prove one of the defenses expressly set forth or plausible explanation that refutes bad faith. The Complainant in Superga contended that the Respondent chose the domain name “precisely to capitalize on the fame of the Complainant’s SUPERGA mark.” The Respondent expressly denied such intent. Instead it claimed “that it selected the Domain Name in furtherance of a business model under which the Respondent registers domain names based on the names of Italian towns and tourist sites and then uses them to bring Internet users to informational portals such as its Dove website.”
The Panel accepted the Respondent’s explanation even though it “has yet to realize the purpose” for which it acquired <superga.com>. He concluded that the “Respondent has unquestionably invested substantial time and money in registering a large number of domain names based on Italian place names and building an Italian tourism portal. It seems unlikely that this effort represents an elaborate cover for an attack on the Complainant’s trademark, which is in fact identical to the name of an Italian geographic feature and tourist destination of some importance.”
More typically the complainant is a city, municipality, region and sometimes a tourist bureau or semi-governmental entity involving air or sea ports or recreational or tourest areas. Complainants in this class do not have an actionable claim under the UDRP unless their marks are distinctive or famous. Complainants whose trademarks mimic geographic locations – who use them in a trademark sense – have jurisdiction but are nevertheless in a weak position unless they can prove definitively that the respondent's purpose is to take advantage of the trademark rather than using the name for its generic (descriptive) value; in other words, the difference between a <hitachi.ws> and <superga.com>).
Fraudulent Transfer = Abusive Conduct
There is a penumbra for complaints against agents, employees and business associates who either register their principals’/employers’/associates’ trademarks or control complainants’ domain names and refuse to relinquish them; outside the scope when the refusal is based on business agreements, Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007); early history of dismissing complaint when the conduct “is more accurately described as a fraudulent registration transfer,” than cybersquatting, Decker v. Antwer, FA 263584 (Nat. Arb. Forum June 28, 2004), citing Digital-Logic AG v. Krechman, FA 235827 (Nat. Arb. Forum April 8, 2004) (“[T]he Panel finds that this dispute raises potential contractual issues and suggests fraudulent activity on the part of Respondent, which failed to complete the transfer of the domain name at issue and subsequently renewed the name. Therefore, the Panel finds that the dispute is beyond the scope of the Policy.”) The Decker and Digital-Logic reasoning suggests a reluctance to find abusive registration even with clear evidence of abusive conduct.
However, Panels in later cases appear to be taking a different approach in holding fraudulent and and unauthorized transfers within the scope of the Policy, equating abusive conduct with abusive registration, Worldcom Exchange, Inc v. Wei.com, Inc., D2004-0955 (WIPO January 5, 2005) (Respondent covertly gained access to the ownership database to effect an unauthorized transfer); Wendy Ida v. Farid Azam, FA0901001240643 (Nat. Arb. Forum February 27, 2009) (fraudulent transfer). Criminal activity as another form of abusive conduct, such as phishing, is undoubtedly within the scope, The Royal Bank of Scotland Group plc v. Teddy Jackson, FA0705000992134 (Nat. Arb. Forum July 2, 2007) (fraudulent lottery scheme ).
The Panel adjudicating Wendy Ida described the facts as a “unique set of circumstances.” Typically, “the Panel requires evidence of use of the disputed domain name, [but] this case deals more with the access rights to the disputed domain name itself.” The Panel found that
Complainant has owned and operated the disputed domain name until either Complainant’s hired web developer or a third-party fraudulently transferred the disputed domain name access rights away from Complainant. In either regard, the Panel finds that in this instance, Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).
What is unique in this fact pattern is its analogy to identity theft. The conduct is abusive even if not necessarily cybersquatting as traditionally defined. After all, examples of bad faith set forth in ¶4(b)(i-iv) are non-exclusive illustrations. “Additional factors can also be used to support findings of bad faith beyond those enumerated under Policy ¶4(b),” citing Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Judging from the more recent adjudications, panelists appear to be moving away from the narrow reading in Decker and Digital-Logic. If there is persuasive evidence of fraudulent or unauthorized transfer as with phishing there is no reason to abdicate the case to a civil court since the issue is squarely one of alleged abusive conduct. In both Decker and Wendy Ida the Respondents defaulted; the evidence of how they came into possession of the domain names are entirely within their control and their decision to default rather than assert their rights, if any, is testimony that they had none.
Statutory Remedy for Unauthorized Registration of Personal Names and Tradenames
The UDRP does not provide relief against registration of domain names identical or confusingly similar to personal names and trade names that fall short of trademark status. This limitation is similar to the Anticybersquatter Consumer Protection Act (“ACPA”), 15 U.S.C. 1125(d)((1)(A), although Section 1129(1)(A) (Cyberpiracy protections for individuals) does have a remedy for individuals whose personal names have been pirated by domain name registrants.
Both cybersquatting and cyberpiracy of a personal name were in issue in Daniel Philbrick and Dover Sports, Inc. v. eNom, Inc. Civil No. 07-215-JL (DNH 2009). The disputed domain name <philbricksports.com> deletes an “s” from the Plaintiff’s domain name <philbrickssports.com>. Much to the plaintiffs’ distress all counts were dismissed on summary judgment. Eric Goldman has written a thumbnail summary of the case on his Blog for February 25, 2009. Martin Schwimmer has a different take (post for February 1, 2009). I briefly note the plaintiff's/complainant's evidentiary burden for establishing jurisdictional right to relief.
Both ACPA and UDRP require proof that the plaintiff/complainant is the “owner of a mark”, but the ACPA qualifies this expressly by requiring that the mark is distinctive or famous at the time of registration of the domain name, Section 1125(d)(1)(A)(I) and (II). This qualification finds expression in the UDRP in ¶4(a)(iii): lack of distinction or fame affects the question of good faith; no bad faith without proof that the respondent had knowledge of the complainant or its mark when it registered the domain name.
The Court found Plaintiff’s unregistered “mark” in Philbrick neither distinctive nor famous – merely descriptive – hence “it is simply not entitled to protection under the ACPA.” Under this construction of the ACPA, a plaintiff whose only offense is styling itself by a mark for 25 years is without a remedy against a defendant typosquatter. The Court continued
This is not to demean Philbrick’s sense that eNom has “stolen his good name” that he, and his family, have worked for many years to protect; it simply reflects the fact that the ACPA, like trademark law generally, protects only “good names” that either inherently are or have become distinctive as trademarks. Had Congress intended broader protections, § 1125(d)(1)(A)(ii)(I) would include “a mark that is a registered trade name” or “a mark that has been used in commerce for twenty-five years without regard to whether it is distinctive,” instead of being limited to “a mark that is distinctive.”
In other words the defendant “squatted” but not on a distinctive or famous mark. The Plaintiff may very well have fared better – and not just at the threshold – by instituting a UDRP proceeding, in which the burden for proving common law rights is not as heavy (see for example, Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum January 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”) The Court did not consider whether defendant was typosquatting presumably because that act of abuse is subsumed in cybersquatting.
Section 1129(A)(I) of the Lanham Act makes it an actionable offense to register and use a domain name identical or confusingly similar to a personal name. There is no comparable remedy under the UDRP. The Act reads,
Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.
Proof for relief under this provision does not require evidence of trademark status, but the successful cases have been those in which the domain name is identical to the personal name. Salle v. Meadows, 07-cv-1089, 2007 WL 4463920 (MD Fla. 2007) (<briansalle.com>); Schmidheiny v. Weber, 285 F. Supp. 2d 613, 627 (ED Pa. 2003) (<schmidheiny.com>). The Court rejected the Plaintiff’s argument that <philbricksports.com> was confusingly similar to “Daniel Philbrick” on the narrow ground that the domain name “omits the Philbrick’s first name and tacks the word “sports” on to the end.”
Eric Goldman’s view about Plaintiff appealing from the order granting summary judgment is that from his perspective – essentially a cost/benefit approach – it “doesn't look like a prudent call.” Why? Because “Putting aside the illogic of throwing more money at these not-worth-it domain names, the district judge missed a number of defense-favorable rationales to support its ruling. As a result, there is plenty of room for an appeals court to find alternative grounds to affirm.” Whether by fulfillment of this prognostication – I think of it as analogous to examining birds' entrails – or on some other grounds – the one's missed by the trial court – an appellate decision even if it does no more than affirm dismissal on alternative grounds will not be unwelcome.
Registering Domain Name to Obtain Leverage
Respondents’ explanations for registering domain names identical or confusingly similar to complainants’ trademarks come in a variety of shadings. Some are absolutely plausible; others are hopelessly misinformed; still others offer no evidence of good faith and on the far end of this group are those who have acted to obtain a benefit – by exploiting, extorting or leveraging – to which their legitimate interest in the disputed domain name is built on fantasy. Questions of credibility arising from statements made in the answer and actions taken at the time of registration or later are never far from the surface. Piaggio & C.S.p.A. and Piaggio USA, Inc. v. Schieffelin & Company, LLC, Zachary Schieffelin, D2008-1896 (WIPO February 9, 2009) is a case in point.
The Respondent in Piaggio owns a Vespa dealership in Soho (New York City) and has a legitimate domain name for its business that includes the Complainant’s trademark, <vespasoho.com>. However, it also registered <vespabrooklyn.com> which for five years it held passively in the expectation of being the successful applicant for the dealership in Brooklyn. In 2007, the Complainant established a Vespa dealership in Brooklyn which it awarded to another dealer at which point the Respondent started using the disputed domain name to undercut the new dealership. It also took steps to conceal its name by interposing a privacy service.
The Panel held that
the Respondent’s failure to use the disputed domain name for more than five years in connection with its Soho dealership belies the claim that the disputed domain name was registered for this purpose. Indeed, the Respondent’s eventual use of the disputed domain name points instead to a bad faith intention to preclude any competitor awarded a VESPA dealership in the neighboring Brooklyn borough from registering and using the disputed domain name. As such, the record on the whole reflects an intent on the part of the Respondent to exploit and profit from the Complainants’ mark.
The Panel concluded that the Respondent realized in 2007 that it could more effectively use the domain name to “create leverage” to “place any other entity awarded the Brooklyn dealership at a competitive disadvantage.” In exchange for giving up the domain name “the Respondent sought to obtain a covenant not to compete from Hadjiminas” who won the Brooklyn dealership. It also commenced using the disputed domain name “with a pay-per-click website containing advertising links to products and services that compete with those of the Complainants.” The Respondent’s defense that is was not responsible for the selection of content on the website was summarily rejected.
Although the use of privacy services is legitimate the evidenece is nevertheless prodded and analyzed for motive. In Piaggo, the Panel drew a further inference of bad faith on the grounds that by using it the Respondent was clearly attempting “to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere.”
April 2009 NOTES , DATES ARE IN REVERSE ORDER
Avatar in the Form of Senior Executive
Cases revivify in two ways. Refiling a complaint against the same respondent justified by a change in factual circumstances post decision [Daimler AG v. William Wood, D2008-1712 (WIPO February 25, 2009) discussed April 13, 2009]; or, new complaint against a different (either successor) or avatar of the original respondent [RUGGEDCOM, Inc. v. James Krachenfels, D2009-0130 (WIPO April 7, 2009) (transferred over dissent]. Daimler returned to the UDRP after its earlier complaint was denied. RuggedCom returned after winning transfer of the then disputed domain name. James Krachenfels is a senior executive of LANstore, Inc., the respondent in RuggedCom, Inc. v. LANstore, Inc., D2005-0760 (WIPO November 15, 2005).
The decision in the new case is distinguished in the clarity of its analysis. It deals with a number of important issues, one of which concerning trademark rights for jurisdiction under the UDRP (the majority's position rejected by the dissent) will be discussed tomorrow or Monday. Today’s Note focuses on the interplay between ¶4(a)(ii) and ¶4(a)(iii) of the Policy.
What’s going on? First of all, the Complainant and LANstore are competitors. Disruption of a competitor is at the center of both cases, ¶4(b)(iii). Registering a domain name identical or confusingly similar to a trademark is not a per se violation of the Policy, but a competitor is no ordinary registrant. The majority noted that it accepted
as a general proposition, that registration of a descriptive phrase may constitute a right or legitimate interest in a disputed domain name, where the respondent has registered the disputed domain name because of its attractiveness as a descriptive expression (and not in an attempt to “target” the complainant or its mark....
However,
one only has to look at the Respondent’s website to see that its primary focus is an attack on the Complainant, and in particular the Complainant’s claim to trademark or service mark rights in a RUGGEDROUTER mark. The Respondent has generally not been using “rugged router” on the Respondent’s website in a descriptive sense.
Frequently, a respondent’s right or legitimate interest is determined by examining its conduct; more precisely the content of the website to which the domain name resolves to confirm or contradict the defense that the domain name was registered because of its “attractiveness as a descriptive expression.” The Panel found, citing mVisible Technologies Inc v. Navigation Catalyst Systems Inc., D2007-114 (WIPO November 30, 2007) that “the respondent’s use of the disputed domain name was not consistent with” innocent registration. The Respondent, in fact, used the website for two purposes, to denigrate the Complainant’s claim to a trademark in RUGGEDROUTER (registered in Canada) and to direct Internet users indirectly to the LANstore or another site controlled by the Respondent's employer.
The Panel asked the pertinent question: Why would the Respondent, acting for LANstore and GarrettCom, want to supply information concerning the products of parties who are presumably their competitors? The “far more probable explanation is that the Respondent and LANstore have been pursuing a perceived grievance against the Complainant, and have been using the Respondent’s website to promote and publicize their side of the story.” In essence, the current Respondent is an alter ego of the respondent in the earlier case. For this reason, the “majority has no doubt” of the Respondent’s bad faith in registering and using the domain name. Although “[s]trictly speaking, the Complainant’s competitors are LANStore and/or GarrettCom, rather than the Respondent personally ... it cannot be the case that the clear intent of paragraph 4(b)(iii) of the Policy is defeated where a respondent corporation registers a disputed domain name in the name of one of its senior executives.” Indeed,
Such an interpretation would render paragraph 4(b)(iii) ineffective as a weapon against the registration of domain name by corporations acting with the kind of bad faith intent which is described in the subparagraph.
The dissent found nothing shocking in a competitor using a domain name identical to the complainant’s trademark for the purpose deduced from the historical and current record: “This is, in my humble opinion, a fair and legitimate use of the mark, and therefore the Respondent has acted in good faith and with legitimate right and interest.”
Topical Notes (Intentionally attracting Internet users to your web site or other on-line location for commercial gain)
The fourth (nonexclusive) example of bad faith reads:
[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In contrast to ¶4(b)(i-iii) written in the past tense (“you have registered”), ¶4(b)(iv) is written in the present tense (“by using”), but implicit is continuum of use. A respondent is not absolved of illegitimacy by removing infringing content after the commencement of the proceedings. Tenses were parsed by the Panel in Trade Me Limited v. Vertical Axis Inc, D2009-0093 (WIPO April 7, 2009) (yesterday’s Note and my gloss):
What makes paragraph ¶4(b) important in so many cases is that subparagraph ¶4(b)(iv) addresses only current use by a respondent yet, where non-bona fide current use is proven [¶4(c)(i)], that conduct is deemed to be evidence of bad faith use and bad faith registration. Absent evidence of good faith registration, this deemed evidence can be pivotal to many cases. Whether that outcome is the result of inelegant drafting or intentional given the objectives of the Policy is not for us to consider; it is without doubt the way the Policy has been interpreted and applied since its inception, and we embrace it.
9/17/08 – Opportunism and Bad Faith.
9/30/08 – Pretending an Identity.
11/26/08 – Bait and Switch.
4/142/09 – Forfeiting Rights and Legitimate Interests.
4/28/09 -- Well Known in its Market, but Confined Geographically.
Topical Notes for
Paragraph 4(a)(i)
Paragraph 4(a)(ii)
Paragraph 4(a)(iii)
Paragraph 4(b)(i)
Paragraph 4(b)(ii)
Paragraph 4(b)(iii)
LexisNexis Trademark Blog:
7/15/08 -- Parking for Revenue
10/3/08 -- Distinguishing Among Theories
Well Known in its Market, but Confined Geographically
Yesterday’s Note discussed common words and confusing similarity, but the confusion the Complainant described involved a word, “grain” coupled with “prairie” which was part of a run on phrase “Goodness from the Nebraska Prairie” not included in its registered trademark. A different issue is presented in Trade Me Limited v. Vertical Axis Inc, D2009-0093 (WIPO April 7, 2009). While the Complainant established its credentials as a trademark owner, the phrase “trade me” is on the lower end of protectability. To prevail, the Complainant had the double task of proving A) the respondent’s lack of rights or legitimate interests, ¶4(a)(ii) of the Policy, and B) the respondent registered the domain name intentionally to “creat[e] a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site ... of a product or service on your web site or location,” ¶4(b)(iv) of the Policy.
On the lack of rights or legitimate interest, the Panel noted that where “the words comprising the alleged common law mark are ordinary English words, and the Complainant’s business has been relatively restricted geographically ... [proving lack of rights or legitimately interests] is an onerous burden for a complainant to discharge.” Mere assertion of fame does not prove that a trademark has traveled beyond its own border.
On the issue of intention, difficult though it may be to parse a state of mind it can be deduced from, among other sources, the content of the website:
What makes paragraph 4(b) important in so many cases is that subparagraph 4(b)(iv) addresses only current use by a respondent yet, where non-bona fide current use is proven, that conduct is deemed to be evidence of bad faith use and bad faith registration. Absent evidence of good faith registration, this deemed evidence can be pivotal to many cases. Whether that outcome is the result of inelegant drafting or intentional given the objectives of the Policy is not for us to consider; it is without doubt the way the Policy has been interpreted and applied since its inception, and we embrace it.
The present tense of ¶4(b)(iv) is contrasted with the past tense of ¶4(c)(i) of the Policy. Bona fide use is understood to be backward looking, both as to current as well as “demonstrable preparations to use.” The respondent has to earn its right or legitimate interest by evidence of its historical conduct; what it has done not what in the future it intends to do. For a respondent to bring itself within the safe harbor its good faith must both antedate notice of the dispute [¶4(c)(i)] and not violate the complainant’s rights [¶4(b)(iv) of the Policy]. Violation is evidenced, for example, by historical and current use of the website to offer links to complainant’s competitors.
The Respondent in Trade Me registered the domain name years prior to the Complainant acquiring TRADE ME as a trademark:
Where a disputed domain name comprises invented words and there is an identical trademark owned by a complainant at the time of registration of the disputed domain name, panels have consistently taken the view that the complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy.
However, the Complainant’s market in Trade Me is New Zealand. Moreover, in “this case, where the Complainant did not even apply for a trademark until two years after the Respondent registered the disputed domain name, there can be no prima facie case absent the Complainant’s proof that the Respondent knew of its common law trademark rights as at July 18, 2001 [that being the date that the domain name was registered].” The Panel noted that
[w]hat we have not been persuaded of is that as at July 18, 2001 the words “trade me” were so unmistakably associated with the Complainant by New Zealanders (let alone any more geographically distributed Internet users) that any use of them in relation to the trading of any goods or services would have lead to an assumption that the Complainant was the trade source, or that the Respondent must therefore have registered the disputed domain name with the Complainant’s mark in particular in mind.
Nothing on the Respondent’s website yielded any evidence to support knowledge of the Complainant and no other evidence was offered to undermine the Respondent's good faith registration or its “current” use.
Trademarks that include in their composition common words or descriptive phrases are at the lower end of protection. Unregistered trademarks recognized in a market remote from the respondent's home base are at the very tip of the end. The Complainant in Pleasant Hill Farm, Inc. V. Heinsohn’s c/o Leslie Heinsohn, FA0903001251237 (Nat. Arb. Forum April 21, 2009) proved that it had a registered trademark for PLEASANT HILL GRAIN (“grain disclaimed”) and alleged that it also had a common law right to PLEASANT HILL GRAIN – GOODNESS FROM THE NEBRASKA PRAIRIE. The Respondent registered <prairiehillgrain.com>. It did not appear in the proceeding.
Clearly, a side by side comparison does not support a showing that the dominant words in the domain name [“prairiehill”] are either identical or confusingly similar to the dominant words of the registered trademark [“pleasanthill”]. The crux is the word “prairie” which forms part of the alleged common law trademark. PRAIRIE for grain may be recognized in a local market, but the Complainant offered no evidence that trademark traveled to Texas (Respondent’s home base). “Where the words comprising the alleged common law mark are ordinary English words, and the Complainant’s business has been relatively restricted geographically ... [proving lack of rights or legitimately interests] is an onerous burden for a complainant to discharge,” Trade Me Limited v. Vertical Axis Inc., D2009-0093 (WIPO April 7, 2009).
Before a complainant can get to the second and third elements of the Policy it has to pass the test of the first element. Pleasant Hill’s argument that “prairiehill” combined with “grain” was confusingly similar to its common law trademark was unpersuasive. Even if hypothetically there could be confusion, the website's content was unyielding to any inference that the Respondent intended to target the Complainant's audience under ¶4(b)(iv) of the Policy.
Commonly Known by the Disputed Domain Name
A domain name may be confusingly similar to a trademark [¶4(a)(i) of the Policy] without there being a likelihood of confusion under [¶4(a)(iii)] or trademark law. The Complainant in iLounge, Inc. v. 949 EXCLUSIVE, FA0902001249399 (Nat. Arb. Forum April 17, 2009) is the registered owner of iLOUNGE; its trademark application indicates first use in commerce 2005. The Respondent is a single location restaurant known as “ILOUNGE ORANGE COUNTY”; it has an application pending at the PTO that iindicates first use in commerce 2008 (although in its answer to the UDRP complaint it states that it has provided restaurant services since 2005). The parties do not overlap in goods or services. Both are located in Orange County, California.
The Panel found that the Respondent was “commonly known by the disputed domain name.” Because a defense under ¶4(c)(ii) may be determinative of good faith Panels are careful in getting this factor correct. The phrase “commonly known” has been construed to mean before registration of the disputed domain name. The more well known the mark the greater the showing must be that there is a rational relationship between the domain and the name by which respondent is “commonly known.” Harrods Limited v. HDU Inc., D2004-0093(WIPO April 27, 2004) (Respondent had been in the salon business under her surname for ten years prior to registering the domain name).
The Policy does not define the term “commonly known,” nor does it specify temporally when respondent was known by the domain name. However, early Panels held that various kinds of uses of a name can constitute being “commonly known” and that, in particular, use in a business context is sufficient (but not necessary) to support such a finding. As to time, 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);“the consensus ... is that Respondent must already have been known [by the disputed name] at the time of registration or acquisition of the domain name in issue,” CITGO Petroleum Corporation v. Matthew S. Tercsak, D2003-0003 (WIPO February 28, 2003) (<mystic.com>). However, ownership of the domain name is not sufficient to prove the “commonly known by” requirement, Alain-Martin Pierret d/b/a Bordeaux West v. Sierra Technology Group, LLC., FA 0505000472135 (Nat. Arb. Forum July 1, 2005):
Mere 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.
In iLounge the Respondent submitted proof that it was using the domain name to promote and fulfill reservations for its restaurant business, thereby rebutting the Complainant's contention that it had no right or legitimate interest in the domain name.
Descriptive Use of Common Words
The phrase “airborne systems” is not uncommon or “especially distinctive,” Airborne Systems North America and Airborne Systems Group, Ltd. v. Virtual Point, Inc., D2008-1669 (WIPO March 6, 2009). The question in these cases is whether the respondent is exploiting the trademark, The Knot, Inc. v. In Knot We Trust LTD, D2006-0340 (WIPO June 26, 2006) (<knot.com>) or using common words for their descriptive value, EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (WIPO April 9, 2000) (eautoparts.com>); Modern Beauty Suplies v. MDNH, Inc. c/o Jay Bean, FA0705000975334 (Nat. Arb. Forum June 25, 2007) (<modernbeauty.com>). The UDRP does not prohibit use of common words or descriptive phrases. “[I]t is inappropriate to give Complainant a wide monopoly over all domain names, even descriptive ones, that incorporate the mark EAUTO.” The Knot Respondent claim to be using the domain name for its descriptive value, but the 3-member Panel rejected it:
[I]t strains credulity to believe that Respondent acquired this domain name for $5,000 because of its attraction as a dictionary word. If that were the case, one would expect to see links and advertisements related to the kinds of knots made from rope and string, which is the primary meaning of the word “knot” in the dictionary reference Respondent submitted with its Response.
The Respondent in First Mariner Bank v. Clinton Yoner, FA0901001243651 (Nat. Arb. Forum March 6, 2009) is similarly knotty. He argued that he registered <1stmarinerbank.net> because “it refers to the first bench of rowers in a boat” and being a nautical man he wanted to do something with the domain name. Not inconceivable except that “the use of rowed military craft (galleys and such) ceased some two hundred years ago” (Panel's arcane fact). Plausibility requires showing beyond spinning a fable that what a respondent allegedly intends has reality. Paragraph 4(c)(i) of the Policy is crafted to allow a respondent to keep the domain name if it has made “demonstrable preparations.” “Demonstrable” means “capable of being demonstrated.” “[V]ague and unsupported assertion[s] of ‘plans to sell household goods ... over the Internet’[is insufficient],” Household Int’l, Inc. v. Cyntom Enters., FA95784 (Nat. Arb. Forum November 7, 2000).
In cases like The Knot and First Mariner, content is determinative. If the respondent does not practice what it preaches, the registration is abusive.
Terms of License; Determinative of Right
“[G]enerally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it,” Microsoft Corporation v. J. Holiday Co., D2000-1493 (WIPO February 20, 2000). However, with a trademark composed of geographically descriptive terms a complainant “faces a greater risk that the combination of that term with another common term will in fact distinguish the new combination,” Southwest Airlines Co. v. Cattitude a/k/a LJ Gehman, D2005-0410 (WIPO June 12, 2005). Adding “my” to “southwest” to form <mysouthwest.com> is an example of creating a distinctive “new combination,” but only because the Respondent offered evidence that it was making demonstrable preparations to launch a website from the disputed domain name containing a bona fide offering of goods or services.
Adding “my” to other geographical and commercial trademarks has been unsuccessful in creating distinctive new combinations. State of Florida Department of Management Services v. Mr. Siegfried Maier and Edelsbacher Design Group KEG, D2008-0318 (WIPO April 23, 2008) (<myfloridamagazine.com); Morgan Stanley v. Meow, FA0604000671304 (Nat. Arb. Forum May 22, 2006) (U.S. parties) (<mymorganstanleyplatinum>); Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, D2000-1007 (WIPO November 16, 2000) (<mysony.com>); Air France v. Kitchkulture, D2002-0158 (WIPO May 9, 2002) (<my-airfrance.com>).
The Respondent in Santa Monica Convention & Visitors Bureau v. WeAre LLC., FA0902001247925 (Nat. Arb. Forum April 14, 2009) added “i am” to “santa monica” to form (<iamsantamonica.com> and <iamsantamonica.net>). Here, however, the result was different because even though the Complainant owned registered trademarks in SANTA MONICA and had applications pending for IAMSANTAMONICA it had “previously licensed one of the subject domain names from Respondent.” Indeed, in the license agreement, the Complainant
acknowledges that Respondent Licensor “owns the Domain Name. LICENSEE acknowledges that any goodwill generated by its use of the Domain Name pursuant to this Agreement inures to the benefit of LICENSOR, and does not create in LICENSEE any right to the Domain Name, including any trademark rights.
The Complainant charged that at the termination of the license the Respondent offered to sell it domain name. It argued that this conduct violated the Policy because the price that Respondent was asking was “in excess of Respondent’s out-of-pocket expenses associated with registering and maintaining the domain name registrations” [Paragraph 4(b)(i) of the Policy]. However, the argument leaves out an important ingredient. Acknowledgment of the Respondent’s ownership of a domain name negates bad faith registration or use. It is not a violation of the Policy for the respondent to sell a domain name it owns even if it is confusingly similar to the complainant’s trademark.
Competing Views of the Law and Self-Citation to Build Precedent
There are a handful of panelists active in seeking to establish as legal precedents their own constructions of the Policy. This is not in criticism. Self citation to decisions of exceptional merit (or considered by the writer to be such even if others have a different opinion) is part of the on-going dialogue in developing any jurisprudence. Well reasoned, well written decisions are vehicles for advancing ideas, for influencing one’s colleagues and, contributing to the direction of the law of domain names.
A number of recent decisions bring this form of egotism sharply into relief. Yesterday’s Note on Midland Heart Limited v. Uton Black, D2009-0076 (WIPO March 30, 2009) is illustrative. The Panel offered his earlier decision in Fundación Calvin Ayre Foundation v. Erik Deutsch, D2007-1947 (WIPO February 25, 2008) as precedent for a seven-point test to determine whether a critic should be permitted to use or incorporate a trademark in the domain name. The Panel in Organic Mattress, Inc. v. Jeffrey Cik, D2008-1922 (WIPO February 20, 2009) held that the decision he was about to render rested on “[t]wo related Policy precedents.” He then cited two of his own cases one for each of the two related Policy precedents, eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, D2004-0552 (WIPO September 11, 2004) and Greyson International, Inc. v. William Loncar, D2003-0805 (WIPO December 3, 2003).
The split on critic rights as it happens showcases the dialogue in fuller throat particular in three-member Panels composed of panelists with philosophical disagreement as to which View of the law applies. The presiding panelist in Joseph Dello Russo M.D. v. Michelle Guillaumi, D2006-1627 (WIPO April 27, 2007) subscribed to one View which he found applicable when as sole Panel he decided The First Baptist Church of Glenarden v. Melvin Jones, D2009-0022 (WIPO February 26, 2009). The same panelist was also the sole Panel in Children v. R neetso / Robert W. O’Steen, D2004-0175 (WIPO June 4, 2004), “By intentionally selecting Complainant’s mark to present his views, he has not made a legitimate use of the domain names.”
The composition of the three member Panel in Joseph Dello Russo, however, included a panelist who adheres to the opposing View, who had written as sole Panel the decision in Howard Jarvis Taxpayers Association v. Paul McCauley, D2004-0014 (WIPO April 22, 2004) in which he rejected as precedent the reasoning employed by the majority in Joseph Dello Russo. He returned to this View as the sole Panel in Sermo, Inc. v. CatalystMD, LLC., D2008-0647 (WIPO July 2, 2008) (<sermosucks.co,>): “[f]air use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy.”
Competing views of the law are not unusual, neither are attempts to influence its direction. The problem is that the inconsistency of competing views makes a difference to the parties. Who is assigned to adjudicate the claim for abusive registration determines who wins. The complainant who gets the Joseph Dello Russo panelist is happier than he who gets the Howard Jarvis panelist. Testing the respondent’s conduct and its consequences against the criteria suggested by the Panel in Midland Heart would seem to rationalize the parties’ rights to the domain name and to this extent would be preferable to having competing Views.
Mediating Differences Between Split Views
Of the 26 questions in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 20 are answered by consensus and six by split views (4 labeled Majority/Minority and 2 labeled “View 1” and “View 2”). The split views reflect philosophical differences that could prove costly to the party whose case has been assigned to a Panel unsympathetic to its position. The split views concern 1) incorporating a negative term as part of the domain name [Paragraph 1.3]; 2) a trademark licensee’s rights in the trademark under the UDRP [Paragraph 1.8]; 3) a reseller’s right or a legitimate interest in the domain name [Paragraph 2.3]; 4) using a trademark for a criticism website [Paragraph 2.4]; 5) using a trademark for a fan website [Paragraph 2.5]; and 6) unsolicited submissions of supplemental material.
Some of the splits show signs that the majority view is ascendent. The split among panelists on using trademarks for criticism is essentially in equipoise. That there should be a split is unusual given the strong endorsement in favor of free speech in the WIPO Final Report. The issue was discussed recently in connection with The First Baptist Church of Glenarden v. Melvin Jones, D2009-0022 (WIPO February 26, 2009), Note for March 13, 2009, in which the Panel stated that he adheres to View 1, the more restrictive of the two views.
The Panel in Midland Heart Limited v. Uton Black, D2009-0076 (WIPO March 30, 2009) has one leg in each camp: “such use is neither inherently incompatible with the UDRP, nor always permitted by the UDRP, and that its compatibility with the UDRP depends on the circumstances.” From that base, he offers to mediate the differences. Drawing on the decision in Fundación Calvin Ayre Foundation v. Erik Deutsch, D2007-1947 (WIPO February 25, 2008) (in which he was the sole panelist) he identifies seven criteria:
a) Has the domain name been registered and is it being used genuinely for the purpose of criticising the owner of the mark?
(b) Does the registrant believe the criticism to be well-founded?
(c) Does the registrant have intent for commercial gain?
(d) Is it immediately apparent to Internet users visiting the website at the domain name that it is not a website of the owner of the mark?
(e) Has the respondent registered all or most of the obvious domain names suitable for the owner of the mark?
(f) Where the domain name is one of the obvious domain names suitable for the owner of the mark, is a prominent and appropriate link provided to the latter’s website (if any)?
(g) Where there is a likelihood that email intended for the complainant will be sent using the domain name in issue, are senders immediately alerted in an appropriate way that their emails have been misaddressed?
The Panel in Midland Heart contrasts criticism that encourages improvement with “the situation where criticism is used to extort an unrelated benefit from the person criticised.” If the kernel of the complaint is the criticism, its tone and tenor perhaps defamatory content, the Panel is likely to advise the complainant that recourse for tort damages or statuturoy relief lies in legal action in a national court. Howard Jarvis Taxpayers Association v. Paul McCauley, D2004-0014 (WIPO April 22, 2004) (Complaint denied).
Devising a set of tests is a familiar procedure. It recalls some of the seminal decisions in the UDRP canon covering such diverse issues as passive use [Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000)], registering a trademark in a foreign jurisdiction or some other camouflaging conduct to support abusive registration [Madonna Ciccone, p/k/a Madonna v. Dan Parisi and Madonna.com, D2000-0847 (WIPO October. 12, 2000)] and reselling products incorporating trademarks for a registrant’s Internet presence [Oki Data Americas, Inc v. ASD, Inc, D2001-0903 (WIPO November 6, 2001) ].
Anatomy of a Misguided and Incompletely Reasoned Decision
UDRP jurisprudence did not exist as a body of law in 1999. Panelists were given the task of creating it. They were told to decide complaints “in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable,” Rule 15(a) of the Rules of the Policy. In retrospect, decisions in early decisions show panelists both articulating creative solutions and floundering. Of the latter, the principle applied in Mondich v. Brown, D2000-0004 (WIPO February 16, 2000) is a Panel in search of a rule. Ten years on and 30,000 decisions later one can see that the rule chosen, citing a general principle of United States law that “the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts,” turned out to be a dead end as applied in a UDRP proceeding. This is not to fault the Panel. There was no UDRP experience upon which he could draw so in fallback he applied the law he was familiar with.
UDRP jurisprudence while it may be informed by general principles of United States law is not centered on them. Most notably, a respondent’s default is not an admission either of its lack of rights or legitimate interests or of bad faith registration of the disputed domain name. The onus for proving bad faith is on the complainant. It is from evidence that inferences are drawn. In Mondich, the evidence was thin, very thin. The Panel lowered the Complainant’s evidentiary burden; in essence giving it the benefit of the doubt.
However, Mondich is one of the decisions cited as precedent by the Panel in Deacom Inc. c/o Jay Deakins v. Deacom c/o Ben Dean, FA0902001246846 (Nat. Arb. Forum April 14, 2009) in ordering transferred to the complainant <deacom.com>. Unlike Mondich, the Respondent in Deacom answered the complaint. The Respondent alleged (as summarized by the Panel) that
1. [It] has owned and used the <deacom.com> domain name for personal and professional interests since April 4, 1997.
2. [It] formed a New Jersey corporation, DEACOM, INC. on March 4, 2002 through October 16, 2006, and subsequently operated under the name DEACOM, a sole proprietorship, from 1997 to the present date.
3. [It] has operated e-mail services continuously for <deacom.com> since 1997, and has used ben@deacom.com as Respondent’s primary e-mail address to the present date.
If the Respondent supported his allegations with evidence – it is impossible to tell from the decision because the Panel is uninformative on whether he did – the decision is, like Mondich, based on dead end rules. In support of the order of transfer, the Panel found with respect to the issue of rights or legitimate interests
that until more recently Respondent’s domain name does not lead to an active website. The Panel finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii), and that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of Respondent’s disputed domain name under Policy ¶ 4(c)(iii).
With respect to bad faith, the Panel agreed with “Complainant’s assertion that Respondent has not utilized the disputed domain name in an active manner.” For this reason, “the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii),” citing in addition to Mondich Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum August 30, 2000). Like Mondich, the Respondent in Caravan Club defaulted, but unlike Mondich the Panel based its ruling on the evidence, that the Complainant had a famous trademark that antedated by many years the registration of the domain name. It is in that context only that “[p]assive holding of a domain name permits an inference of registration and use in bad faith.”
Leading to an inactive website may be, but is not necessarily a determinative factor. It should not, as it is in Deacom, have been the basis for the Panel's holding. Establishing conduct that violates the Policy depends on the matrix of circumstances, as explained in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The Panel in that seminal decision stated that a “violation [of the Policy] does not require proof of a positive action.” Indeed, “In certain circumstances, [passive holding can] constitute a domain name being used in bad faith.” He offered a five point guide in deciding whether non use spelled out bad faith registration. The first point is that “the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use.” The fifth point is that infringement is made out if “[it is] not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.”
The record in Deacom is that the Complainant (situated in Pennsylvania) obtained a trademark registration in 2007 disclosing on its application first use in commerce in 1995. However, the Complainant offered no evidence (or if it did the Panel has not recited any) of its presence in the marketplace in New Jersey when the Respondent registered <deacom.com> in 1997 or that it had accrued a common law right from that time. The Panel ignores evidence of the Respondent’s New Jersey corporation (assuming that evidence was submitted, but the decision is silent) from which the Panel could have “conceive[d] ... [a] plausible actual ... active use of the domain name.” If no evidence was submitted only an assertion of a fact, then it should have been recited as a basis for rejecting the Respondent's contention to a right or legitimate interest.
Testing Genuineness of Fan Site
Fan club domain names belong to a category that are admittedly identical to an honoree’s trademark. One panelist, in dissent, noted that “fanatics are the flip side of critics,” Richard Starkey v. Mr. Bradley, FA0612000874575 (Nat. Arb. Forum February 12, 2007) (<ringostarr.mobi). There is a split on fan sites as there is on criticism sites whether it is permissible to register a domain name identical to the celebrity’s. View 1 allows it provided that the website is “non-commercial and clearly distinctive from any official site,” WIPO Overview, Paragraph 2.5. View 2 is intolerant of domain names identical or confusingly similar to the celebrity, Experience Hendrix, L.L.C. v. Denny Hammerton and The Jimi Hendrix Fan Club, D2000-0364 (WIPO August 15, 2000) (<jimihendrix.com>). It holds that the respondent “does not have rights to express its view, even if positive ... as the respondent is misrepresenting itself as being that individual or entity.”
Under View 1, genuine fan sites satisfy the noncommercial fair use privilege if the use is “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue,” Paragraph 4(c)(iii) of the Policy. A couple of recent Notes have discussed the mixing of innocent and illicit content. The argument that some commercial use incidental to innocent use is excusable is unlikely to find a sympathetic ear, Daimler (April 13) and Aubert (April 14) . Any use other than offering tribute is prima facie bad faith. The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC., D2009-0057 (WIPO March 24, 2009) (<jenniferlopez.net> and jenniferlopez.org).
The Respondent claimed that he was unaware that Jennifer Lopez “had developed or was claiming trademark rights until he received notice of this dispute some nine (9) years after initially registering the disputed Domain Names.” Two arguments are folded into this sentence. The first assumes that a respondent’s registration of a domain name identical (in this case) to a famous entertainer is excusable unless or until receipt of notice. The second argument is that the Complainant had her chance to protest the registration and it is now too late. Neither argument has merit. Willful blindness is inculpatory. Delay in prosecution is good as a defense only when the respondent has developed a website whose offering of goods or services is bona fide, Paragraph 4(c)(i).
The third argument is that the websites are primarily fan sites and that the “generation of advertising revenue is incidental to the noncommercial use”. Paragraph 4(c)(iii) of the Policy only “concerns active websites that practice genuine, noncommercial” appreciation of the honoree. The Panel rejected this argument. He did “not find the commercial exploitation of the disputed Domain Names as reflected on the Respondent’s website to be ‘incidental’ ... nor insubstantial.”
Bad faith registration can be reenforced by collateral conduct. In Jennifer Perez, the Respondent was caught manipulating the Who is database “including the resort to a privacy service, occurring after the filing of the Complaint.” These manipulations are “strongly evocative of cyberflight, and appear to have been calculated to obstruct or delay this proceeding under the Policy.”
Respondents Whose Personal Names are Identical to Trademarks
Personal names, trade names and geographic indicators are not protectable as such under the UDRP. Report of the Second WIPO Internet Domain Name Process: Recognition of Rights and the Use of Names in the Internet Domain Name System, dated September 3, 2001 (“WIPO Second Report”). Individuals as complainants suing to capture domain names incorporating their personal names must prove their trademark credentials. Entertainers generally satisfy this burden [Larry King v. Alberta Hot Rods, D2005-0570 (WIPO July 21, 2005)]; politicians do not [Peter Bober v. National Institute for Mortgage Education, D2008-1668 (WIPO December 15, 2008) (Mayor and lawyer) and Margaret C. Whitman v. Domains For Sale, D2008-1534 (WIPO December 1, 2008) (former chief executive of eBay)]. Individuals as respondents come in two classes: those whose personal names are identical to the complainant’s trademark and aggregators of personal names. This Note like yesterday’s deals with respondents. Yesterday’s involved an administrative proceeding against an aggregator; today’s against an individual, Mathiesen S.A.C. v. Allan Mathiesen, D2009-0087 (WIPO March 23, 2009).
The Complainant in Mathiesen presented a double-barrel argument that the Respondent lacked rights or legitimate interests in the disputed domain name. First, the Respondent’s “website is blank, idle, and has been unused.” Second, the “Respondent has no trademarks or authorization to use his own given name.” Neither argument has merit. Domain names genuinely intended for noncommercial use, and particularly those registered by (or for) persons commonly known by that name [4(c)(ii)] do not require anyone’s permission, although they do have to prove their credentials. The Respondent offered his birth certificate among other documentary evidence.
It has been pointed out in previous Notes that UDRP proceedings have a dual purpose of declaring rights and sanctioning abusive use of the Policy. Reverse Domain Name Hijacking involves a moral rather than a monetary judgment. In this case,
Complainant’s attorney, in accordance with the Rules, paragraph 3(b)(xiv), wrote in the Complaint at paragraph 21 that “[t]he Complainant certifies that the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate […] and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
The Panel does not see how that certification properly could have been made.
Before filing this proceeding, there was apparently no attempt to confirm whether Respondent possessed a legitimate interest in using his given name. Nonetheless, the Policy is clear that being commonly known by the disputed domain name is a clear ground establishing a respondent’s right or legitimate interest. Complainant has therefore disregarded the mandatory rules governing this dispute, in particular, Policy paragraph 4(c)(ii).
Arbitration and court proceedings alike are not play stages for complainants or plaintiffs to test the incontestible.
Forfeiting Rights and Legitimate Interests
No statute of limitations bars capturing a domain name feeding off the reputation of a trademark. Change over time has consequences as was illustrated in Daimler AG v. William Wood, D2008-1712 (WIPO February 25, 2009). A trademark owner is not estopped from commencing a second arbitration – or, for that matter, a new action, Storey v. Cello Holdings, LLC., 347 F.3d 370, 385 (2nd Cir. 2003) (“Congress intended the cybersquatting statute to make rights to a domain name registration contingent on ongoing conduct rather than to make them fixed at the time of registration” -- if the website to which the domain name resolves violates the Policy. The original concept for <daimlarstore.com> as a resource for afficionados of Daimler vehicles may have found safe harbor under ¶4(c)(i), but the Respondent’s “ongoing conduct” did not protect it from a claim under ¶4(b)(iv).
The legal situation in Aubert France SA v. Tucows.com Co., D2008-1986 (WIPO March 17, 2009) is a variation on the mixed use theme. Aubert is a personal name more common in Europe than in North America. The Complainant is French; the Respondent (an aggregator) is Canadian. The website had a split personality from the beginning. It offered vanity emails, which is a bona fide use; but at the same time aspired to something more commercial. Respondents whose personal names happen to be identical to the complainant’s trademark will generally have no problem passing the good faith test. Aggregators in the vanity email business are similarly protected, but for a different reason. They lose protection when the website crosses the line to offer something more; the more being advertising links that take advantage of the trademark’s reputation.
The Aubert Respondent has a mixed history for challenged vanity emails. In those it won, the vanity service was the domain name’s reason for being. It lost when it used the domain names in violation of the Policy. “There is nothing illegitimate in the intended use of the Domain Name ... and the Panel has no doubt that if this were the sole usage” that the Respondent would have a legitimate right to it. As a surname “Aubert” is not a term inherently descriptive or suggestive of any line of business, let alone baby goods – the Complainant’s line. However,
the sponsored searches were only explicable by reference to the trade mark significance of the term “Aubert” rather than any obvious generic of descriptive meaning of the term.
Even though the website may have a concurrent legitimate use “it does not matter.” “[A] domain name registrant engaged in the bad faith registration and use of a domain name cannot avoid the consequences of that use by pointing to the fact that the Domain Name has also been used for a purpose that is not use in bad faith.”
Assurances Otherwise Do Not Make Bona Fide, Offerings of Goods or Services
That a website exhibits a mixture of innocent and infringing elements is not conclusive of respondent’s rights and legitimate interests in the disputed domain name. The issue was examined in Karsten Manufacturing Corporation v. Pingify Networks Inc., FA0811001232823 (Nat. Arb. Forum January 5, 2009), Note January 16, 2009. Pingify’s website posted some pay-per-click, competitive advertising while it was under construction. As if it was a signal to multiply instances of mixed use, two further decisions have been filed assessing innocence, Daimler AG v. William Wood, D2008-1712 (WIPO February 25, 2009) and Aubert International SAS and Aubert France SA v. Tucows.com Co., D2008-1986 (WIPO March 17, 2009). For complainants there is no such category as innocent infringement in websites designed for commercial gain.
The question is, When does bad faith use – without abandoning innocent use – tip the scale in deciding whether the respondent should forfeit the domain name? Authorized and unauthorized resellers of a complainant’s goods or services for example have some leeway when incorporating the trademark, but they cannot offer competing brands on the website to which the disputed domain name resolves. The principal case has been discussed in earlier Notes, Oki Data Americas, Inc. v. ASD, Inc, D2001-0903 (WIPO November 6, 2001) (<okidataparts.com>). The principle articulated in Oki Data prohibits any mixing. In Karsten, the Respondent proved its bona fides by demonstrating preparations for a proprietary website. Daimler in its present avitar involves afterparts selling. It and Aubert are also exemplary in other respects in their variety of legal questions analyzed, only some of which are discussed in these Notes. I will discuss Daimler today and Aubert tomorrow.
The website to which <daimlershop.com> resolves is an example of change over time. Whatever its beginnings, the website evolved from making a bona fide offering of goods or services – a forum for Daimler enthusiasts – to one that uses the trademark for commercial gain. This has been analogized to a bait and switch tactic. When change occurs over time, the trespass may only become apparent as illicit use dominates innocent use.
Imperceptible change is a challenge. The original intent in Daimler is important mainly to gauge the distance traveled to the new model. There are two issues. First, does innocent use excuse commercial exploitation? Second, does the change over time excuse bad faith registration? The answer to the first depends on the factual circumstances “in the round.” The answer to the second question depends in part on whether the domain name continues to be owned by the original registrant. For the purpose of the Policy, an assignment or transfer of interest in the registration constitutes a new registration. It is from that date that bad faith is measured. ifranchise Group v.Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], D2007-1438 (WIPO). The Daimler and Aubert decisions both feature mixtures of use and transfers, but Aubert has the further distinction of being a personal name.
The Daimler decision was made on a refiled complaint. The prior case against the original registrant, reported in DaimlerChrysler A.G. v. Donnald Drummonds, D2001-0160 (WIPO June 18, 2001), was resolved on a split decision in favor of the Respondent. The majority found that “the website (i) was ‘descriptive of the business conducted there’ because the respondent was ‘serving as a clearinghouse for information concerning Complainant’s vehicles and is selling parts and accessories exclusively for Complainant’s vehicles’ and (ii) it contained ‘a clear disclaimer’.” Subsequent to the decision in the prior case the original registrant sold his interest in “MercedesShop.com LLC” that operated the website to one of his partners and transferred the domain name to the new owner. The new owner argued that the “real respondent” was not he but “MercedesShop.com LLC.” The Panel accepted only that the business “enjoys the use of the disputed domain name registration,” but since “the current registrant and legal owner is William Wood, the Respondent, while the registrant, legal owner and respondent in the prior proceedings was Donnald Drummond” the critical date for assessing good faith must be the date William Wood acquired the registration from his transferor.
Neither party analyzed changes over time, yet change was the crux of the Complainant’s argument and also featured in the Respondent’s declaration of his and his partners’ original intention for the website. For this reason, the Panel researched the history of the website in the Internet Archive, the Wayback Machine. “[R]ecognising the care required with this resource ... [the result of the research] suggest[ed] that the Respondent has been selling or preparing to sell parts for other brands of automobile since around the time of the Prior Decision.” The Panel continued:
Further evidence would have been helpful, but in the final analysis the legitimate elements of the website (such as the forum, and the sale of MERCEDES parts, and perhaps afterparts for MERCEDES automobiles) cannot redeem the flagrant use of the MERCEDES trademark to sell parts for a wide range of competing automobiles and the other commercial activities that have no connection with Mercedes Benz. The Respondent has chosen to use a successful website for an illegitimate purpose. He has chosen to increase the website traffic and his sales and revenue, by offering parts for a wide range of automobile brands, as well as other products.
While use of the domain name as a forum – the original intent – was acceptable, expanding the business out of a noncommercial niche was not. “In doing so, [the Respondent] has forfeited any rights or legitimate interest in the disputed domain name that may once have existed (as recognised in the Prior Decision) and may have continued to exist if the website had remained confined to spare parts for MERCEDES automobiles.”
New Comment, LexisNexis Trademark Blog:
Exercising Discretionary Authority to Request Additional Statements and Documents
Rule 12 of the Rules of the Policy authorizes a Panel “in its sole discretion” to request “further statements or documents from either of the parties.” The purpose is to assist the Panel in reaching a decision. However, panelists have exercised their “sole discretion” in widely different ways; sometimes circumspectly, other times not at all, still other times seeming to compel production of documents to make the case certain for one of the other party. The question is, To what extent should the Panel supplement the record? There are clear cases in which the Complainant has failed to submit a full record and has not been helped out even though the evidence points to abusive registration. A recent example is Brent Redmond Transportation, Inc. v. SSI Express, D2008-1765 (WIPO December 30, 2008)....
(Next Note April 10th)
Scope of the Policy
Luxair SA v. Puma Industrial Co., Ltd., D2009-0162 (WIPO March 31, 2009):
The issues addressed by the Policy are significantly more limited than the issues potentially encompassed in trademark infringement proceedings. In a dispute settlement proceeding under the Policy, a respondent may succeed in establishing rights or legitimate interests in a domain name notwithstanding that it may be using that domain name in a way that infringes a third party trademark holder’s rights outside the scope of the Policy.
Bona Fide Offering of Goods or Services
Domain names identical or confusingly similar to trademarks can be legitimately used for a variety of business models that support a defense under ¶4(c)(i) of the Policy. Thus, 1) Vanity e-mail services, Stephen Wheatcraft v. Reison, Inc. c/o Domain Manager, FA0811001232650 (Nat. Arb. Forum December 22, 2008) (<wheatcraft.com>,); 2) Paid search advertising, Decal (Depositi Costieri Calliope) S.p.A. v. Gregory Ricks, D2008-0585 (WIPO June 11, 2008) (<decal.com>,); 3) Domain names for sale, CeWe Color AG & Co. OHG v. Shenbun Limited, D2008-0810 (WIPO July 10, 2008)(“The buying and selling of domain names is, of itself, a perfectly legitimate trading activity”); 4) Cultural activities, Velcro Industries B. V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, D2008-0864 (WIPO July 28, 2008) (<velcroart.net>); Affiliate programs, Authorize.Net LLC v. Cardservice High Sierra, D2008-0760 (WIPO June 30, 2008) (<authorized.net>); Given name of the respondent, Mathiesen S.A.C. v. Allan Mathiesen, D2009-0087 (WIPO March 23, 2009).
However, a business may be legitimate in the sense that it complies with all legal requirements, but still not be bona fide for the purpose of establishing rights or legitimate interests in the domain name even if its business commenced “before it received notice of the dispute” 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).
It is mala fides to register and use a domain name identical or confusingly similar to a complainant’s trademark to redirect Internet users to the Respondent’s website advertising competing goods or services; indeed presumptively bad faith as discussed in NetApp, Inc. v. July Linett c/o Jolly Co., FA0812001238829 (Nat. Arb. Forum February 5, 2009) discussed in Note for April 6, 2009. It is also mala fides as well as presumptive bad faith to attract Internet users for illegal transactions. In Car-Freshner Corporation and Julius Sämann Ltd. v. li yongbo, FA0901001244741 (Nat. Arb. Forum April 1, 2009) (default) the Respondent was using the disputed domain name to unlawfully sell counterfeit versions of Complainant’s products. The Panel held that “this use fails to constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii),” citing Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum September 14, 2006) (Respondent using the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website).
Apples featured in Apple Computer, Inc. v. Omar Acosta Rivera, D2006-1118 (WIPO November 21, 2006 (<applefans.com>) (a frequent target); blackberries in Research in Motion Limited v. Zag Media Corp., D2008-0848 (WIPO October 22, 2008) (<blackberryguru.com>) (a frequent target); strawberries in Strawberry Limited and Strawberry Cosmetics (Brands) Limited v. N/A, Wang Hong Hua, D2008-1500 (WIPO November 28, 2008) (less frequent target); and peaches in Peaches Uniforms Inc. v. 24-7 Outdoors Inc., FA0812001238992 (Nat. Arb. Forum February 8, 2009) (peaches.com>). Mint featured in The Royal Bank of Scotland Group plc v. TA Funds c/o Kison Patel, FA0807001218036 (Nat. Arb. Forum September 17, 2008) (<mintbanks.com>); and thyme in Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution March 20, 2000) (<thyme.com>).
The general rule is that registering common descriptive or generic terms for sale or making use of them for bona fide offerings of goods or services is perfectly legal. It is illicit to register a domain name whose purpose is to sell it to the complainant or confuse Internet users into believing there is an association with the trademark owner. The Panel in Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO January. 21, 2003) offers the term ‘apple’ as an example. Should the word “apple” be used in <apple.com> with respect to a web site offering fruit, namely apples, the registrant may have a legitimate interest in the name. However, “given the reputation of [the ‘apple’ mark] then the intentional registration and use of the misspelled word or words (for example <appple.com>) clearly manifests an intent to capitalize on the mark and constitutes bad faith under the Policy.” Typosquatting is prima facie bad faith because it implicitly acknowledges awareness of the trademark.
So ubiquitous in the marketplace are Apples, Blackberries, Strawberry Stores and The Royal Bank of Scotland’s “MINT” as a source of goods and services that any registration containing them is likely to cause initial interest confusion. On the other hand, in Shirmax on the same day that CES registered TYME it also registered names DILL and MINERAL WATER, which undercuts the Complainant's allegation that its trademark was the target of Respondent’s registration.
In Peaches Uniforms, the Respondent originally on its website associated <peaches.com> with desirable women. Later it began using the website as an advertising portal that included links to the Complainant and its competitors. As in Shirmax, the question was “whether Respondent was targeting Complainant’s trademark upon registration.” It makes a difference whether the respondent is the original registrant or a transferee. 24-7 Outdoors was the original registrant. See Note for April 1, 2009; in contrast, the usTLD Policy and other country code policies provide for either bad faith registration or use to be in violation. Had the domain name registration been transferred subsequent to the Complainant’s acquisition of its trademark and the website carried competitive advertising there would have been a different outcome because a transferee does not inherit its transferor’s good faith.
The accuser has the burden of proof. There is a presumption of innocence – bad faith is not presumed; at least, not generally presumed, although there are instances of conduct that are prima facie bad faith. Presumptions shift the burden to the opposing party to prove a complainant's right or a respondent's innocence. A presumption of validity and distinctiveness of an incontestible trademark limits what the complainant must prove, but when the presumption is contested the complainant is put to the test. At the outset, a complainant with a registered trademark is in the happy position of resting on its certificate of registration. Having satisfied statutory conditions the certificate “is prima facie evidence of [the trademark’s] validity,” NetApp, Inc. v. July Linett c/o Jolly Co., FA0812001238829 (Nat. Arb. Forum February 5, 2009), but validity also “creates a rebuttable presumption that the mark is inherently distinctive,” citing Janus International Holding Co. v. Scott Rademacher, D2002-0201 (WIPO March 5, 2002).
Challenging the presumption of distinctiveness reverses the role of accuser and accused, just as it does challenging a respondent’s assertion of good faith. The accuser is compelled to prove more than simply a trademark right. Validity may remain, but presumption rebutted defeats the complainant’s contention of exclusivity. On the other hand, the respondent’s failure to refute the presumption of inherent distinctiveness strengthens the complaint as much as refutation weakens it. Thus, a finding of “genericness [and no knowledge of the complainant or its trademark], if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration,” Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO August 24, 2000) (<rollerblading.com>). The Panel found that
the evidence appears to support Respondent’s claim that it is merely seeking to trade on the popularity of a term used generically by many people for a popular sport... [This] appears to be a case where the public created a generic term derived from Complainant’s mark, and Respondent has used that term in a manner consistent with common public use.
For a trademark on the descriptive end of the scale of distinctiveness or composed of a dictionary word or common phrase the owner has to do more than display his certificate of registration. The “more descriptive the name, the narrower the ambit of protection that a court will afford to the name,” UK Betting PLC v. Pam Oldfield, D2005-0637 (WIPO August 31, 2005) (<ukbet.com>.
In NetApp, the Respondent contended that the term “netapp” was a common term meaning “network application” citing an Internet dictionary known as The Free Dictionary, but it undermined its argument by its use of the website (inconsistency between what a party says and what its conduct): “There is not one reference to any use of NETAPP to mean supposedly ‘network applications’ on the site as it looked when this Complaint was filed. This is not surprising since the Respondent at the site sells network hardware, not network applications.” A domain name identical to a trademark inherently distinctive registered by a competitor is designed to confuse the Internet user.
The challenge in NetApp was reversed when it came to the issue of bad faith. Because of the inconsistency of words and conduct, the Respondent had to prove her innocence. The incontestible facts were that the parties were “in the same field of business” and that at one time there was a commercial relationship between the Complainant and a company – in fact, the beneficiary of a link on the website to which the disputed domain name resolved – in which the Respondent was the Vice-President. Respondent's knowledge of the Complainanat was further confirmed by her making a formal disclaimer of association with the Complainant. Putting a disclaimer on a web site is implicit acknowledgement of knowledge. If either facts support such a conclusion or the respondent cannot deny it, there is a presumption of bad faith, citing Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum October 24, 2002). The NetApp Respondent “has not managed to overcome this presumption.”
Topical Notes (“Disrupting Business of Competitor”)
The third of the four examples of bad faith [Paragraph 4(b)(iii) of the Policy] reads:
[Y]ou have registered the domain name primarily for the purpose of disrupting the business of a competitor.
Competitor is defined in Webster's Ninth Collegiate Dictionary as “one selling or buying goods or services in the same market as another.” “Purpose of disrupting” applies only to registrants who are competitors, “not merely any person or entity with an interest oppositional to that of a mark holder,” Howard Jarvis Taxpayers Ass’n v. Paul McCauley, D2004-0014 (WIPO April 22, 2004). Nevertheless, there has been a handful of cases in which panelists have inappropriately extended the meaning to include competing for Internet users.
It “is not necessary to show that the Complainant’s business was actually disrupted – only that the Respondent’s primary purpose is disruption,” RuggedCom, Inc. v. LANstore, Inc., D2005-0760 (WIPO November 15, 2005).
7/22/08 – Defining Competitor
3/11/09 – Beating the Competition to the Registrar
LexisNexis Trademark Blog:
10/3/08 Distinguishing Among Theories
Topical Notes for
¶4(a)(i) (Jurisdiction)
¶4(a)(ii) (Rights or Legitimate Interests)
¶4(a)(iii) (Bad Faith)
¶4(b)(i) (Selling, etc)
¶4(b)(ii) (Pattern of Conduct)
Normally, if a domain name is “registered before a trademark right is established, the registration of the domain name was not in bad faith,” Felsina S.p.A. v. Hannah’s Recipes Inc., D2006-1444 (WIPO February 1, 2007), cited by the Panel in National Construction Rentals, Inc. v. Toilets.com, Inc., D2009-0147 (WIPO March 18, 2009) (<nationalsanitation.com>). The Complainant in Felsina disclosed on its trademark application to the USPTO a date of first use of NATIONAL SANITATION that preceded the registration of the domain name. However, the Respondent insisted that because the Complainant failed to offer any proof of a common law trademark right it should be allowed to keep the domain name. The argument misses the point in two principal respects.
Felsina illustrates a situation in which there is some overlap in the parties’ businesses, portable toilets in this case, and raises questions whether the use of a descriptive phrase applicable to both party’s business is registrable at all as a trademark or if registered as a domain name be pre-empted by a later filed trademark registration. On the first issue “a descriptive term can become protectible as a mark upon a showing of acquired distinctiveness.... [Here, the] Complainant made the requisite showing of acquired distinctiveness to the PTO, which approved the registration of this mark.” The answer to the second issue depends on the respondent’s knowledge of the complainant. In Felsina, the Respondent did not directly deny knowledge, but rather asserted that it obtained the domain name before the Complainant obtained its trademark registration. The Panel found this singularly unpersuasive: “the statement is carefully crafted to refer only to the registrations and not more generally to Complainant’s use of the mark in commerce.”
The Panel emphasizes two points that are particularly helpful in determining a respondent’s good or bad faith in registering a domain name. The first point discussed in the section on bad faith is a dating issue: When did the complainant acquire its trademark rights? “[T]he relevant inquiry is not whether Complainant’s trademark was registered at the time the Domain Name was registered, but rather, whether Complainant had trademark rights at the time.”
The second point discussed in the section on rights or legitimate interests revolves around Respondent’s argument that it was using the domain name in connection with the offering of goods or services “before it received notice of the dispute.” The Panel made it clear that this misses the point. The critical question under ¶4(c)(i) “is whether Respondent’s use of the Domain Name was in connection with a bona fide offering for goods and services.” It is not bona fide to use the domain name “in a way that intentionally trades on a competitor’s mark, even if it is a weak mark,” citing River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, D2007-0416 (WIPO June 11, 2007) (a 3-member Panel that included the Felsina panelist).
Any inference drawn from the either of these two circumstances presupposes that the Respondent was aware of the Complainant use of the trademark. While the Respondent “might have the right to make a descriptive fair use of the words 'national sanitation' in advertising and promotional materials, see 15 U.S.C. § 1115(b)(4) ... that does not give Respondent any right to use those words in a trademark-like manner to indicate source.” The coupe de grace is that the Respondent “only used the Domain Name to automatically redirect internet users to its <www.toilets.com> website (the home page of which does not say anything about ‘national sanitation’ services).”
Rights to Domain Name under the “.us” TLD
Country code policies modeled on the UDRP vary from it in significant ways. The auDRP for example explains that some of its parts “are substantively different from the UDRP.” It cautions that “[p]rospective complainants should not assume that principles derived from UDRP decisions will be applicable to auDRP disputes.” One of the differences is jurisdictional. The rights violated are not limited to trademark or service marks. Paragraph 4(a)(i) reads:
[Respondent’s] domain name is identical or confusingly similar to a name [Note 1], trademark or service mark in which the complainant has rights;
Note 1 reads:
1] For the purposes of this policy, auDA has determined that a “name … in which the complainant has rights” refers to:
a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or
b) the complainant's personal name.
Another difference occurs in ¶4(a)(iii) for the “.au”, “.uk” and “.us” policies. Instead of requiring bad faith in the conjunctive it can be demonstrated by either registration or use. The usTLD has another difference. It enlarges the defenses under ¶4(c) to include as ¶4(c)(i) that
You are the owner or beneficiary of a trade or service mark that is identical to the domain name.
The ¶4(c)(i) defense was in issue in Enduris LLC v. Washington Governmental Entity Pool c/o Alric Balka, FA0901001245314 (Nat. Arb. Forum March 25, 2009). There was no dispute that the Complainant acquired its trademark ENDURIS prior to the Respondent registering <enduris.us>. However, the Respondent “provided evidence of the registration of its ENDURIS WASHINGTON mark with Washington State trademark authorities” when it changed its name in 2008. The Panel concluded
The presence of part of the Respondent’s state registered trademark and tradename for services unrelated to Complainant’s good and services is enough to establish that Respondent has rights or legitimate interests in the disputed domain name.
Complainant had argued the Respondent’s actual knowledge of the ENDURIS trademark “precludes Respondent from being able to acquire any rights or legitimate interests in any available domain names.” The Panel rejected this as “read[ing] too much breadth into the scope of Complainant’s rights.” A complainant in such a circumstance – taking into account the provisions of this particular policy – “must normally purchase the actual cyber-property if the owner wants to claim the right to exclude others.”
There can be no violation of the usTLD Policy because the Respondent is the owner of a trademark that is identical (or nearly so) with the domain name. Although moot, there also was no evidence of bad faith – “the Respondent’s use is in another completely different field of business.” While a decision to register a domain name “that does not specifically match one’s own trademark but is identical to the registered trademark of another is certainly ground for criticism and often a basis for proving bad faith that behavior alone is not indefensible.”
In reflecting on the decision in Enduris, the caution in the auDRP should equally be applied to usTLDs that “[p]rospective complainants should not assume that principles derived from UDRP decisions will be applicable to [usTLD Policy] disputes.” Although clearly not necessary for resolution under the usTLD Policy, it would have been useful to learn why the Respondent chose the particular name it did since it is fanciful rather than generic.
May 2009 NOTES , DATES ARE IN REVERSE ORDER
Domain Name, Geographic Term; Trademark, Geographic Term Plus Descriptor
How similar does a domain name have to be to a trademark to be confusing? A respondent incorporating a complainant’s trademark into its domain name generally has to explain and justify its choice where the additions “merely compound the confusion created by the incorporation of the Complainant’s trademark,” Fairmont Hotel Management L.P. v. Puts, D2001-0431 (WIPO May 17, 2001) (adding “hotel” and “resort” to form <fairmonthotels.com> and <fairmont-resort.com>) (transferred on default). The situation is different when the respondent registers the geographic term alone without a descriptor.
This issue of similarity without confusion arose in Jumeirah International LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc, Domain Administrator / Jumeira.com, D2009-0203 (WIPO May 21, 2009). The Complainant based its trademark right on JUMEIRAH BEACH HOTEL. It seeks to monopolize JUMEIRAH on the grounds that its trademarks predated the registration of the domain name. The record, however, disclosed that the Complainant had been unsuccessful in obtaining trademarks on the Principal Register. The disclosure came from the Registrant not the Complainant which prompted the Panel to note, “[s]ignificantly, [the Complainant] does not mention being on the Supplemental Register.” The Respondent included hyperlinks on its website to hotels in Jumeirah beach, but edited the website after receiving a cease and desist notice.
The Complainant had no trademark for JUMEIRAH standing alone, only in combination with the descriptor BEACH and HOTEL. While the domain name is similar and even with respect to the geographical location identical it is not confusingly so in either case. The Panel explained its thinking by analogy:
one might ask, would there be confusion in the minds of members of the public between “British” and “British Airways”, between “Huddersfield” and “The Huddersfield Choral Society”, or between “Bodega Bay” and a hypothetical “Bodega Bay Gas Station”? The Panel takes the view that it is highly unlikely and similarly unlikely that a domain name comprising “Jumeira” (in either spelling) standing alone would normally be confused with the Complainants’ businesses.
The Complainant’s contention that it was confusingly similar was not persuasive. Although the Panel took up the issues of rights or legitimate interests and bad faith, the Complainant lost on jurisdictional grounds. Whether a complainant has a trademark right depends on the coalescence of element one or two with element three. If the domain name is neither identical nor confusingly similar to a trademark or is identical or confusingly similar to an alleged but unproved unregistered trademark the complainant does not have standing to maintain a UDRP proceeding.
Multiple Unrelated Complainants in Consolidated Proceeding
Domain names can be consolidated “provided that the domain names are registered by the same domain name holder”[¶3(c) of the Policy] and so too cases “where there are multiple disputes between the complainant and respondent” [¶4(f) of the Policy]. Multiple related complainants have been recognized as having a joint interest in the disputed domain name, but UDRP cases with unrelated complainants are a new development. The preliminary issue in Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd., D2009-0331(WIPO May 12, 2009) is “whether the Complainants are entitled to bring a consolidated complaint against the Respondent, or whether it is necessary for the Complainant’s to bring individual complaints.” The issue of multiple complainants arose in a recent case brought under the .au Dispute Resolution Policy, National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, DAU2008-0021 (WIPO March 6, 2009).
In Dial A Word, the Panel held that
in determining whether to allow consolidation of multiple complainants in a single complaint, a panel should proceed as follows having regard to all of the relevant circumstances. First, the panel should answer the question: do these complainants have a truly common grievance against the respondent? If the answer to that question is ‘no’, consolidation should not be permitted. If the answer to that question is ‘yes’, it is necessary to answer the second question: would it be equitable and procedurally efficient to permit consolidation of complainants? If the answer to the second question is ‘no’, consolidation should not be permitted. If the answer to the second question is ‘yes’, consolidation should be permitted.
The Panel in Fulham Football Club “generally adopts the principles set out in [National Dial A Word]” Multiple parties unrelated except for their “common grievance” do not have a common legal interest (as do related multiple parties) since each is protecting its own trademark. The interest then must be found in “common conduct” for which the test is
(i) where the rights relied on and the disputed domain names in question involve readily identifiable commonalities; or
(ii) where there is a clear pattern of registration and use of all the disputed domain names in question.
If this test is answered with a “yes” then the Panel should turn to the following set of questions:
(i) whether there is any apparent reason why it would not be equitable to permit consolidation of the complainants;
(ii) the extent to which the complainants’ substantive arguments made under each of the three elements of the Policy appear to be common to the disputed domain names;
(iii) whether all complainants are represented by a single authorized representative for the purpose of the proceedings;
(iv) whether the complainants clearly stipulate each disputed domain name, the individual complainant making a claim thereto, the right or rights relied upon by that complainant, the remedy sought in respect of the disputed domain name, and the registrar with whom the disputed domain name is registered;
(v) whether the case involves a relatively small number of domain names;
(vi) that relevant filings, including any annexes, would not appear to be unreasonably voluminous;
(vii) whether there is an applicable fee schedule covering the complaint as filed.
Judged by these criteria the Panel in Fulham Football Club found in favor of consolidation and ordered the domain names transferred, each to the corresponding Complainant. He considered the National Dial A Word tests “appropriate and balanced ... in as efficient and cost effective a manner as is fairly possible” with one caution:
However the test must be applied judiciously and depending upon the circumstances of particular cases may require the exercise of a panel’s discretion in adapting it as appropriate.
In National Dial A Word the Panel found that the Complainants were not successful in either limb and denied a consolidated proceeding.
Those who aggregate first names and surnames as a business model, those who own trademarks based on personal names and those who register their own names for business or family websites are sometimes in collision. A complainant’s right to monopolize the word or words of its trademark is in all events is tested by a respondent’s conduct and does not reach to registrations made in good faith. Whatever the respondent’s business model or purpose for registering personal names its conduct is deduced from among other evidence the current and historical hyperlinks on the website to which the domain name resolves.
When the business model is for vanity emails and the respondent sticks to its model it is unimpeachable, Emilio Pucci SRL v Mailbank.com, Inc., D2000-1786 (WIPO March 19, 2001) (<pucci.com>); Ancien Restaurant Chartier v. Tucows.com Co., D2008-0272 (WIPO May 6, 2008) (<chartier.com>); Stephen Wheatcraft v. Reison, Inc. c/o Domain Manager, FA0811001232650 (Nat. Arb. Forum December 22, 2008) (<wheatcraft.com>); when the complainant does not stick to its model the result is Aubert France SA v. Tucows.com Co., D2008-1986 (WIPO March 17, 2009) (<aubert.com>). A trademark owner’s right cannot trump a respondent who registers his professional (stage) name, Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO October 16, 2003) (<lexusmichaels.com>); her own name for business, Harrods Ltd. v. HDU Inc., D2004-0093 (WIPO April 27, 2004) (<harrodssalon.com>; his own name for a family website, Mathiesen S.A.C. v. Allan Mathiesen, D2009-0087 (WIPO March 23, 2009) and neither can it have a greater right than another business equally entitled to the name even if it is confusingly similar to the complainant’s trademark, Mirabella Beauty Products, LLC v. TONEX, D2009-0342 (WIPO May 4, 2009).
Collisions occur with initials, “jal” in Japan Airlines Company Limited v. TransHost Associates, JAL Systems and John A Lettelleir, D2000 - 0573 (WIPO August 21, 2000) (<jal.com>), and nicknames, SAP AG v. Chris Pranzini, D2006-1525 (WIPO 2006) (<sapnet.net> derived from Christopher A. Pranzini). Pranzini supported his use of “sap” by inviting the Panel to inspect the historical record on Archive.com which corroborated his use of the domain name as a personal website.
Mirabella has to live with <imirabella.com> not for the reason that it acquired its trademark after the registration of the domain name, a ¶4(a)(iii) issue, but because the Respondent proved under ¶4(c)(ii) of the Policy that it was commonly known by the domain name. “[P]rior UDRP decisions make it plain that correspondence between the names need not be exact for this paragraph to come into play, so that the distinction between ‘Mirabella’ and ‘iMirabella’ does not reduce the commonality between said partner’s company name and the disputed domain name,” citing cases using “the possessive form” such as <kens.com> for “Ken’s” [Ken’s Foods Inc. v. kens.com, D2005-0721 (WIPO September 11, 2005)]. The SAP case also illustrates that the names do not have to be exact; Pranzini took the “s” from Christopher, added the middle initial “A” and the first letter of his surname.
Personal names fall into the same category as generic terms and the principle applicable to registration and use requires the complainant to prove that in registering the domain name the respondent had the complainant's trademark in mind. The evidence in Mirabella provided by the Complainant corroborated the proof submitted by the Respondent which was that the Respondent operated a business using the domain name and therefore had a right to it.
Incorporating Trademark for Consulting Services
There are similarities between resellers and consultants in that each wants to associate its offering with a brand without leaving the impression that it is the official website of the trademark owner or sponsored by it. Resellers are offering goods; consultants are offering services. One of two principles is applicable. The first holds that “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services,” Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, D2000-0847 (WIPO October 12, 2000), and the second, deriving from Oki Data Americas, Inc. v. ASD, Inc, D2001-0903 (WIPO November 6, 2001), sets forth the conditions under which use of the trademark supports a respondent’s legitimate interest in the domain name.
In SAP AG v. UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (<unisap.com>) the Respondent offers consulting services on the software products sold by the Complainant. On the one hand (having Madonna in mind) “It is clear that the Complainant has not given the Respondent any authorisation or permission to use its registered trade marks, either in its business name or in the disputed domain name.” On the other hand (having Oki Data in mind, although citing DaimlerChrysler A.G. v. Donald Drummonds, D2001-0160 (WIPO June 18, 2001 )) “‘SAP’ is a well known and widely-used name of the Complainant’s software products, and the Respondent’s business directly relates to providing consultancy services in relation to this type of software. The Respondent appears lawfully entitled to provide these types of services and there is no suggestion from the Complainant that it has a monopoly over providing SAP consulting services.” Such is the conundrum.
The Panel concluded that “the following circumstances favour the Respondent.” Among the circumstances is that the “use of the Complainant’s trade mark on the website is somewhat unavoidable, having regard to the nature of the Respondent’s services. In most instances on the Respondent’s website, the Respondent is using SAP as a descriptive term, rather than a trade mark.” The conundrum is resolved in the Respondent’s favor for the reasons expressed in DaimlerChrysler that the Policy was not designed “to establish for the holder of a strong trademark a bar to entry of online competitors.” [As a footnote, the DaimlerChysler case is interesting because over the course of time the website broadened to include content that took it out of the Oki Data criteria and on a subsequent UDRP proceeding the domain name was transferred, Daimler AG v. William Wood, D2008-1712 (WIPO February 25, 2009) discussed in Note for April 13, 2009].
Memorial Day: Next Post Tomorrow.
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000).
[O]nce the complainant has made a prima facie showing [under 4(a)(ii) of the Policy], the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue.
Right Respondent, Wrong Complainant
Respondent registered the disputed domain name shortly after the registration on the Principal Register of a trademark that included the three letter acronym OVB. He populated his website with hyperlinks to products competitive with those manufactured by the trademark holder. These facts ordinarily yield a finding of bad faith. However, abusive registration depends on the identity of the complainant. In order to prevail a complainant has to prove that the respondent had its trademark in mind in registering the domain name, not someone else’s. In the particular case in question, OVB Vermögensberatung AG v. Michele Dinoia and SZK.com, D2009-0307 (WIPO May 6, 2009) the Complainant is not the trademark holder targeted by the hyperlinking on the website.
The Complainant in OVB is a financial services company. The “Respondent’s use of the disputed domain name with a portal site containing advertising links for knives and cutlery does not on its face appear to be seeking to capitalize on the goodwill created by the Complainant in its mark.” In addition the “appreciable evidence” indicated that the three-letter combination “ovd” is attractive “independent of any trademark value derived from the Complainant’s use of the mark in relation to financial services.”
The irony (pointed out by the Complainant who had nothing to gain by this research) is that the trademark OBV OUR VERY BEST is owned by one of the oldest knife manufacturers in the United States, Camillus Cutlery. The Respondent registered the domain name two months after Camillus Cutlery obtained a U.S. trademark registration. The timing makes it clear that the trademark targeted was Camillus Cutlery’s not the Complainant’s. However, the jurisdiction of the UDRP is “limited to disputes between the parties before it.” Now, if Camillus Cutlery were to initiate a proceeding, then we could look forward to Act 2. Moreover vis-a-vis Act 2, “the Panel would not exclude the possibility if the Respondent’s use of the disputed domain name was to materially change following this decision in a manner suggesting the targeting of the Complainant’s mark, that this might not provide ground for a re-filed complaint.”
Broadening the Scope of the Policy
A case can be made that the scope of the Policy has broadened over time due to panelists’ close reading of its provisions, clear and consistent application of the fruit of study and adherence to precedent in building a domain name jurisprudence.That changes are not welcome by all panelists was noticed in the dissent in RUGGEDCOM, Inc. v. James Krachenfels, D2009-0130 (WIPO April 7, 2009). She found the majority’s decision “disheartening.” Change is also mentioned in a letter from the National Arbitration Forum to Members of the Implementation Recommendation Team formed by ICANN dated May 6, 2009 in connection with the proposed Uniform Rapid Suspension System and the Post-Delegation Dispute Mechanism: “Complainants have pushed, and Panelists have taken the opportunity, over time, to broaden the scope of the UDRP, but it started out as a mechanism only for clear cut cases of cybersquatting.”
Initially, panelists were inclined to dismiss factually complicated cases with contract and fiduciary issues as outside the scope of the Policy. Of course, there have always been panelists who seize the opportunity examine facts and parse evidence more minutely than their colleagues. Given the brevity of time to review the submissions and return a decision it is remarkable that some are so well reasoned and written. The facts in The Carat Club Sdn. Bhd. v. Guangzhou Mickey Weinstock & Co. Diamonds Manufacturing Ltd., D2009-0052 (WIPO May 4, 2009) for <lovediamond.com>, <lovediamond.net>, <thelovediamond.com> and <thelovdiamond.net> could feature as a subplot in a novel. There is the mysterious “Mickey Weinstock”; a Belgium lawsuit by the Complainant against an avatar of Mickey Weinstock; and a license agreement to an alleged related company in a family of companies that includes the Respondent to which the Respondent claims entitlement by reason of its family connection. All in all a very complicated fact pattern starting with an argument that the outcome of the lawsuit is res judicata and that the Panel should back off and dismiss the complaint as inappropriate for resolution under the UDRP.
The Panel decided not to back off, but parse the complicated facts to determine whether they were complex or made by the Respondent to appear complex. On the lawsuit, the Respondent was not a party and “the claim in those proceedings for the transfer of the domain names was dismissed because the defendant was no longer the registrant.” The lawsuit was against another Mickey Weinstock entity, “Mickey Weinstock & Co. NV.” Since “the Complainant did not appeal against that aspect of the judgment, on the material before the Panel there are no court proceedings on foot in respect of a domain name dispute that is the subject of this complaint.” In fact, “Mickey Weinstock & Co. NV” transferred the domain names to “Guangzhou Mickey Weinstock & Co. Diamonds Manufacturing Ltd.” before the commencement of the lawsuit for the same reason that respondents sometimes do in anticipation of a proceeding under the Policy, to delay or complicate the dispute in the hope that the complainant will go away. “Such conduct on the part of the Respondent smacks of ‘cyberflying’, even though, at the time of the transfers, no proceedings against the Respondent were contemplated, for the very reason that the Complainant was unaware of them.”
The disentangling of the license issue is a lesson in analytical reasoning. At issue was whether the Respondent could exercise rights in trademarks licensed by other companies within the same group. There was no evidence that the licensee, Chow Sang Sang Jewellery Company Limited “ever expressly authorized the Respondent to register the domain names or to use the mark.” The Panel stated that it was “not prepared to accept the Respondent’s assertion that the entire Chow Sang Sang group is selling THE LOVE DIAMOND diamonds, let alone with the knowledge and approval of the Complainant, in the absence of concrete evidence to support it.” Moreover, the license (which the Panel also examined) forbids the licensee from selling THE LOVE DIAMOND outside of the territory to which it is assigned. The Internet has no limitation so that use of the domain names to sell THE LOVE DIAMOND would have the effect of extending the territory worldwide. Such “use of the domain names contrary to the express terms of the license regarding the Contract Territory cannot rise to rights or legitimate interests in the domain names.”
The fact that the case raised third party licensing issues and prior court determinations in which the Complainant was unsuccessful on one branch of its lawsuit did not deter the Panel from examining the facts closely on the issue of abusive registration.
If ¶4(c)(iii) of the Policy is to be invoked as a defense to abusive registration the respondent must do more than “[I] have been delayed by [my] busy schedule and uncertainty whether [I] should build the website [myself] or engage others to help.” The website in question was <airfrance-sucks.com>, Société Air France v. Mark Allaye-Chan, D2009-0327 (WIPO May 14, 2009). The wording of the Policy “requires the Respondent to be ‘making’ a legitimate non-commercial or fair use of the disputed domain name.” Present tense, not future tense, although waiting to develop the website is not necessarily inculpatory – “it may be that the Respondent has not had sufficient time to launch his protest site.” The problem is that in this particular case “the website has previously resolved to a Google search engine (which allows for the possibility of commercial gain)” which undercuts the Respondent’s alleged motivation for acquiring the domain name.
While the Respondent did not support its contention that it was holding the domain name for a legitimate non-commercial or fair use purpose, neither did the Complainant support its contention (or one of them) that the Respondent’s purpose in registering the domain name violated ¶4(b)(i) of the Policy – “this allegation has not been substantiated and cannot be used to demonstrate bad faith.”
The Panel is making an important point about theories of liability. Whichever of the four non-inclusive examples of bad faith, it is up to the complainant to accurately identify and support the proper theory. The Panel focused on ¶4(b)(iv) of the Policy: it “infers that this name was chosen to generate Internet traffic to its website by creating a likelihood of confusion with the Complainant’s marks.”
Denying Complaint, But Another Possible Bite at the Apple
Fame of name alone is not enough for standing in a UDRP proceeding. Living persons whose reputations are earned out of the spotlight of commerce but in the figurative scrum of their professions are unprotected from predatory registrations of their names unless as eponymous founders of businesses, successful authors or sports and entertainment personalities they own a trademark in their name. This applies however extraordinary the individual’s contribution is to business, science, politics, the professions and the academy. Not having a remedy through the UDRP may result in an “injustice.” It is undoubtedly an unhappy limitation: “many sensitivities [will be] offended by the unauthorized registration of personal names as domain names” (The Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names In the Internet Domain Name System, September 3, 2001. WIPO Second Report, Paragraph 199).
If the complainant does not have a registered trademark its standing depends on proof of secondary meaning to establish a common law right. “The usual test to ascertain common law rights applies, namely, considering whether the [alleged] trade mark has acquired secondary meaning, and become a distinctive identifier associated with the complainant’s goods and services,” Jonathan Ive v. Harry Jones, D2009-0301 (WIPO May 5, 2009).
The Complainant in Jonathan Ive is employed by Apple, Inc. The Respondent is a self-proclaimed admirer of Mr. Ive who allegedly intends to use <jonathanive.com> as a fan site. Attempts have been made to circumvent the limitation by associating the complainant with owners of famous trademarks, as did Mr. Ive; also Gloria Feldt, Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, D2002-1073 (WIPO February 21, 2003) (complaint on behalf of Complainant’s president, relief denied); David Pecker v. Mr. Ferris, D2006-1514 (WIPO January 15, 2007) (businessman, relief denied). However, he or she has to prove that his or her name has been used in commerce for “the purpose of merchandising or other commercial promotion of goods or services.” Mr. Ive stated that he was “a very private person. My reputation has been established by the work I do, not through self-publicity. I do not usually give interviews … I seek to avoid publicity.” This is not a formula for proving a common law trademark right.
Since the Complainant did not have standing to maintain the proceeding, the Panel had no choice. He dismissed the complaint with the following interesting note:
A different result ... could occur if or when the Complainant’s Community Trade Marks are registered, or if for instance Apple Inc., takes different steps in relation to the branding and use of Complainant’s personal name. In such circumstances, the Complainant may be entitled to file another UDRP case.
We have something to look forward to, Mr. Ive’s second bite.
Each party to a UDRP proceeding is commanded to annex any documentary or other evidence in support of its case. For the complainant Rule 4(b)(xv) reads “including a copy of the Policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies, together with a schedule indexing such evidence”; and similarly for the respondent at Rule 4(b)(ix). Perhaps “commanded to annex” is too strong a phrase. “Take heed that you support your claim or defense” may be better as indicated in the Note for May 1st, “No Record, No Case.” The Complainant in Rotobrush International LLC v. vacbrush a/k/a ming liu, FA0903001253370 (Nat. Arb. Forum May 8, 2009) appeared pro se and did not take heed. The Respondent in Atlanta Network Technologies, Inc. V. ANT.COM LIMITED, FA0903001253155 (Nat. Arb. Forum May 11, 2009) was represented by counsel and did take heed.
Simply owning a trademark is only a door opener. It satisfies neither the ¶4(a)(ii) nor the ¶4(a)(iii) tests. Rotobrush International “failed to allege any facts whatever in support of its bald assertion that Respondent lacks right to or legitimate interests in the disputed domain names, including as to the specifics of Respondent’s use or nonuser of the domain names.” Of course, failing to prove that a respondent lacks rights or legitimate interests does not mean that it has any, but no deduction can be made from the absence of evidence. However, Rotobrush International also failed to allege any facts to support the claim that the domain names were registered or being used in bad faith. “The mere assertion of bad faith without any supporting evidence is insufficient to justify a finding of bad faith ... under the Policy.” And, the Respondent did not even respond to the complaint! Perhaps the Complainant foresaw Respondent’s default and assumed failure to answer constituted admission of the material facts of the complaint entitling it to summary judgment. “One of [the Complainant’s] arguments [in DNA (Housemarks) Limited v. Tucows.com Co., D2009-0367 (WIPO May 5, 2009)] that the failure to provide a response results in a default judgment (as would occur in civil litigation in the United States or Canada), is mistaken as a matter of Policy precedent. Failure to respond in a Policy proceeding does not of itself constitute an admission of any pleaded matter or result in the Policy equivalent of the default judgment.”
The contrast with Atlanta Network is striking. There was no issue that the Complainant owned a trademark in ANT, albeit registered on the Principal Register many years after the original registration of <ant.com>. The domain name was successively held by a number of registrants who allegedly used it in competition with the Complainant. Respondent’s transferor purchased the domain name for $241,200 “in October 2006 [in a] highly publicized sale” and Respondent took possession by private sale in 2008.
The principle that a transferee inherits its predecessor’s bad faith use applies only when the transferee continues infringing use, otherwise a respondent’s conduct is measured from the inception of its registration. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 3.7: “the transfer of a domain name to a third party does amount to a new registration.”
The Respondent in Ant.com offered fulsome (indeed overwhelming) evidence from 1) the PTO database of the popularity of ANT (116 live or pending U.S. trademarks); 2) the results of a Google search (97 million “among which Complainant does not appear among the first 100, but which rates Respondent high and which, at No. 86, contains a reference to Respondent’s ‘Ant.com Toolbar’”; 3) its bona fide offering of goods or services; and 4) “copies of extracts” from the transferor’s passport to prove that an alleged conversation had taken place that the Respondent was holding the domain name to “sell for millions of dollars.” In passing, the Respondent also had something to say about the history of the Complainant’s website (or lack of it) on Archive.com – a tool typically used by complainants – (“Respondent further notes that the Archive.org history of the record of use of Complainant’s domain name <antgroup.com> has been blocked using a robots.txt file, thus rendering it impossible to confirm any of the Complainant’s claims about such use. Respondent contends that this technique of hiding historical use of a domain name is a tactic normally used by cybersquatters in UDRP proceedings, and is a practice which has been held, in proceedings under the Policy, to be evidence of bad faith.”
The Respondent’s “site is currently shown to be approximately the 11,313th highest ranked site on the internet, and the comparative traffic statistics shows that Respondent’s site has climbed from about the 5000th most popular site to its present rank.” In comparison, the Complainant’s site “is only ranked from 40,000th to 50,000th during the same period.” The Respondent’s popularity rests on a plug-in for Internet Explorer and Firebox browsers that allows users to download certain types of video files from the Internet.” The Ant.com Toolbar has been downloaded more than a million times for each of the two browsers.
Complainant’s contentions about Respondent’s conduct notwithstanding that it was the original registrant clothed anew “the Panel prefers the [Respondent’s] version of the events by which it acquired the domain name and the subsequent use it made of it.” The Complainant, in other words, “failed to establish that Respondent rather than Respondent’s predecessors in interest, lacked rights and legitimate interests in the domain name.”
Losers Weepers If Not In the Preferred Category
Losing a domain name by inadvertence has a mixed history. Where the loser is the owner of a well known trademark, the registrant has been found to have registered the domain name in bad faith. The Respondent in World Wide Commerce Corporation v. WebContents, Inc., FA1124467 (Nat. Arb. Forum February 13, 2008) advocated the “finders keepers, losers weepers” doctrine. The Complainant explained that <worldwidecommerce.com> was inadvertently deleted due to an error by its Registrar. The Panel stated that
While “finders, keepers-losers, weepers” is a quaint and classic saying it is also an oversimplification of the underlying law. Actually the finder takes as to all the world except the true owner, or the prior peaceable possessor. WWC Corp. provided sufficient evidence to show that it fit one of the preferred categories and Respondent, who rather unconvincingly claims to be an innocent finder here, is the party that must “tear” itself away from the disputed domain name.
The question is whether the loser fits into the preferred category. When the complainant has no reputation in the marketplace and cannot begin to prove any common law trademark, the proceeding will be a lost cause. These observations are manifest in the Inspirational Poetry case, Connie Campbell Bratcher v. Inspirational Poetry Quebec, FA0902001249815 (Nat. Arb. Forum May 8, 2009).
Mere possession of a domain name without demonstrating any common law or registered rights in a mark is insufficient to bring a claim under the UDRP. GLB Serivicos Interativos S.A. v. Ultimate Search Inc., D2002-0189 (WIPO May 29, 2002). Ms. Bratcher acquired <inspirationalpoetry.com> in 1998 and lost it “because of an administrative error.” In order to pull oneself into the “preferred category” the complainant must prove that she “had been engaged in commercial activity using the disputed domain name as a common law trademark.” The Complainant “should have presented evidence of that activity, for example news reports, references, letters, other material associating here with the purported trademark.” Alas,
No such evidence has been presented to the Panel.
As a result Ms. Bratcher has no standing to maintain the proceeding. Failure to satisfy Paragraph 4(a)(i) makes it unnecessary to decide the other elements of the Policy.
Availability and Effect of Court Proceedings
The UDRP forum is non-exclusive. Either party can initiate a legal proceedings “prior to or during and administrative proceeding in respect of a domain-name dispute” [Rule 18(a) of the Rules of the Policy]. If the legal proceeding is commenced during the pendency of an administrative proceeding the party initiating it “shall promptly notify the Panel and the Provider” [Rule 18(b) of the Rules of the Policy]. In either event, the “Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision” [Rule 18(a)]. Rule 18 is a book-end to Paragraph 4(k) of the Policy. The two should be read together.
The procedure for determining whether to suspend or terminate the administrative proceeding is spelled out in The United States Olympic Committee (USOC) and Chicago 2016 v. Steve Frayne, D2008-1079 (WIPO Sept€€ember 25, 2008) (<chicago2016.com>), discussed in the Note of October 6, 2008. The Respondent in that case filed an “emergency motion” after the appointment of a three-member Panel to terminate the administrative proceeding which was granted without opposition by the Complainant.
In DNA (Housemarks) Limited v. Tucows.com Co, D2009-0367 (WIPO May 5, 2009) the motion to terminate the administrative proceeding was vigorously opposed, thereby calling upon the Panel to explain more fully his reasoning for terminating rather than proceeding to a decision. The Complainant’s advanced several arguments in favor of the Panel proceeding to a decision, but they were not “compelling.” One argument rested on a proposition familiar in civil practice but rejected under the Policy that the defendant’s default in answering the complaint constitutes an admission of the material facts. There is no equivalent of a default judgment under the Policy. A second argument for proceeding to a decision is that it “may assist the parties in evaluating their rights, facilitate settlement, or provide guidance to the Ontario court also seems unpersuasive.”
Termination is more likely where the motion is made promptly after appointment of the Panel as in The United States Olympic Committee, less likely if the Respondent has participated in the proceeding, Tiara Hotels & Resorts LLC. Jon Pepin, D2009-0041 (WIPO March 10, 2009) and even less likely if the motion appears to be made manipulatively for delay, American College of Trial Lawyers v. John Givens, D2008-1813 (WIPO January 28, 2009).
In Tucows, the Respondent moved promptly for termination of the administrative proceeding. The Complainant accused the Respondent of “gaming the system.” However, the Panel found that the subject matter for declaratory relief was limited to entitlement of the disputed domain name, the precise issue under the UDRP. When “entitlement to the disputed domain name is but one of many issues in the pending civil litigation, panels have occasionally exercised their discretion to proceed to a decision.” Further,
The identity of issues means that the situation is very much the same as if the Panel had proceeded to a decision and the losing party (Complainant or Respondent) then elected to exercise its right under paragraph 4(k) of the Policy to contest the matter in an appropriate national court.
This means, in essence, that nothing would be gained by proceeding to a decision. In response to the argument that the Ontario court would have the benefit of the Panel’s decision, the Panel’s put the issue squarely in perspective: “To the extent that entitlement turns on complex or contested determination of fact, for example whether Respondent or its predecessor company had (or should have had) knowledge of Complainant’s trademarks or just how ‘common’ a surname Dunlop is, the Ontario court will likely have available a complete record, the opportunity to hear live testimony, and the ‘chastening process of cross-examination,’ none of which may avail this Panel.”
Panels are ambivalent about accepting a respondent’s defense that the PPC model for generating revenues is a bona fide offering of goods or services. The Panel in Cupa Materiales S.A. v. Stonepanel.com c/o Whois Identity Shield/Vertical Axis, Inc., D2009-0216 (WIPO April 29, 2009) found the Respondent’s contention that it had a legitimate interest in <stonepanel.com> “a more involved question.” In fact it preferred to defer the question to determine the issue of bad faith. Having done so it concluded that it was “unnecessary to rule upon whether Respondent has rights or legitimate interest in the disputed domain name.” This puts a premium on the parties’ arguments and submissions. There is no reason to deny legitimacy to any business model, but no model is per se legitimate. The question of rights or legitimate interests must be secondary to respondent’s conduct. If, for example, the respondent has registered the disputed domain name opportunistically it is irrelevant that its business is legitimate.
However cogent an argument may sound it gains in persuasion by being supported by evidence. Argument without evidence is merely entertaining; more theater than courtroom. The Complainant in Cupa Materiales argued five points: 1) that its trademark was well-known; 2) that the trademark is descriptive of its product; 3) timing of Respondent’s acquisition of the domain name was suspicious; 4) Respondent’s use of a privacy protection service was not legitimate; and 5) Respondent’s failure to respond to the Complainant’s cease and desist letter.
The Panel found that “the Complainant fails with credible evidence to establish any of [the arguments].” Simply asserting that a trademark is well-known is not enough, particularly where the parties of geographically distant and the trademark is of recent origin. To admit that a trademark falls on the lower end of the classification scale rather reduces than enhances the its generic quality. Timing could be suspicious if there were evidence that the Respondent could not but be aware of the Complainant’s trademark. Failure to respond to a cease and desist letter can be dispositive of both rights and legitimate interests and bad faith but only if the Respondent does not respond to either the letter or the complaint. Such a conclusion is based on the notion that if the respondent had a right or legitimate interest it would have responded. Ditting Maschinen AG v. I.C.T. Company, D2003-0170 (WIPO April 30, 2003). On the other hand, no such inference can be drawn when the respondent answers the complaint. Where the Respondent answers the complaint with evidence of its good faith it is irrelevant that it ignored the cease and desist letter.
Registrations on the Principal Register
A frequent rejoinder to trademarks on the weak end of the classification scale is that they are generic and the complainant’s attempt to monopolize the term overreaches its right. However, alleged generic terms registered on the Principal Register are presumptively inherently distinctive and constitute prima facie evidence of validity. The Panel in Hola S.A. and Hello Limited v. Idealab, D2002-0089 (WIPO March 27, 2002) (<hello.com>) observed that “[i]t is not for the Panel to decide whether registration of the marks should or should not have been granted.” Rather, “[a]ny claim that the registration should not have been granted or should be revoked falls to be decided by the Courts of the relevant country.” The issue is whether the respondent can establish a right to the term on grounds within the scope of the Policy. In Hola, the Respondent proved that “before any notice ... of the dispute ... [it used] the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
The Respondent in BzzAgent, Inc. v. Bzzing, Inc., Diego Berdakin, D2009-0295 (WIPO April 22, 2009) (<bzzing.com>) argued that “bzzing” was generic in the marketing industry and it was using the term descriptively, “word of mouth.” The Complainant has registered trademarks for BZZ and BZZAGENT and an application for YOU BZZIN’ME. It offered evidence of first use in commerce for BZZ in 2002. The domain name was registered in 2006. The decision indicates that the Complainant resides in Boston, Massachusetts and the Respondents in Los Angeles, California.
Geographically separated parties even in the same industry can conceivably have no knowledge of the other’s existence. Roco Modellspielwaren GmbH and Dipl.-Wirt.-Ing. (FH) Peter Maedgdefrau v. Plantraco Ltd., D2005-0112 (WIPO April 8, 2005) (<minitank.com>). Conceivable also is that a respondent has an equal right to the mark, Cable Inc v Arran Lal, D2001-0201 (WIPO March 30, 2001) (<rogersvideo.com>), in which the Panel held that the “registration of a generic top-level domain name by an existing legitimate business in one jurisdiction that is also sought after by another existing legitimate business in another jurisdiction cannot per se be evidence of an intention to disrupt the other’s business.”
This was not the case in BzzAgent. The evidence contradicted the Respondent's contentions. The Complainant offered evidence that the Respondent’s website copied content directly from its website. The individual Respondent attempted to distance himself from the corporate Respondent who presumably arranged for the website content to avoid imputation of bad faith, but the consensus holds that content that evidences knowledge of the complainant (hyperlinking to competitors, copying complainant’s web pages) is attributable to the respondent. “The Respondent’s claim not to have been aware of the content of his own website simply is not credible, particularly where the Respondent maintains that he registered the disputed domain name for use with a website featuring content regarding buzz marketing.”
In a number of recent cases, complainants have challenged respondents’ rights or legitimate interests in domain names either registered prior to proved acquisition of trademark rights or if after on the ground of non-use [NETtime Solutions LLC v. NetTime Inc. c/o Chad Wagner, FA0810001230152 (Nat. Arb. Forum December 19, 2008), previously discussed December29, 2008)]. The fact that a respondent is not using his domain name to conduct business on the Internet does not extinguish his rights to it. In the different setting reported in Deacom Inc. c/o Jay Deakins v. Deacom c/o Ben Dean, FA0902001246846 (Nat. Arb. Forum April 14, 2009) the Respondent had registered his domain name and for a time conducted business through a New Jersey corporation, but latterly used the domain name only for his email address. The Panel’s decision to give the domain name to the Complainant based on the record described did not (to be charitable) make sense and was a windfall for the Complainant.
A variant of the situation, a potential windfall to the Complainant, though unsuccessful in accomplishment, is reported in Mills & Associates, LLC v. Center for Internal Change Inc., FA0903001251337 (Nat. Arb. Forum May 4, 2009) for <onlinediscprofile.com> and <onlinediscprofiles.com>. The companies are in the same business. The Complainant has state-registered trademarks in Delaware (November 2008) and Illinois (December 2008) and claims continuous use of the terms DISCPROFILE, DISCPROFILES and ONLINEDISC since 2000. The domain names were registered in 2003. Proof of a right to maintain the proceeding “is very low.” The state-registrations were sufficient. But, for proof of a common law trademark right that predates the domain name registration the bar is significantly higher. When a complainant alleges as Mill & Associates does that it “had already become an industry leader” is 2003 there is expectation that it has documentary proof to back up the allegations. When the expectation is unfulfilled it means either that the complainant did not understand its burden of proof or that it did not have any documentation. It also alleged (without offering proof) that the Respondent was aware of its trademark.
However, there was no evidence that the Respondent had any knowledge of the Complainant at the time it registered the domain names, but in response it submitted proof of its own substantial business dealings and that the terms incorporated into the domain names were “highly descriptive” of the products and services in the industry. The highly desirable domain name stayed with the Respondent. “[T]hese considerations factor into [the Panel’s] determination that the Respondent has established rights or legitimate interests in the Domain Names.”
The right of a complainant from anywhere to initiate a proceeding against a respondent from anyplace for a disputed domain name registered on a far continent under an agreement in a foreign language raises a threshold issue of fairness. Paragraph 11(a) of the Rules of the Policy provides that
Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The “subject to” clause gives the Panel the discretionary authority to overrule the “shall be” prescription of the first clause. The considerations for holding the proceeding in the complainant’s language rather than the registration revolve either around the content of the website or some conduct by the respondent. Whichever, the decision “must be exercised in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs.” Transtrands Handelsaktiebolag v. Jack Terry, D2005-0057 (WIPO March 21, 2005).
In Krizia S.p.A. v. Hong Hee Dong, D2009-0141 (WIPO April 30, 2009) (default, registration in Korean and in an initial communication with WIPO the Respondent objected to English) the Panel found that the “disputed domain name displays content entirely in English.. [and t]he content is generated by a domain name parking service (smartnames.com) that operates entirely in English.”
In Alstom, Bouygues v. Webmaster, D2008-0281 (WIPO May 8, 2008) the registration was also in Korean. The complaint was submitted in English. Prior to its submission, the Respondent answered the Complainant’s cease and desist letter with an offer to sell the domain name in English, which was unsuccessful, and the Respondent defaulted in answering the complaint. The Panel decided to hold the proceedings in English on the theory that the Respondent had shown proficiency in the language.
A third alternative is for the Provider to take initial procedural steps to comply with the first clause of the Rule. In Too Faced Cosmetics Inc. v. Sun Liang, FA0807001216825 (Nat. Arb. Forum September 12, 2008). The National Arbitration Forum sent a Chinese Language Notification of Complaint and Commencement of Administrative Proceeding to the Respondent, who defaulted in appearance. The Panel concluded that the language requirement had been satisfied through the Chinese language Notice of Complaint and Commencement Notification and, absent a Response, conducted the remainder of the proceedings in English.
If the website is set up to address an audience of English – or other language – speakers and the respondent demonstrates fluency in the complainant’s language, either by communication or the contents of the website, then it is appropriate to conduct the proceedings in the complainant’s language regardless of the language of the registration agreement.
Not Sufficient for a Name to Function as a Trademark if Complainant has no Trademark Right
A complainant’s name composed of a clearly descriptive phrase is not a sure indicator of its rights under trademark law however long it has been in business if its name either does not function as a trademark or another party successfully registered it on the Principal Register. The Respondent in Word of Faith International Christian Center v. Brendhan Hight c/o Mdnh Inc., FA0903001251581 (Nat. Arb. Forum May 1, 2009) who is not the trademark holder submitted evidence from the USPTO of who is as the principal impediment to the Complainant’s claim. “The last contention is of critical importance to the resolution of this dispute.” The Panel noted
The evidence submitted by Respondent shows that Registration No. 1,138,281 is on the Principal Register, protects the identical mark WORD OF FAITH for which Complainant asserts ownership, covers the identical services provided by Complainant, and is owned by an organization (Word of Faith Outreach Center Church) other than Complainant. Although Respondent also states that such organization (or its founder) has not used the mark for over three years, resulting in presumptive abandonment of the mark (under 15 U.S.C. §1127), the Panel notes that Registration No. 1,138,281 is still in full force and effect (having been last renewed on February 9, 2001).
Even if the Complainant were able to demonstrate that its use of WORD OF FAITH had achieved secondary meaning, “the Panel does not see how Complainant could succeed under ¶4(a)(i) of the Policy until it deals with the existence and effects of Registration No. 1,138,281.” The only possibility for dealing with “the existence and effects” of another’s registration is to satisfy statutory requirements. The Trademark Act states that:
To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce… Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects:
(5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to … the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988 … Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved. 15 U.S.C. §1115(b).
The Complainant alleged that its common law right dated from 1979, clearly intending to take advantage of the statute. However, the Complainant’s allegation was “not corroborated by any compelling evidence of record.” The Panel continued:
Further, long use does not make a trademark. Acquired distinctiveness of what is clearly a descriptive term requires a promotion of the term in such a way that the term transcends its primary or descriptive meaning and achieves a secondary meaning in which the viewer sees the term as a trademark.
In conclusion: “Rather than being the owner of the mark WORD OF FAITH, Complainant may be an infringer of that mark unless it can establish that it had established common law rights in the mark and made continuous use of the mark from a date prior to July 29, 1980, the date of Registration No. 1,138,281.” If the Complainant is an infringer, the registrant/respondent may be vulnerable to the trademark owner for the domain name, although it depends on the content of the website.
Disputing Ownership of Domain Name; No UDRP Remedy
A complaint alleging breach of contract involving registration and use of a domain name is not automatically excluded from adjudication under the UDRP, although as a general rule business disputes are outside the scope of the Policy. However, the fact that the matrix includes contract or fiduciary issues, even tortious interference with the complainant’s rights – disrupting the business of a competitor, discussed in RUGGEDCOM, Inc. v. James Krachenfels, D2009-0130 (WIPO April 7, 2009), the May 4 and April 30 Notes – do not rise to the level of “business dispute.” A business dispute is a category of case in which other legal theories predominate over the issue of abusive registration. A case that involves an employee or agent surreptitiously registering a domain name identical or confusingly similar to its employer’s or principal’s trademark can be within the scope of the Policy, whereas a case involving an employee who registers a domain name an employer claims for itself but who has no trademark right in the name is a business dispute outside the scope of the Policy, ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, October 24, 1999, paragraph 4.1(c).
The second of the two illustrations describes SBBnet, Inc. v. Mark Rodriguez d/b/a GreenMarket Ventures, LLC., FA0902001248881 (Nat. Arb. Forum April 24, 2009). Although unnecessary, the Panel ticked off the proof in the Respondent’s favor for ¶4(a)(ii) and ¶4(a)(iii). Not only did the Complainant have no trademark right and therefore could not maintain the proceeding, but the Respondent proved that he had registered the CLEANENERGYQUOTES.COM mark with the Colorado Secretary of State Business Center. For this reason, the Complainant’s “claim to ownership of the domain name should be brought in an appropriate court.”
Incorporating Complainant’s Trademark Legitimately
A domain name is confusingly similar to a trademark when it incorporates the trademark in its entirety and adds a generic term that describes the complainant’s rather than the respondent’s business. Such additions “merely compound the confusion created by the incorporation of the Complainant’s trademark, Fairmont Hotel Management L.P. v. Puts, D2001-0431 (WIPO May 17, 2001) , in which Respondent added the words “hotel” and “resort” (<fairmonthotels.com> and <fairmont-resort.com>). The addition in Atlantic Station, LLC v. Dargan Burns III, FA0903001250592 (Nat. Arb. Forum April 26, 2009) was “condo” to form <atlantic station-condo.com>, where the Complainant’s business was real estate development and sales. “As such, the addition of the word ‘condo’ does not create a meaningful distinction,” hence the domain name is confusingly similar to the Complainant’s trademark.
Paragraph 4(a)(ii) – the arena in which the respondent counter argues its right or legitimate interest in the domain name – focuses on the classification of the trademark and respondent’s business [¶4(c)(i)] or its motivation for registering the domain name [¶4(c)(iii)]. For ¶4(c)(i), weakness of trademark coupled with proof of a bona fide offering of goods or services defeats complainant’s claim that the respondent is violating its rights by using a domain name confusingly similar to its trademark.
In Atlantic Station both parties are in real estate. The Complainant argued that the Respondent was a competitor motivated to divert and redirect Internet users to its own web site. Ordinarily, this would be dispositive in complainant’s favor except that the trademark mark is a geographic location. The Respondent “provides examples of newspaper articles that make reference to this place and ... envelopes cancelled by the US Post Office exhibiting in the address “Atlantic Station’ in the spot reserved for the city identifier.” In concluding that the Respondent had a legitimate interest in the disputed domain name the Panel stated that it was “swayed by the absence of a reasonable alternative available to Respondent to accurately reflect in a domain name his connection to the physical place known as ‘Atlantic Station’.”
The general rule is that a complainant has exclusive rights to the trademark, but not when the trademark is composed of generic elements without proof that the respondent registered the domain name to “divert and redirect Internet users away from the complainant.”
Disheartened by Interpretation of Policy
The dissent in RUGGEDCOM, Inc. v. James Krachenfels, D2009-0130 (WIPO April 7, 2009) (<ruggedrouter>) who was also in dissent in a second case with the same parties, RUGGEDCOM, Inc. v. James Krachenfels, D2009-0119 (WIPO March 31, 2009) (<ruggedswitch>) would have dismissed the complaints (as she stated more fully in <ruggedswitch>) because “[d]esign mark rights exist only in combination with the design” and since a “domain name contains no design element ... it would seem that Respondent violated no trademark rights when it registered the Domain Name.” Her dissent questions the direction of UDRP jurisprudence. Once upon a time, “before the UDRP was developed” trademark owners had it all their way. Prelapsarian,
the domain dispute policy applicable to “.com” domains gave sole and exclusive right to a domain name to the owners of trademarks, regardless of the type of mark, its jurisdiction or of any competing rights that a domain registrant might have (local rights to use, design versus text, common law mark rights, reseller, etc.). The UDRP was designed to address that inequity and to allow panelists to frame decisions on the equities in each case including recognition of local rights and privileges. It was designed to address the fairly limited situation of cybersquatting in which a knowing registrant specifically targeted a known mark owner in an attempt to extract value directly from that owner’s mark.
The dissent must mean that the direction of the jurisprudence revives the imbalance in favor of the trademark owner; it “takes us back to the beginning, which I find disheartening.” What is meant by the beginning is that the majority as with “many [other] panels will find proof of all three of the Policy‘s elements simply from the existence of a mark of any kind with arguments that any mark is by definition identical or confusing ... and that bad faith necessarily exists if there is no legitimate interest.” The blogosphere praised her honesty for expressing the reasons of her disheartenment as highly as it condemned the presiding panelist for his obtuseness.
But the WIPO Final Report in favor of an arbitral regime and the UDRP quickly thereafter implemented were intended to protect trademarks from predators and parasites taking unfair advantage of a complainant's trademark or service mark (See Paragraph 174 discussing the Paris Convention for the Protection of Industrial Property and Paragraph 175 referring to “case law which has developed in the application of national laws for the protection of trademarks and service marks and for protection against unfair competition also supports the prohibition of the predatory and parasitical practices that would be caught under the definition of abusive registration”). The goal of the WIPO Process
is not to create new rights of intellectual property, nor to accord greater protection to intellectual property in cyberspace than that which exists elsewhere. Rather, the goal is to give proper and adequate expression to the existing, multilaterally agreed standards of intellectual property protection in the context of the new, multijurisdictional and vitally important medium of the Internet and the DNS that is responsible for directing traffic on the Internet.
The WIPO Process “seeks to find procedures that will avoid the unwitting diminution or frustration of agreed policies and rules for intellectual property protection.” This is what UDRP jurisprudence is intended to accomplish.
It is undoubtedly true that UDRP jurisprudence is not a Napoleonic code. Less prescriptive than a code (indeed, less prescriptive than sibling country code policies), it is more akin to the common law in not being a static system. The jurisprudence has changed over time as the Internet has matured and predators have grown wilier. The majority in the <ruggedroughter> case concluded that the use to which the Respondent put the domain name was “neither ‘legitimate’ nor ‘fair’.” The outcome in large part was dictated by two facts: the parties were competitors and their prior legal encounters. In short, the Respondent violated ¶4(b)(iii): “[Y]ou have registered the domain name primarily for the purpose of disrupting the business of a competitor.”
Ruggedcom has trademarks for RUGGEDROUTER in Canada (and on the Supplemental Register in the U.S.) and for RUGGED SWITCH a trademark on the Principal Register in the U.S. The crux of the jurisdictional problem is that in the Canadian trademark the literal element RUGGEDROUTER followed a design which of course cannot be reproduced in a domain name. Because of the descriptiveness of the literal element, the Complainant was not able get a registration for the trademark on the Principal Register. However, having a trademark anywhere satisfies the jurisdictional requirement. In turning to the question of descriptive mark and whether the domain name was identical or confusingly similar to it, the majority noted that there were two approaches. The first approach takes the view that with obviously descriptive marks “small differences suffice to distinguish” one name or mark from another. Acceptance of this view denies that the domain name could violate the identity or confusing similarity elements of ¶4(a)(i) and if not then there can be no right to maintain the proceeding. The Complainant's recourse would be a court of law. Complaint dismissed.
The second approach takes a simpler view of comparing the domain name with the trademark. “If the Panel [were to] follow[] [the first approach] the device elements of the Canadian mark might be regarded as ‘small differences’ which, having regard to the substantially descriptive nature of the Canadian mark, are sufficient to distinguish it from the Domain Name.” If the mark and the disputed domain name “look, sound and ‘feel’ sufficiently similar that internet users looking for the complainant would be likely to arrive at a website at the disputed domain name” then the domain name is confusingly similar to the trademark.
Admittedly, assembling a record is a chore, but woe to he who does not or assembles one insufficient to carry his burden of proof. Heed should be taken or suffer the consequences. Two cases on this point are instructional, Unex Corporation v. Belize Domain Whois Serivce, FA0903001250370 (Nat. Arb. Forum April 29, 2009) and Free Bridge Auto Sales Inc. v. Larry Ross, FA0903001250951(Nat. Arb. Forum April 28, 2009). Both complainants were represented, one by an attorney and the other by a company who may or may not have had an attorney reviewing the submission.
Respondents in both cases did not submit responses to the complaint. Both complainants are trademark owners aggrieved by domain names identical or confusingly similar to their trademarks. In Unex, the Complainant submitted insufficient proof to satisfy a prima facie case. The principle applied is that a respondent’s default “does not lead to an automatic ruling for Complainant,” VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000). The Complainant evidently failed even to argue Respondent’s lack of defenses under ¶4(c)(i-iii). The Panel made no ruling on 4(a)(ii) but proceeded to the ¶4(a)(iii) analysis. Here, the Panel stated that Complainant made no allegation nor submitted any evidence “demonstrating the use or non-use of the disputed domain name.” In the absence of evidence, “the Panel cannot make a finding of bad faith on the merits of the case.” And, the record being as it is “the Panel is unable to make a finding regarding bad faith registration and use, and will therefore not make such a finding under Policy ¶4(a)(iii).” “The Complaint merely asserts a legal conclusion. Thus, the Panel has no knowledge of Respondent's use of the domain name upon which to base a decision under Policy ¶4(a)(ii) and (iii)”.
Free Bridge is only slightly different. On the thinnest of records, based on the Respondent’s default alone, the Panel held that the Complainant sustained its burden of proving that the Respondent lacked rights or legitimate interests in the disputed domain name. There was some evidence in the record that the use of the domain name was in bad faith, but no proof of bad faith registration. “It is true,” noted the Panel “that Complainant registered its trademark prior to Respondent’s registration of the Domain Name, that Respondent hails from the same state as Complainant, and that Respondent has a business in the same field.” However, the critical fact is that
Complainant has submitted no evidence beyond those assertions to support a finding that Respondent likely knew of Complainant’s mark at the time it registered the Domain Name. For example, Complainant claims that it advertised heavily using the mark, but it has not alleged when, where, or how it ran these advertisements, including whether it ran any of those advertisements prior to Respondent’s registration of the Domain Name.
The missing evidence in the Free Bridge record, at least some of it, is controlled by the Complainant. One further nail in the coffin in this particular case undermining the contention of bad faith registration is a concession the Complainant made: Respondent “may not have known at the time of the registration [of the Domain Name] that he was registering a pre-dated trademark name and violating someone else’s trademark.” Quoth the Panel: “That concession is fatal to Complainant’s claim.”
June 2009 NOTES , DATES ARE IN REVERSE ORDER
A Transferee Inherits Transferor’s Bad Faith Registration
A domain name is freely marketable, but a transferee should not conclude the transaction before undertaking some due diligence. Caveat emptor! MasterCard International is the trademark holder of PAYPASS. Even if a trademark search is not a requirement, PAYPASS comes up number one on a Google search. The Respondent (who did not appear) in MasterCard International Incorporated v. C W, D2009-0497 (WIPO June 16, 2009) is a transferee “rout[ing] users to websites offering goods or services of Complainant’s competitors.”
As the Panel notes in a footnote, “UDRP Panels generally treat acquisition in bad faith as equivalent to registration in bad faith, and ‘although the Policy requires both registration and use in bad faith, it is clear that for the purpose of the Policy ‘registration’ may include registration on acquisition by a new holder.” The consensus is that transfer = registration:
The Panel finds that Respondent itself acquired the registration with awareness of Complainant’s mark in a deliberate attempt to attract Internet users to its website for commercial gain.... The Panel concludes, therefore, that Respondent registered the domain name in bad faith for purposes of the Policy.
The transferee inherits bad faith registration; its use in bad faith is deduced (in this case) from the content of the website. Although it was not the fact in this case, registration in good faith metamorphosing to use in bad faith is also inheritable. A transferee does not inherit its predecessor’s good faith registration.
The Respondent also had another strike against it. It concealed its identity. “Panels may draw inferences about bad faith registration or use in light of the circumstances, including a respondent’s concealment of identity, a lack of conceivable good faith uses for the domain name, or failure to reply to a complaint.”
No Rights Accrue From an “Intent to Use” Application
Martha Stewart Living Omnimedia, Inc. filed an “intent to use” application to register EVERYDAY FOOD which was denied as descriptive, but acquiesced in its being registered on the Supplemental Register. Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009). Within months of the application the Respondent registered <everydayfood.com> and <everyday-food.com>. The Complainant presented a policy argument that an “intent to use” application ought to be treated as notice of its prior rights to the trademark as would a subsequent registrant for the same term in the same Class(s):
Since the Respondent is located within the U.S., he has notice of Complainant's prior rights to its EVERYDAY FOOD mark. The fact of (a) the prior pending intent to use application combined with (b) the fact that a search of the USPTO records prior to the date of the registration of the Offending Domains would have revealed Complainant's claim to rights and (c) the fact of the nature of the use of the Offending Domains to promote competing goods and services via a pay-per-click interface which makes direct reference to Complainant and its MARTHA STEWART and EVERYDAY FOOD magazine marks all support a finding of bad faith registration.
While this is undoubtedly a forceful trademark analysis that would exclude another applicant in the same Class from claiming priority it does not prevent a respondent from registering a domain name identical or confusingly similar to the requested trademark. Until a trademark registrant is successful in proving distinctiveness – establishing entitlement to be on the Principal Register – it is vulnerable to what Martha Stewart regards as an interloper stepping in front it:
Complainant alleges that this is a straightforward case that offers the Panel a stark choice between applying the plain language of the Policy or creating a safe haven for U.S. based cybersquatters to poach domain names based upon Intent to Use trademark applications....
However, in proposing a “stark choice” the Complainant mis-construes the Policy. Such a principle is not found in the UDRP. Trademarks and domain names exist on different strata, intersecting only when a complainant satisfies the jurisdictional requirement for complaint. Rather, the Complainant’s argument is essentially one based on an unenforceable moral code: a domain registrant shalt not poach from an “intent to use” application. Since the Complainant in Martha Stewart did not have a protectable right at the time the Respondent registered the domain names it could prove none of the paragraph 4(a) requirements.
Panelists may “independently visit the Internet in order to obtain additional light” on a case [InfoSpace.com, Inc. v. Hari Prakash, D2000-0076 (WIPO April 6, 2000)] and perform “limited modest factual research.” Paragraph 4.5 WIPO Overview of WIPO Panel Views on Selected UDRP Questions reads:
Consensus view: A panel may visit the internet site linked to the disputed domain name, order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.
However, it “is one thing for a panelist to view a web site to verify a parties’ assertions and quite another to embark upon an independent investigation as to what a complainant’s case may be,” Silvie Tomčcalová a.k.a. Sylvia Saint v. Juan Campos, D2006-0379 (WIPO May 5, 2006). Beyond the limited research permitted, panelists and judges alike are not permitted to make a party’s case any more than a judge in a civil action is authorized to grant relief not otherwise requested. If the Panel believes that the record is insufficient in reaching a decision it has the discretionary authority to obtain supplementary material through a Procedural Order.
In Pick ‘N Pay Retailers (Proprietary) Limited v. Dependable Internet LLC, D2009-0499 (WIPO May 28, 2009) the Panel issued a Procedural Order which the Respondent ignored and proceeded “to conduct a search of the internet archive in relation to the Domain Name.” In doing that he marshaled the evidence that was properly the Respondent's burden. Based on his research and not on the record before him he was able to find in the Respondent’s favor. Rule 10(d) of the Rules of the Policy reads: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence,” which means the evidence submitted by the parties. In Pick ‘N Pay, the Panel made the Respondent’s case which the Respondent was either unwilling or unable to make for itself and became the Respondent's advocate, thereby exceeding the Panel’s authority under the Policy.
Jurisdiction for Hijacked Domain Name
The definition of abusive registration is not so narrow as to exclude abusive conduct and practices. Unlawful hijacking through deception and thievery comes within the scope of the Policy. For obvious reasons respondents do not appear. In Bjorn Kassoe Andersen v. Direction International, D2007-0605 (WIPO June 27, 2007), the Complainant alleged without opposition that the Respondent had unlawfully hijacked the domain name. The most recent case in this class is AHI Invest GmbH v. Site Service International, Richard Sorensen, D2009-0561 (WIPO June 15, 2009). The Respondent is the registrant of a number of similar cases over the past two years all of which were transferred to the complainants. The Respondent surreptitiously arranges transfer of the domain into his name but for the nonce leaves the website active in the name of the Complainant with the obvious intent of holding it hostage when the Respondent decides to take it down.
Unless the victim checks vital statistics from time to time he would be unconscious that his property had migrated to a new registrar and registrant. “In October, 2006, without the knowledge or consent of the Complainant, a Company, named Direct Information PVT Ltd d/b/a PublicDomainRegistry.com became the Registrar and the Respondent the Registrant. Since June, 2008, a Company named Directi Internet Solutions PVT Ltd d/b/a PublicDomainRegistry.com became the Registrar.”
The Panel locates the bad faith violation as falling under paragraph 4(b)(iv) of the Policy. However, this confuses one theory with another. Identity theft and hijacking domain names without changing the content of the website and by all appearances being the complainant's Internet presence more comfortably fits into paragraph 4(b) under the catchall phrase “in particular but without limitation.” It is not commercial gain in the 4(b)(iv) sense; but extortion.
It is not targeting the same consumers that is prohibited, but deceiving them into believing that the complainant is the sponsor of the goods or services offered on the website. There was no issue in PLENTYOFFISH MEDIA, INC. v. Mr. Antony Tran/home, anh tran, D2009-0476 (WIPO June 12, 2009) that the Respondent lacked knowledge of the Complainant. The parties had already been involved in a withdrawn claim involving a <plentyoffishdatingnow.com> which was withdrawn following a settlement with the Respondent resulting in the transfer of that domain name. The enterprising Respondent then registered <freedatingfish.com>, the disputed domain name in the current proceeding which the Complainant contends is confusingly similar to its trademark PLENTY OF FISH.
The issue is whether <freedatingfish.com> is confusingly similar to the Complainant’s trademark or similar but not confusingly so. The common element in both domain names is “fish” which has come to mean consumers looking for dates. The Complainant argued that the association of “fish” with “free dating” naturally brings to consumers’ minds its trademark. Ergo, the Respondent was deceiving consumers by trolling in off limits waters.
Judging domain names for similarity that may be confusing is generally straightforward. On a side to side comparison would the ordinary Internet user confuse one with the other? The Panel in Plentyof Fish identified two ways of analyzing the issue. “Some [Panels] have limited the test to determining the degree of resemblance of the domain name and mark at issue as to ‘sight, sound, and meaning’ [the ‘narrow approach’]. Others have considered the degree of resemblance along with factors such as the distinctiveness of the mark, how well-known the mark is, how long the mark has been used, and the nature of the goods and services with which the mark is used [the ‘broad approach’].”
Taking these approaches into account,
the Panel finds that the disputed domain name is not confusingly similar to the Complainant’s mark. On a side-by-side visual comparison there is little similarity. The only similarity is the use of the generic word ‘fish’. But the use of that word is combined, in each case, with entirely different words. In the Complainant’s mark it is preceded by the words “plenty of”. In the disputed domain name it is preceded by the words “free dating”. The use of those different words also mean that there is little aural similarity.
It is undoubtedly true that both parties are competing for the same consumers, but the fact that they use different cliches to net fishes looking for dates does not establish the kind of similarity that is confusing under the Policy. “The Complainant argues that ‘free dating’ is a “well known consumer impression” of its services; and that it “is very well known as the ‘free dating Web site Plenty of Fish’.” Even if consumer impression were measurable, “the Complainant provides little evidence to support these statements.” All these hackneyed expressions and associations are part of the ambiance of dating, not exclusively offered by any one of many other services.
Competing Rights to Domain Name
Arguing that names of parties in different businesses not in competition with each other ought not be considered confusingly similar is not a consideration under paragraph 4(a)(i) of the Policy. “While this analysis may be relevant to traditional arguments for trademark infringement, the analysis is not relevant to the concept of confusing similarity,” Vicini S.P.A. v. You Know, No One, D2009-0285 (WIPO May 13, 2009) (<vicini.com>). It becomes an issue under paragraph 4(c) of the Policy.
However, where there are competing rights the first to register is entitled to the domain name regardless whether it is identical or confusingly similar to a trademark. The competing right in Vicini is a patronymic used in connection with a family business in the Dominican Republic. Traditionally, there have been three types of competing rights. Businesses each entitled to the domain name and commonly known by it. In these cases, it makes no difference that the respondent’s right accrues from an unregistered trademark. The second type, respondents with trademarks (not necessarily used in the name of their business) registered in a different country. The third type is registration of a personal name (sometimes a nickname) for a website personal in content. Vicini combines business and personal name. In either case, Panels insist that the registration be in good faith under the subparagraphs of 4(c) of the Policy. Rejected, for example, is the Respondent’s explanation in Tower Laboratories Ltd. v. Eric Seltzer, FA0609000791325 (Nat. Arb. Forum October 16, 2007). He registered <bromoseltzer.com> allegedly in memory of his father’s deceased dog, Bromo. The Panel in held that:
[It] does not follow that registration of a nickname that is based squarely on a widely known and perhaps famous trademark vitiates against infringement when the mark is reused in another context by the Respondent. Notably the ultimate reason that Respondent registered the domain name was because of its commercial notoriety and that it contained Respondent’s surname.
Respondents who successfully rebut the complainant's prima facie case have a legal right to the domain name, not simply a legitimate interest. The distinction is an important marker of value. A respondent who is found to have a legitimate interest has an asset of lesser value.
Topical Notes (Proving Rights or Legitimate Interests)
Paragraph 4(c) instructs the respondent that
Any of the following circumstances [that is, the circumstances set forth in subparagraphs i-iii], in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii).”
In both in 4(a)(ii) and 4(c) the terms “rights” and “legitimate interests” are in the disjunctive and although they are typically treated as though they were interchangeable they in fact denote different claims and have different privileges. Words chosen with care “have to be given some work to do or they serve no purpose,” International E-Z UP, Inc. v. PNH Enterprises, Inc., FA0609000808341 (Nat. Arb. Forum November 15, 2006). Colloquially, a respondent who has a legitimate interest can be said to have a right to the disputed domain name, but it is a different quality of right than that possessed by a respondent with a legal right. A respondent's trademark in another country that predates the complainant's trademark has a legal right; “[o]ncethis threshold is traversed, it does not matter whether Respondent parked the Disputed Domain Name or began using the Disputed Domain Name only after Complainant began a worldwide marketing campaign,” ZPower, Inc. (formerly known as Zinc Matrix Power, Inc.) v. Kissan Battery House c/o Mr. Sachin, FA0903001254829 (Nat. Arb. Forum June 1, 2009).
It is true that the complainant must prove that the respondent has neither and respondent that he has the one or the other. However, most cases in which the respondent appears, argues and prevails involve proof of legitimate interest. Under paragraph 4(c) the “without limitation” catchall also pulls in such claims as nominative fair use, a commercial counterpart to paragraph 4(c)(iii) but resting on a different theory. A divided Panel in Sarasota Association of Realtors, Inc. v. Private Stuff, FA0806001213084 (Nat. Arb. Forum August 27, 2008) held that the doctrine of nominative fair use applies only when three requirements are met:
First, the product or services in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service, and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. [Citing New Kids on the Block v. New America Pub. Inc., 971 F.2d 302, 308 (9th Cir. 1992)].
11/20/08 – Reseller’s Legitimate Interest in Domain Name.
11/25/08 – Expanding the Scope (Opening up the Space) of the Policy.
2/10/09 – Coming to Terms with Nominative Fair Use.
2/20/09 – Legitimate Use of Another’s Trademark.
6/5/09 – Competing Rights.
Topical Notes for
4(a)(i); 4(a)(ii); 4(a)(iii).
4(b)(i); 4(b)(ii); 4(b)(iii); 4(b)(iv)
The basic principles for refiling a complaint were laid out in Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO November 10, 2000) and Creo Products, Inc. v. Website In Development, D2000-1490 (WIPO January 19, 2001). The Panel in Creo held that 1) the burden of establishing grounds for entertaining a Refiled Complaint rests on the complainant; 2) that burden is “high”; and 3) the complainant should clearly identify the grounds for entertaining the Refiled Complaint. The complainant has a prelusive burden to show either new acts occurring since the first decision or fresh evidence not available prior to the first decision. Application of res judicata does not apply when the factual circumstances change. Abt Electronics, Inc. v. Gregory Ricks, FA0701000904239 (Nat. Arb. Forum March 27, 2007). See, also the analysis of res judicata under the ACPA in Storey v. Cello Holdings, LLC., 347 F.3d 370, 385-387 (2nd Cir. 2003) (the district court erred by treating a registrant’s right to use a domain name as akin to a property interest, fixed by events that occurred at a specific point in the past, and shielded from subsequent attack by res judicata”).
The Complainant in GetMore A/S v. Sooyong Kim, D2009-0357 (WIPO June 2, 2009) denominated its complaint “refiled” even though the current Respondent did not have the same name as the prior one. As the Panel pointed out there is precedent where the current Respondent is the earlier respondent’s alter ego or their relationship is such that the two are essentially the same. Whether this was so in GetMore was unclear, but since the Complainant treated the case as a Refiled Complaint “the Panel will do the same” and he poked around in the record for the “new” evidence.
The alleged new evidence was of several types but none that could not have been found prior to the earlier complaint. One piece, however, is interesting because it involves Respondent’s transfer of the registration to a Korean-Language Registrar. “This is a new fact that did not exist as of the date of the Prior Complaint.” However, “Complainant has failed to meet its burden of showing that this new fact is important evidence that is likely to change the result.” In fact, the proffer is a canard because the Respondent transferred the domain name “after the Prior Decision denying transfer was issued, and before the Refiled Complaint was filed” (emphasis in original). By the way, the domain name is <getmore.com>.
Trademarks composed of acronyms, initials and abbreviations that more than one business uses to identify itself are hard to protect. Except for the famous, there has to be more than coincidence of letters or numbers. The league that includes IBM, VW and HP is relatively small and symbols on the stock exchange are not necessarily interchangeable as trademarks. BioDelivery Sciences International, Inc. v. HLK Enterprises, Inc. c/o Domain Admin, FA0804001175189 (Nat. Arb. Forum May 19, 2008) (<bdsi>). The fact that the company was publicly traded on the NASDAQ exchange with those initials was not a relevant factor. The registration of <lh.com> was ordered transferred, but the complaint for <lv.com> was denied. Even with proof that the respondent lacks rights or legitimate interests in the domain name, the complainant must still show that the respondent had actual knowledge of the complainant’s trademark and that its registration of the domain name was intended to piggy back on its market place recognition.
Detectable violation depends on the composition of the domain name, the use to which the respondent puts it, the coincidence of content and the locations of the parties. The Respondent registrant of <lv.com> had previously used the domain for information on Los Vegas, thereby undermining the Complainant’s argument that the domain name was registered in bad faith to take advantage of its trademark. The proof difficulty can be seen in two cases, one of which the Complainant was successful and the other not.
To take the “not” first, Reckitt Benckiser Plc v. Eunsook Wi, D2009-0239 (WIPO May 20, 2009), the Complainant’s trademark consisted of two letters “r” and “b” as in <rb.net>. The Panel found that it had a protectable unregistered right in RB based on its commercial activities and its symbol on the FTSE 100. However, the parties reside on opposite sides of the world and the Complainant offered no evidence that it was known by the acronym when the Respondent registered the domain name. Its FTSE symbol although apparently effective before the registration of the domain name did not become effective until many years later. Timing is clearly a significant factor as is geographical location.
The second case, Smith Travel Research, Inc. v. Victor An, FA0904001259999 (Nat. Arb. Forum June 15, 2009) involved a three letter acronym “str” which is a U.S. registration on the Principle Register. The Respondent defending his legitimate interest pointed out that the acronym was “a very popular abbreviation and has been used by many businesses.” In fact, the USPTO database lists 95 alive and dead registrations that include “str”, but the content of the Respondent’s website trafficked in the same business as the Complainant thus offering a clue to the Respondent’s intention in registering those letters. Acronym and initials can be used by anyone but once the evidence shows that the domain name targets a particular complainant it becomes suspect. “Despite Respondent’s protestations to the contrary ... the Complainant and the Respondent both compete in the travel business.” Because there was no other explanation the Panel concluded that the “Respondent was clearly trying to associate its offerings with the goodwill of Complainant’s well-known mark.” Why would the Respondent register just those three letters if not for that reason?
The headline is prompted by a lengthy well reasoned dissent in favor of reverse domain name hijacking in Shoe Land Group LLC v. Development Services c/o Telepathy Inc., FA0904001255365 (Nat. Arb. Forum June 9, 2009). The majority held that because the Complainant proved it had a trademark albeit acquired after the registration of the domain name– that is, satisfying one element of the Policy – it escaped a finding that it was using the UDRP abusively. In my Note of June 2 I reported on another Panel who stopped short of finding RDNH although he “would not have hesitated” had the Complainant been represented by counsel. These conclusions suggest an amorphous standard.
Should a complainant who succeeds on the first element of the Policy be let off even though it has no case? What if the complainant also proves that the respondent lacks rights or legitimate interests but its trademark dates many years after the registration of the domain name? The number of years intervening between the registration and the trademark and the geographic remoteness or nearness of the parties should make a difference in the outcome. The dissent in Shoe Land was in no doubt that the complainant’s conduct was abusive. “Obviously, a panel should not lightly make a finding of Reverse Domain Name Hijacking against a complainant, but nor should it shy away from making such a finding in a clear case.” He concludes that the “present case is not a borderline but a clear case and the finding therefore should be made.” The clear case was based on, among other things, the falseness of the allegations: the Complainant “then alleged that the Respondent must have registered the domain name in bad faith, ‘purposely’ to divert ‘Internet users searching for Complainant’s services’, an allegation that could not have been true [since] ... the domain name was registered 7 years before the registered trademark was applied for” etc.
The majority saw no bad faith in bringing the complaint without explaining why the number of years intervening and the remoteness of the Complainant from the Respondent could possibly be justified on the theory that the “complainant did not know and should not have known that one of the three elements in the Policy ... was absent.”
Pretending To Be Who One Isn’t
Some misrepresentations on the Internet are accepted as protected speech when, for example, as part and parcel of criticism the respondent appropriates the complainant’s trademark for its domain name, sometimes but not always with an additional term of opprobrium. There is a split view on the propriety of initial deception that draws Internet users’ interest to websites resolving from domain names identical or confusingly similar to a complainants’ trademarks. In Monsanto Company v. Decepticons, FA0110000101536 (Nat. Arb. Forum December 18, 2001) the Respondent posed as the Complainant within the website and in the Complanant's voice made critical statements about its products, such as “Monsanto cares about ‘your’ health and ‘your’ cancer, and we hear your concerns. That’s why we’ve gotten rid of our EqualTM and NutrasweetTM divisions—these products have been thought to be carcinogens for several years, even by our own scientists.” In these kinds of cases the pretense is motivated by delivering a message or taking a position that the complainant would not itself take or say. A similar deception is at work with the Clinton domain names discussed in the Note for June 9th by a respondent who called himself “Web of Deception.”
There are also deceptions of the phishing variety, National Westminster Bank plc v. Bryant Smith, FA0806001209998 (WIPO July 28, 2008) (<natwestbusinessbanking.com>, the ubiquitous “Mr. Smith” did not appear but his “website resolving from the disputed domain name attempts to imitate Complainant’s official website in order to obtain Internet users confidential financial information.”
Then there are deceptions for which the purpose is not in plain view but it is a variety of identity theft. The Complainant in Jim Williams v. Louis Smith, FA0904001257389 (Nat. Arb. Forum May 28, 2009) provides hurricane information on his website <hurricancity.com>. The Respondent registered <hurricancity.net>, <hurricancity.org> and <hurricancity.info> and copied content from the Complainant’s website. The pretense in this case is not to express a point of view critical of the Complainant, but “to pass itself off as Complainant” no doubt for some future skullduggery. Although the Respondent – another member of the ubiquitous “Mr. Smith” clan – did not respond substantively he e-mailed an objection to the process without otherwise disclosing his motivation for the registrations.
Registering Personal and Surnames
Personal and surnames are generic terms. The question is not whether a respondent has rights in the domain name but how it is using it. F. Hoffman-La Roche AG v. Domain Admin Tucows.com, D-2006-1488 (WIPO February 27, 2007). A respondent who “builds its domain around a surname that has acquired the protection of trademark status, and uses that domain merely to operate a click-through advertising scheme” with links to the complainant’s competitors will not likely be found to have any right or legitimate interest in the domain name, Cargill, Incorporated v. RN WebReg c/o Rare Names, Inc., FA0904001260307 (Nat. Arb. Forum June 12, 2009). The Panels in both Hoffman-La Roche and Cargill cite vanity e-mail services as an example of legitimate use.
It is also legitimate to register a domain name if that is the name by which the respondent is commonly known. In Mattel, Inc. v. Gopi Mattel, FA0411000372847 (Nat. Arb. Forum February 15, 2005) (<mattel.org>) the Complainant argued that “Mattel is not a proper surname and was likely adopted by Respondent for the purpose of asserting rights in the domain name.” However, the Panel held that it was not for “Complainant to deem what is a ‘proper’ surname simply because it owns a trademark on the same name in conjunction with the sale of certain wares.” A similar conclusion was reached in Ken’s Foods Inc. v. kens.com, D2005-0721 (WIPO September 11, 2005) (<kens.com>):
Notwithstanding the Complainant’s contention that the KEN’S mark is distinctive in relation to the particular category of goods and services for which the mark is used, it is nonetheless a personal name – “Ken” – which is also the Respondent’s given name.
In Harrods Limited v. HDU Inc., D2004-0093(WIPO April 27, 2004) the Respondent demonstrated that she had been in the solon business under her surname for ten years prior to registering the domain name. A different result, however, when the respondent although properly surnamed diverts the domain name to another website, Harrods Limited v. Harrod Exclusive Realty Service, D2006-1061 (WIPO November 6, 2006).
In all these cases use or use coupled with personal history determines legitimacy. The Cargill Respondent argued that it had a legitimate interest in <cargills.com> because the “domain name is comprised of no more than the plural or possessive form of a common surname widely used by numerous parties.” However, the question in assessing bad faith is “whether the formation of a plural or possessive form of the mark” which under some circumstances could be legitimate becomes illegitimate when its use creates a likelihood of confusion with the Complainant's trademark. Applying the principle – it is “the use to which the name is put” – to the facts in Cargill revealed that the Respondent did not operate the domain name as a vanity e-mail service but used it “to display third-party click-through links, including advertisements for Complainant’s business competitors.”
New Comment, LexisNexis Trademark Blog:
Geographic Remoteness and Nearness in Proving Knowledge
Although trademark holders are not limited territorially in maintaining a proceeding under the UDRP – a “complainant’s showing of secondary meaning within a limited geographical area will be sufficient to invoke all of the rights and protections of the Policy,” Party Maniacs, Inc. v. Michael Kuklinski, FA0904001258597 (Nat. Arb. Forum June 2, 2009) – the location of the parties’ respective home residences may influence the Panel’s decision in answering the question of respondent’s knowledge. Geographic remoteness may support a respondent’s allegation that....
Disingenuousness Destroys Credibility and Supports Bad Faith
Credibility is most generally judged – and a case won or lost – by appearance, dress, speech and presentation. It is no less a factor for paper submissions, although we use different words to express the elements of appearance: selection of material rather than dress, writing rather than speech, and disclosure and silence rather than presentation. AVON is an iconic trademark; it is also a generic term. The respondent in Avon Products, Inc. v. Mary Ultes, D2009-0471 (WIPO June 3, 2009) disingenuously denies any infringement of the Complainant’s trademark by spinning out a fantasy on the word “avon” in its generic sense:
The word “Avon” has meanings unrelated to cosmetics and beauty, including for example the well-known river in England, and it is a relatively common name for cities and towns in the United States (e.g., Avon, Colorado). The word also carries a Shakespearean connotation: the English town Stratford-upon-Avon is widely known as the birthplace of William Shakespeare, often referred to as the “bard of Avon.” Respondent’s purpose for using the disputed domain name is to promote her writings and poetry.
The final sentence in the paragraph is a gem:
She deliberately chose the word “Avon” and the original “Avon L.T.D.” registration name (an acronym for “let them drink,” which Respondent contends is a reference to the River Avon) for its Shakespearean associations.
But take away the veil of fantasy the record contains no support for the Respondent’s use of “avon” in its generic sense. In fact the domain name, <startavon.com> is tied to AVON through the Respondent’s daughter’s association with the Complainant as an “independent sales representative.” Anything that the Respondent has to say that departs from the undisputed facts undercuts credibility. In response to the cease and desist letter the Respondent “refused to transfer, asserting her belief that her ownership of the disputed domain name was lawful.... [She, however] also invited Complainant to make an offer to purchase the disputed domain name.”
The invitation to make an offer violates paragraph 4(b)(i) of the Policy. Respondent also acknowledged that the website redirected web traffic to the Complainant’s recruitment web site, potentially benefitting the daughter, a violation of paragraph 4(b)(iv). Post hoc suggestion to use the website for a noncommecial purpose “does not proivde a defense under the Policy.”
One can for legitimate reasons call oneself (almost) anything. Archibald Leach called himself Cary Grant. Victoria Woo (also in the film industry but operating on a less elevated and more exposed level) calls herself “kianna dior”. The problem is that DIOR is a famous trademark and CHRISTIAN DIOR COUTURE is not amused that “Kianna Dior Productions” which is in the business of producing adult films advertises Ms. Woo’s work on <kiannadior.com>. Ms. Woo’s counter argument in CHRISTIAN DIOR COUTURE v. Kianna Dior Productions, D2009-0353 (WIPO May 24, 2009) is that she “ (as an individual, business, or other organization) has been commonly known by the domain name.” In this particular case “the Panel has applied the Policy to the facts, and that includes paragraph 4(c)(ii).” Ms. Woo succeeds in keeping her website because “Kianna Dior” is her stage name (since 2001 and operating the website since 2002). Other successful stage names mimicking a brand include the Respondent in Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO October 16, 2003) (<lexusmichaels.com>, although not resolving to an adult site. If Christian Dior has a remedy it is not under the UDRP. Kianna Dior illustrates the limits of a complainant’s right when it conflicts with a respondent’s legitimate interests under paragraph 4(c)(ii) of the Policy.
Attention is called to Kianna Dior Productions because the Panel distinguishes it from two other Dior cases in which the Complainant successfully proved abusive registration, Christian Dior Couture v. Paul Farley, D2008-0008 (WIPO February 8, 2008) (<annadior.com>) and Christian Dior Couture & Chloé v. Konstantinos Zournas, D2008-1440 (WIPO December 22, 2008) (<chloedior.com>). Farley argues that he is an admirer of “Anna Dior” – she “offers bondage, discipline and sado-masochism services ... to customers in the San Francisco Bay and Washington D.C. areas of the United States – but she is not he and it is not her domain name or web site. In fact there is a question as to whether “Anna Dior” or “Ms. Anna” (as Farley styles her) is not invented to direct Internet users to adult sites.
The other Respondent Zournas admits in his answer that “he has no greater right or legitimate interest in the name ‘Chloe Dior’ [an alleged stage name] than the Respondent himself.” He claimed to have registered the domain name to operate a fan website but Chloe Dior makes no appearance on the website. Rather, the links go to “unrelated adult content.” Adult websites are not per se illegitimate and neither is redirecting Internet users to other sites from the disputed domain name. The “essence of bad faith in cases such as this lies in the capacity of the confusingly similar domain name to tarnish the relevant mark” (Farley, 2008-0008). “There is no suggestion anywhere in the evidence that the word ‘Dior’ would have meaning to the great majority of Internet users, other than as a reference to the Complainant’s DIOR mark.” It has to be clear that the trademark is targeted. Anna by herself is less sought for alone than adding “Dior.” Chloe imitates another trademark but is also enhanced as a distination by adding “Dior.”
Self Advertising: Mr. Web of Deception
A complainant can protect his unregistered personal name under the UDRP if the name is recognized as the source of goods or services. In just the past few months a number if celebrities have been successful complainants. Politicians and those running for public office eminent though they may be in civic life or in business are not producers of goods or providers of services and cannot look to the UDRP to capture disputed domain names, although they may qualify for standing as authors. Some pseudonymous person who calls himself “Web of Deception” (hereinafter referred to as “Mr. Web of Deception” real name undisclosed) registered a number of domain names containing in various combinations the name of President Clinton.
The Panel in William J. Clinton and The William J. Clinton Presidential Foundation v. Web of Deception, FA0904001256123 (Nat. Arb. Forum June 1, 2009) states that he “[r]eluctantly ... concludes that President Clinton has established a common law mark in his name” and reveals a skeleton in his closet which is that he “is partially responsible for the problems created by allowing common law marks in personal names, having been the Panelist that wrote Mick Jagger v. Denny Hammerton, FA7000095261 (Nat. Arb. Forum September 11, 2000)].” The Panel gives himself away with the adverb. By September 2000 Panels had already construed the Policy to include unregistered trademarks and the author of Mick Jagger concurred whatever his second thoughts in 2009 may be.
Nevertheless the Clinton Panel finds that Complainant does have standing and that the Respondent lacks rights or legitimate interests in the disputed domain name. That leaves the question of bad faith which the Panel answered by stating that the “Respondent’s conduct in registering, acquiring and utilizing these domain names is simply not within the UDRP definition of bad faith.” He does not give us readers the benefit of his reasoning as to why the registration is “not within the UDRP definition of bad faith.”
Whether or not President Clinton made his case, the Panel reached his destination without telling us how he got there. A decision without reasoning is a useless exercise. Mr. Web of Deception registered the domain names and directed them to an official website of the Republican party. He is either a tease, has some unrevealed parodic intent or by registering the names he receives an undisclosed benefit. It is the paradox of the known liar who claims to be telling the truth. Paragraph 4(b) of the Policy gives four examples of bad faith. They do not purport to cover the universe of bad faith conduct as the Clinton Panel appears to suggest; they “are no more than examples.” The Panel in Fox News Network, L.L.C. v. Kenneth A. Young, D2003-0407 (WIPO July 17, 2003) in construing what is meant by “examples” stated
[i]t does not matter that the facts in this case may not fall within any of the circumstances described at paragraph 4(b) of the Policy. Those circumstances are no more than examples of bad faith registration and use, and do not in any way limit the ability of panels to find that circumstances other than those described at paragraph 4(b) can amount to bad faith registration and use.” (Emphasis in original.)
The question is, Why did Mr. Web of Deception register the domain name unless there was some benefit to someone, perhaps himself even if not in money terms? It would “probably [be] ... drawing too long a bow to conclude, within the meaning of sub-paragraph [4(b)] (iv), that the Respondent was trying to attract users to his site for ‘commercial gain’,” Asset Loan Co. Pty Ltd v. Gregory Rogers, D2006-0300 (WIPO May 2, 2006). However, not all “gain” is “commercial” in a strict sense, but a benefit still comes within the prohibition of 4(b)(iv) of the Policy. Mr. Web of Deception self-servingly stated that “he registered domain names of famous persons in part to make a point concerning the ease of registration of such domain names. He further notes that he has never sold a politician’s domain name. He also states that he has worked with Senator Hatch and others to promote the idea that some domain names deserve protection under the federal statutes, including the names of famous places and politicians.” Bully for Mr. Web of Deception! In Asset Loan the Panel concluded (by inference) that the Respondent’s purpose was “to leverage a settlement of the litigation.” It would have been useful (whatever the Panel's bias) to have the benefit of the Panel’s legal reasoning in Clinton as to why directing a domain name to another site in competition with the Complainant’s political or philosophical world view is not an abusive registration when explicit in the Respondent’s cognomen is “deception” and implicit benefits very likely to be enjoyed for registering the domain names despite his pious and self-righteous denial.
Anti-Dissection Principle Applied to Domain Names
“Party” and “maniacs” are both dictionary words; generic terms separately but distinctive together. The Complainant in Party Maniacs, Inc. v. Michael Kuklinski, FA0904001258597 (Nat. Arb. Forum June 2, 2009) owned a common law trademark in PARTY MANIACS. The Respondent, a former employee claimed to have found other companies using PARTY MANIACS and a dictionary that carried a definition of the combined term. He also argued that because he “has over 10,000 customers nationwide and even outside the country, whereas Complainant provides services which are limited both in geographic scope and in the number of services offered” he had a legitimate interest in the domain name.
On the issue of generic terms, the Panel held that “even if the component words of a mark or phrase may be generic or common, in combination, they may still form a protectable mark,” citing David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”) The “alleged dictionary definition which Respondent claims to have found for “party maniac” is actually the definition for ‘party animal.’ ‘Party maniac’ is not in the dictionary cited, further indicating that the combination of the component words is uncommon and not generic.”
The argument that a respondent can trump a trademark holder on the theory that he has a larger market has no merit. Gettysburg Flag Works, Inc. v. Precision Marketing Solutions, Inc. and Jeffrey Reynolds, FA0804001179369 (Nat. Arb. Forum June 10, 2008) (U.S. parties) (<gettysbergflags.com>):
[Although the] Respondent may have a larger geographic market than Complainant ... the geographic scope of the parties’ respective markets are in fact defined by the Internet, which is by its very nature worldwide, and as such, the scope of the respective geographic markets for purposes of the Policy are not different.
The Panel’s perspective in Party Maniacs is that “the Policy makes no distinction between widespread and localized trademark rights, and a complainant’s showing of secondary meaning within a limited geographical area will be sufficient to invoke all of the rights and protections of the Policy.” Bad faith is posited on facts undisputed by the Respondent, that he was a former employee in the same niche business as the Complainant and in the same geographic area. The Panel inferred that the Respondent registered the domain name intentionally to disrupt a competitor’s business by diverting Internet users looking for PARTY MANIACS to the Respondent's company that offered similar services.
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent lacks rights or legitimate interests in the disputed domain name. The terms “rights” and “legitimate interests” are not interchangeable. The “words have to be given some work to do or they serve no purpose,” International E-Z UP, Inc. v. PNH Enterprises, Inc., FA0609000808341 (Nat. Arb. Forum November 15, 2006). “Rights” means a legal right to a name which is the dominant feature of the disputed domain name. In contrast a legitimate interest is an interest acquired over time that trumps the right of a complaining trademark holder. Disputing over <ainet.com> for example, the parties in American Information Corporation d/b/a American Information Network v. American Infometrics, Inc., FA0105000097339 (Nat. Arb. Forum July 19, 2001) both had a right to AINET or AiNET as trademarks. The Respondent proved that it was the senior, albeit unregistered trademark holder. In Kelly v. Qsoft Consulting Ltd., D2003-0221 (WIPO April 30, 2003) both parties had “homonymous trademark rights to the GAYDAR mark.”
As it is irrelevant in considering the jurisdiction of a complainant’s rights in relation to the location of the respondent so it is of a respondent’s rights. A trademark granted to a respondent in a different country can only be disregarded if there is evidence that the registration was fabricated to circumvent the Policy. For example, the Respondent in Madonna. In Ciccone, p/k/a Madonna v. Parisi and “Madonna.com,” D2000-0847 (WIPO Oct. 12, 2000) had the same nationality as the complainant, he was not located in Tunisia (the country where he obtained the trademark registration), and he admitted that he had obtained the trademark registration to protect his interests in the domain name.
However, the registration cannot be disregarded if the evidence favors the respondent, as in ZPower, Inc. (formerly known as Zinc Matrix Power, Inc.) v. Kissan Battery House c/o Mr. Sachin, FA0903001254829 (Nat. Arb. Forum June 1, 2009). No abuse can be found where the respondent has registered its “own trademark, duly registered in one county, in a domain name, even if doing so results in a domain name that is identical or confusingly similar to another entity’s trademark that has also been duly registered, but in an other country.” Similarly, in Angels Baseball, L.P. v. Lee Dongyeon, FA 925418 (Nat. Arb. Forum May 14, 2007) (<angels.com>) the Panel found that the “Respondent obtained the [trademark] registration before he received any notice of the dispute ... [and] without any opposition from Complainant [who had trademark registrations in South Korea]”.
The Complainant in ZPower argued that the disputed domain name created a likelihood of confusion as to sponsorship and affiliation and that the website was dormant for a period of time. However, a finding that the respondent has rights or legitimate interests in the domain name moots these arguments. “Once this threshold is traversed, it does not matter whether Respondent parked the Disputed Domain Name or began using the Disputed Domain Name only after Complainant began a worldwide marketing campaign.”
Uniform Rapid Suspension System
ICANN's Implementation Recommendation Team (IRT) has recommended a new proceeding to filter abusive registrations to be known as the Uniform Rapid Suspension System (URS). The URS would be “mandatory for all new generic Top Level Domain[s] (gTLDs)[] implemented through the new gTLD registry agreement, which would in turn bind registrars supplying new gTlds to the marketplace.” It “is intended to supplement and not replace the UDRP” and “designed to provide a faster means to stop the operation of an abusive site.” The Report is available at http://icann.org/en/topics/new-gtlds/irt-final-report-trademark-protection-29may09-en.pdf.
Implementing a new remedial tier separate from the UDRP is necessary (according to the IRT) because
Many brand owners face thousands of infringing websites per year. Often these websites monetize off the value and goodwill of a brand, distribute counterfeit goods, malware and other malicious software, phishing attempts, and adult content. Cease and desist letter often go unanswered and brand owners are forced to spend large amounts of money drafting and filing UDRP complaints.
The contemplated procedure calls for freezing the disputed domain name and suspending the registration rather than cancelling or transfering it to the complainant. The UDS would only “address cases of abusive use of trademarks where there is no genuine contestable issue as to the infringing or abusive use.” The standard of proof warranting suspension will be “clear and convincing” rather than preponderance of the evidence as it is for the UDRP. Where there is any genuine contestable issue the complaint will be denied without prejudice to other avenues of redress, that is the UDRP or court proceeding.
The IRT gives the following example of what is and is not a genuine contestable issue: “[I]f the trademark in question is BRANDXYZ for use in connection with computers and the domain name in question is brandxyz.[gtld] and is used in connection with an abusive pay-per-click site, the site would be frozen. If the domain name is brandxyzcomputers.[gtld] and the record shows that it is a bona fide retailer who legitimately sells BRANDXYZ computers, the URS complaint would be denied.”
There are (as there are for the UDRP) procedural safeguards. The IRT also recommends an appeal procedure together with a procedure for vacating the suspension upon proof of right or legitimate interest in the domain name (applying paragraph 4(c)(i-iii) factors).
Lacks Rights or Legitimate Interests; But No Bad Faith
Lacking rights or legitimate interests in a disputed domain name is not determinative that a respondent registered or is using the domain name in bad faith. It would be a fundamental misunderstanding to conflate lack of rights or legitimate interests with bad faith. “Bad faith is not proven by showing that Respondent lacks any rights to or legitimate interests in the Domain Name,” Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000), although lacking either may be a factor in finding bad faith. The facts will often be common to both requirements,” FabJob Inc. v. Compana LLC, D2006-0610 (WIPO August 16, 2006). The Policy “separates the requirements in Paragraph 4(a) into three distinct elements, and provides separate examples (Paragraphs 4(b) and 4(c)) of how to satisfy the second and third factors,” Document Technologies.
The Respondent in EURO DATA GmbH & Co. KG v. Excel Signs, D2009-0465 (WIPO May 5, 2009) (<eurodata.com>) “did not show any of the circumstances mentioned in paragraph 4(c) of the Policy, but rather claimed that it is not illegal to offer a domain name for sale or to connect the Domain Name to a commercial parking site.” These are legitimate business models “but [they] do not create a right for the Respondent in the Domain Name, nor do they explain why the Respondent would have a legitimate interest in the Domain Name as a result thereof.” A domain name composed of generic terms “euro” plus “data” “being widely used and hardly distinctive does not per se create a right or legitimate interest of the Respondent either.”
However, the question of bad faith hinges on other factors, foremost that in registering the domain name the Respondent had knowledge of the Complainant and intended “to profit from or harm [its] trademarks.” The Complainant argued that offering the domain name for sale was determinative. The Panel noted that while it
appreciates that offering a domain name for sale to the general public may in some cases constitute proof of bad faith, [it] generally only [applies] if the Complaint shows some form of additional “wrongdoing” or mala fide intent on the part of Respondent, such as knowledge of the trademarks of the Complainant, or evidence of the Respondent habitually selling domain names which incorporate third parties’ trademarks. The Respondent does not appear to have had findings of abusive registration practices made against it in previous WIPO UDRP decisions.
The only response to “the Respondent should have known” is How? There is no short cut to proving a contention:
The Complainant ... failed to show how exactly the Respondent should have known, in view of the Respondent’s claim that the term “eurodata” is not very distinctive, fanciful or arbitrary as such, is widely used by many others than Complainant and that the Respondent is unfamiliar with the Complainant and its trademarks.
There also was no tell-tale linking to competitors to support the Complainant’s supposition of bad faith registration or use. It must demonstrate “how” with proof not argument, otherwise it fails to sustain its claim.
Less than Reverse Domain Name Hijacking, But Abuse of the Administrative Proceeding
Against a complainant who brings a complaint in bad faith the only penalty in a panelist’s armory is to find that the complainant’s conduct “constitutes an abuse of the administrative proceeding,” Rule 15(e) of the Rules of the Policy. The Rule gives two examples of sanctionable abuse, “an attempt at Reverse Domain Name Hijacking” (RDNH) and “brought primarily to harass the domain-name holder.” The full text reads:
[I]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The two examples, related but different, are generally merged into a finding of RDNH, although there is no reason why they should be. Rule 1 of the Rules of the Policy defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel in LaFrance Corp. v. David Zhang, D2009-0415 (WIPO May 15, 2009) took into account that the Complainant appeared pro se and found abuse of the administrative proceeding for bringing a complaint “primarily to harass the domain-name holder.” Not only were the “Complainant’s contentions under paragraphs 4(a)(ii) and 4(a)(iii) ... woefully inadequate” it “provides no evidence of cybersquatting, nor of Respondent’s having selected the disputed domain name to take advantage of Complainant’s mark.” Ordinarily this “should suffice for RDNH.” The Panel stated that it “would not have hesitated to make an RDNH finding” had the Complainant been represented by counsel.
The decision raises an issue about complaints prepared by counsel and its responsibility for certifying allegations in support for an order to transfer registration of the domain name. Rule 3(b)(xiv) (having some similarity in language to Federal Rules of Civil Procedure Rule 11) provides that “[t]he Complainant certifies that the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate […] and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” In Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., D2007-1598 (WIPO January 28, 2008) the dissent (concurring on dismissing the complaint but dissenting on a finding of RDNH) noted that “it is the responsibility of counsel to put every argument on behalf of the client that is reasonably open on the evidence, that in the present case the argument advanced by counsel was reasonably open and that accordingly the certification was appropriate.” The majority, however, believed otherwise and rebuked counsel on its certification that “the assertions in this Complaint are warranted” when they were not.
NOT A Bona Fide Offering of Goods or Service
It is not the business model that is abusive but the respondent’s conduct and its motivation for registering a domain name. Selling domain names and using them for click through revenue is perfectly legitimate but not when the disputed domain name is identical to the complainant’s trademark and the respondent is in the same niche or populating the website with links to the complainant’s competitors.
Such were the facts in Freer Auto Body & Accessories Inc. v. Andys AutoBody c/o Andy Batchelor, FA0904001256658 (Nat. Arb. Forum May 28, 2009). The Respondent’s explanation in support of keeping the domain name is (as summarized by the Panel) the following:
Respondent contends that it registered the disputed domain name with the intent to resell it, and that this is a bona fide offering of goods or services.
Respondent claims that it has not taken any action to disrupt Complainant’s business, and is only advancing its own rights and interests in the disputed domain name.
Respondent contends that its intent to resell the domain name is evidence of Respondent’s good faith use and registration of the disputed domain name.
The Respondent is clearly less than fluent in domain name law although he can be credited for candor.
A similar comic disregard of the law and equally candid was noted in Inmobiliaria Carso S.A. de C.V. v. RusliCyber.com and Trisakti University, Mr. Ahmad Rusli, D2008-1767 (WIPO January 5, 2009). The Respondent had a vision and mission when he was “still 22 years old, or 750 days ago, or about 18,000 hours ago, or actually September 22, 2006 [which was] to help MR. CARLOS SLIM HELU get this domain name.” Acting on the vision he tried to contact Mr. Slim to sell him the domain name for varying amounts up to $55 Million...” Needless to say, he was rebuffed although left the stage arguing that Mr. Slip should “consider []his good-faith” in not using (only threatening to use) the website for pornography. See Note for January 20, 2009.
July 2009 NOTES , DATES ARE IN REVERSE ORDER
Pay-Per-Click Advertising Not Illegitimate Per Se
Domain names registered for pay-per-click revenues are illegitimate when they exploit the complainant’s trademark; not otherwise. This was illustrated in yesterday’s case with <nationalrentacar>, found confusingly similar by the majority but similar and not confusing by the dissent. It is not similarity alone or even identity that proves exploitation, but intent to take advantage of the complainant’s trademark. The disputed domain name in The American Automobile Association, Inc. v. QTK Internet c/o James M. van Johns, FA0905001261364 (Nat. Arb. Forum July 25, 2009) is identical to the Complainant’s trademark, <aaa.net>, yet the Panel declined the “Complainant’s invitation to find that pay-per-click advertising is per se illegitimate, even where it is unrelated to goods or services associated with a trademark.” Rather,
Whether the advertising is a bona fide offering of goods or services thus turns on whether Respondent is exploiting Complainant’s mark by offering advertisements that confuse Internet users for commercial gain.
Panels have drawn a distinction between respondents who use the domain name to marshal links of competitors and respondents who operate or are preparing to operate a business offering unrelated goods or services. The Panel in Sears Brands, LLC v. Dann J. Flesher c/o Frick & Frack Enterprises, FA0906001267667 (Nat. Arb. Forum July 29, 2009) (<my-gofer.biz>) put it this way
A number of panels, including this one, have previously found the use of confusingly similar domain name by a respondent for the purpose of competing with a complainant is not a use in connection with a bona fide offering of goods or services. ... On the other hand, where a respondent is operating or preparing to operate a non-competitive business, then the use of a confusingly similar domain name has been upheld.
Trademarks most vulnerable are those suitable to describe goods or services from different sources. This is generally with trademarks on the generic and descriptive end of the classification. In Sears Brands, the Respondent proved its 4(c)(i) credentials, proving that there are circumstances under which domain names identical or confusingly similar to trademark can, as they do in the physical world, coexist in different classes. In another AAA case involving the domain names <aaa-cruises.com>, <aaa-cruising.com>, <aaa-vacation.com>, <aaacruise.net>, <aaacruiser.com>, <aaacruisers.com>, <aaacruising.com>, <aaacruising.net>, <cruiseaaa.com>, and <cruiseraaa.com>, The American Automobile Association, Inc. v. Gary S. Kibizoff a/k/a Gary Kibizoff, FA0906001267823 (Nat. Arb. Forum July 29, 2009) the Panel found that the attraction was the trademark; the Respondent did not appear.
However, as iconic as is the AAA trademark, it is not alone in using the naked three letter string:
First, while <aaa.net> is identical to Complainant’s marks, it is also a desirable domain name for a variety of other reasons. “AAA” is the top rating for a bond, a battery and shoe size, and an acronym associated with many different organizations. It is also a short, three-letter string.
In order to prevail the complainant must offer proof that the PPC advertisements offer similar goods or services (the second AAA case) and thereby “confuse Internet users into thinking that Complainant was somehow associated with Respondent’s web site.” Where the Complainant did prevail, as in yet another AAA case, Am. Auto Ass’n, Inc. v. CCG, FA 1234708 (Nat. Arb. Forum Dec. 31, 2008), the Panel “found that the registrant used pay-per-click advertisements for services that directly competed with services offered by AAA, and that the registrant capitalized on consumer confusion.”
Similar but Not Confusingly So
The disputed domain name is <nationalrentacar.com>. The Complainant holds a trademark for NATIONAL CAR RENTAL. It alleged that the “domain name at issue fully incorporates the NATIONAL mark and merely adds additional words ‘rent a car’ that correspond to the goods or services offered by the Complainant’s licensee under the mark,” Vanguard Trademark Holdings USA LLC v. Nett Corp., FA0905001262162 (Nat. Arb. Forum July 26, 2009). The majority held that the domain name was confusingly similar to the trademark, although noted that the respective phrases following the word NATIONAL – “rentacar” and “car rental” – were generic and descriptive. The dissent (dissenting only on the issue of confusing similarity; he found none) noted that the Complainant does not have any federal registration for the term NATIONAL standing alone and it disclaimed the generic phrase “car rental.” However, all three panelists were in agreement that the Complainant failed to prove that the Respondent lacked rights or legitimate interests in the domain name.
Not surprisingly for this dissenting member, his writing and analysis is far more interesting than that of the majority. Whatever similarity there may be between the domain name and the trademark arises out of the combination of generic and descriptive words. The “sole question, then” – having disposed of the red herring that the Complainant had a right to the word NATIONAL –
is whether the domain name is confusingly similar to the second registered trademark relied on by Complainant, namely NATIONAL CAR RENTAL. Complainant asserts that this is so because: “In the car rental industry, “Rent A Car” and “Car Rental” are interchangeable.” However, no evidence is given to the effect that the industry or the public have ever accepted that the two expressions are “interchangeable.”
It is often pointed out that an inference of bad faith can be drawn from the content of the website to which the domain name resolves. For example, if the website contains hyperlinks to the complainant’s competitors and to the complainant itself an inference can be drawn that the domain name was registered for its trademark value. However, this generalization cannot apply in every instance and <nationalrentacar.com> is an example of a generic/descriptive string used as it is which is exempt from any such inference. The dissent states
The evidence is that Respondent uses the domain name to resolve to a website that carries advertisements for several car rental firms. That is legitimate, as those services come within the plain words of the domain name.
If the content of the website is strictly related to the what the Internet user would expect to find given the descriptive nature of the domain name then it undercuts the argument that in registering it the respondent had the complainant’s trademark in mind. The website <nationalcrentacar.com> is a directory of the car rental service industry in contrast to the Complainant who is only one of many who provide car rental services, nationally. The dissent found in comparing domain name to trademark that similar though the one is to the other it is not confusingly similar.
Prohibitory Offers to Sell, Rent, Lease Etc.
An explicit or direct offer by a respondent who lacks rights or legitimate interests in the disputed domain name “to sell[], rent[], or otherwise transfer[] 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 [its] documented out-of-pocket costs directly related to the domain name” is per se bad faith. Indirect offers may be harder to recognize and may require some steps of induction of see it for what it is but when pierced the respondent’s conduct is equally probative of intent.
The Respondent in Mota-Engil, Engenharia e Construção, S.A. v. Servicios de Lexicografia. S.A., D2009-0658 (WIPO July 1, 2009) registered <mota-engil.com> prior to the consummation of a merger of three companies, including Mota & Companhia, S.A. and Engil-Sociedade de Construção Civil, S.A. Each of the merging parties held trademarks in their separate names and the Panel held that the resulting combination had standing to maintain the proceeding.
Prior to the commencement of the UDRP proceedings the parties discussed transferring the disputed domain name, but failed to reach agreement. Although the Respondent alleged that “it did not register the domain with the purpose of selling it to the Complainant” the Panel inferred that “this seems to have happened only because the price offered by the Complainant ‘was considered too low’.” Instead of directly making a demand the Respondent's posed as a think tank, with the Complainant as a business subject, to study:
We (they) offered to make a deal with Mota-Engil regarding the domain www.mota-engil.com, but not for a lump-sum of money.
The inference – the offer was “not for a lump-sum of money” – is that the Respondent had in mind another kind of consideration. This was supported by the next sentence:
We (they) proposed to lease the domain in exchange for a support to our charity program (2 minimum wages per month [1 minimum wage = 450 euros] for donations to single mothers in Portugal and other charitable activities we have in Portugal and Latin America) or up to 70% of this amount in services of our group [translations])”.
The Panel drew the following conclusion:
In other words, as the Respondent itself admitted, it imposed on the Complainant as a condition for assigning the domain name the donation of money for its ‘charity program’ or for procuring its translation services.
Bad faith conduct includes any demand for consideration in exchange for transfer of the disputed domain name whether direct for cash or indirect for employment, special privileges, settling a dispute, etc. In either event the transaction “corresponds to imposing on the Complainant a financial provision in exchange for the domain name, in a manner essentially equivalent to a pure and simple sale, for the purposes of the Policy.”
“UDRPTalk” [<udrpsearch>] made the following comment about the decision in Compart AG v. Compart.com / Vertical Axis, Inc., D2009-0462 (WIPO July 9, 2009)“If there was no valid proof of competing usage, then the respondent should not have lost.” There are three questions that the complainant must answer to succeed in a UDRP proceeding. None of them concern “competing usage” which is a phrase borrowed from trademark analysis. The physical world accommodates identical trademarks in different classes of goods or services; the cyberworld does not. “Due to the [Internet’s] technological limitations and boundless use, only one entity can be registered in each gTLD name throughout the world,” Cimcities, LLC v. John Zuccarini D/B/A Cupcake Patrol, D2001-0491 (WIPO May 31, 2001).
The Respondent’s “competing usage” in Compart was a pay-per-click parking page, not illegitimate in itself if the term identical or confusingly similar to the trademark is used in its dictionary sense. The Respondent argued that the word “compart” was common in both English and German. However, the Panel opened several desk dictionaries and found that although the word appears “to be an English language word ... it is not listed in all common dictionaries ... and thus the Panel does not agree that it could be said to be in common use.” In dictionaries in which the word is defined (including the OED unabridged) it is preceded with “arch[aic]” or “rare.” The earliest usage as a transitive verb is recorded in the 16th century; as an intransitive verb the 18th century. One of its meanings is to “[v.] lay out in parts according to a plan.” In fact, the Respondent argued that
the automated technology used by the domain name parking service HitFarm.com is drawing on the contextual meaning of the “part” component of the Domain Name to generate what it considers to be relevant advertising.
However, the Panel called the word “obscure.” The Panel also determined that the word was not common in German (if a German word at all), which means that it must be uncommon and uncommon words adopted as trademarks have a higher level of protection. So, why would a respondent register an archaic, rare or obscure word that is a third party’s trademark unless there were a target audience and what better audience than Internet users looking for the trademark holder? The Panel held that
the mere fact that a word identical to the Domain Name exists as a defined dictionary term does not give rise to any rights or legitimate interests in the name on the part of a respondent who uses it in ways like this that are not tied to the generic meaning of that word.
These observations about dictionaries apart, there is clearly an issue in waiting. The domain name was registered by a predecessor to the Respondent after the Complainant was founded but before the Complainant’s expansion of trademark Internationally, including North America. However, the Respondent acquired the domain name contemporaneously with the Complainant’s trademark registrations and expansion of its business into North America. This makes a difference because under UDRP jurisprudence transfer of a domain name constitutes a new registration and activates the warranties therein. While the original registrant may have registered the domain name in good faith, the transferee is in a different and more difficult legal position.
Compart stands for the proposition (and it is not alone in this respect) that a later registered trademark, particularly if composed of uncommon words or phrases and temporally consistent with a finding of knowledge may triumph over an earlier registered though subsequently transferred domain name. It does not work against the original registrant, NETtime Solutions LLC v. NetTime Inc. c/o Chad Wagner, FA0810001230152 (Nat. Arb. Forum December 19, 2008) (<nettime.com>) or registration of an uncommon (or even nonexistent) word where there is insufficient proof of knowledge, Eclipse International N.V. v. Luma, Inc., D2009-0380 (WIPO May 22, 2009), “luma” as in <luma.com>. Luma has a specialized meaning, but is not a common word found in English language dictionaries; it is not in the OED unabridged. The Panel made a point of noting that the Complainaint in Eclipse International failed even to state what business it was in.
Licensee Must Prove Its Authority
Rule 3(a) of the Rules of the Policy provides that “any person or entity may initiate a complaint” against a registrant who it accuses of registering a domain name identical or confusingly similar to a trademark in which it claims a right. The majority view reported in Paragraph 1.8 of the WIPO Overview does not require the complainant to be the owner of the mark [Miele Inc v Absolute Air Cleaners and Purifiers, D2000–0756 (WIPO September 11, 2000)], or have an exclusive right [Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000) (Paragraph 4(a)(i) does not mention “exclusive rights”)]. The minority view holds that “[a] complainant that holds a non-exclusive trademark license does not have rights in a trademark under the UDRP.” However, short of the trademark holder itself whomever steps forward to vindicate a right must prove its authority to maintain the proceeding.
It appears from the record in Pleasure Cake SL v. TechTools, D2009-0580 (WIPO July 14, 2009) that the Respondent (if it had any right at all) held a non-exclusive trademark license. It alleged that “it is [the] only official European distributor of TENGA products, and that it is co-operating with and authorized by Kabushiki Kaisha Tenga (also trading as Tenga Co., Ltd.) to actively look after the European trade mark of TENGA.” Instead of supporting its contention it asked the Panel to obtain further proof from “a certain Mr. Sato at Tenga Co., Ltd.” However, the Panel reminded the Complainant that the
UDRP is based on the adversary system and not on the inquisitorial system ... and it is not for the Panel to complete the evidentiary record of the Complainant’s case.
The same reminder is equally applicable to respondents, Randgold Resources Limited and Randgold & Exploration Co.Ltd. v. Pico Capital Corp., D2001-1108 (WIPO October 24, 2001).
The Panel in Pleasure Cake gave the Complainant a further opportunity to make its case by issuing a Procedural Order, but it failed to respond. “Under these circumstances, in the view of the Panel, the vague authorization to look after a third party’s trademark is not sufficient to convey ‘rights’ under the Policy leading to the transfer of a disputed domain name.”
Construction of the Fair Use Defense
As a general rule proof necessary to support a defense under paragraph 4(c)(iii) of the Policy has to include evidence that the registration was “without intent for commercial gain.” But, diverting the Internet user to another website or using a domain name to harvest traffic that would otherwise go to the trademark holder undercuts legitimate interest resting on fair use. A backup argument tried by the Respondent in L’ORÉAL SA and LANCÔME PARFUMS ET BEAUTE ET COMPAGNIE v. MyFashionFiesta.com LLC, Will Turnage, D2009-0729 (WIPO July ) is that he contemplated using the website as a fashion blog, but this fails unless there is demonstrable preparation to use the domain name. The emphasis in the phrase “demonstrable preparation” is on the adjectival qualifier.
The principal thrust of the Respondent’s argument, however, was fair use; “that it has a legitimate interest in the disputed domain names as it intends to create independent blogs protected by the freedom of speech on the websites at the disputed domain names.” The criteria for the free speech defense may not be entirely settled, indeed there are conflicting views on incorporating a trademark in the domain name, but it is clear
that to be sustained such use must at all times amount to a non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue under paragraph 4(c)(iii) of the Policy.
In L’Oreal, however, “the Respondent has been using the disputed domain names commercially, to redirect users to websites offering the Complainants’ products as well the Complainants’ competitors’ products, and, in all likelihood, to monetize the Complainants’ well-known marks.” Consequently, the Respondent cannot rebut the prima facie case that it lacks rights or legitimate interests in the disputed domain names. And, because the domain names have been used for commercial gain (which is use in bad faith) it is an allowable inference that that was the Respondent’s intent (which amounts to registration in bad faith).
Acquiescence; Uncertain Termination of Rights
Bad faith registration can be cured by agreement between the parties. The question is whether the agreement authorizing use was terminated and if it was the timing of the termination. Uncertainty about timing – the onus is on the complainant to prove that the termination preceded the commencement of the proceeding – favors the respondent. Levantur, S.A. v. Media Insight, D2009-0608 (WIPO July 10, 2009), citing an earlier case by the same Panel, Lonely Planet Publications Pty Ltd v. Mike Tyler, D2004-0670 (WIPO October 27, 2004). The Panel noted that Paragraph 4(c)(i) of the Policy
does not address the point in time at which a complainant must prove that a respondent has no right or legitimate interest – it merely defines certain circumstances which, if proved, and while those circumstances continue to exist, will be regarded as sufficient to constitute a right or legitimate interest. If the right or legitimate interest has been lost by the time the Complaint is filed, the Complainant will have satisfied the requirements of Paragraph 4(a)(ii) of the Policy. (Emphasis added).
Based on the parties’ submission the Panel had no doubt that in the first instance the registration of the disputed domain name had been opportunistic. However, the complaint and the Complainant’s submissions failed to disclose the business relationship between the parties and the existence of an agreement. “That agreement or understanding was sufficient to confer on the Respondent a right or legitimate interest in respect of the Domain Name.” The “critical question is whether that license or consent to use the Domain Name was lawfully revoked at some time before the Complainant commenced this proceeding.” The answer is that
[i]n the end, the Panel has come to the view that the evidence, looked at overall, does not clearly establish that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has advanced a plausible case that it acquired a right or legitimate interest at some time soon after it registered the Domain Name, and the available evidence is not sufficiently clear for the Panel to safely conclude that the particular agreement or understanding which gave rise to that right or legitimate interest has been validly terminated.
The cause of the uncertainty and the basis for denying the complaint is an evidentiary lacuna. The Complainant simply did not submit what it ought and some of its statements were either palpably false or (innocently) deceptive in light of further submissions by the Respondent.
Political Speech; Sorting Out the Proper Balance
Parody is a comedic genre, ancient in origin, designed to ridicule its target through imitation and witty exaggeration. Thus pomposity is deflated; unacceptable (to the parodist) social views debunked. At its least benign it is a political (blunt) instrument intended to make fun of the targeted views. It is also the cruelest form of expression when done with panache. In Sutherland Institute v. Continuative LLC, D2009-0693 (WIPO July 10, 2009) the parody is so cleverly performed that it confused even the target audience. The Complainant propagated its social views of family and normality through <sutherlandinstitute.org>; the Respondent countered with <sutherlandinstitute.com>. The imitation website copied the artwork and design of the Complainant’s website to make it appear the spokesman for the parodic views, but charged the language to express the opposite of the original. The parody website contained the following disclaimer:
Copyright © 2009 SutherlandInstitute.com All Rights Reserved. | This site is a parody of The Sutherland Institute, a Southern Utah based ‘think tank’ that tries to mask its ‘anti-gay agenda’ as a do good public policy and political organization. Obviously we are not affiliated with, endorsed or sponsored by the Sutherland Institute but we still love them anyway. Want to contact us? PO Box […] Salt Lake City, Utah 84125-0055.
Political speech is sacrosanct. The Panel concluded that the Complainant proved that the Respondent lacked rights or legitimate interests in the disputed domain name – that is, the domain name is not itself the subject of the parody – but failed to prove that the Respondent registered it in bad faith, referring to the content. An example of the domain name parodied is <hairywinston>, Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman, D2008-1267 (WIPO October 18, 2008) (Respondent the proprietor of a ‘luxury pet boutique’).
There are several points of interest in Sutherland Institute, but one is that the Respondent did not submit a response. It was left to the Panel “to presume what Respondent would have argued had it made a submission, and to address the arguments that Respondent would have made, but didn’t. The Panel presumes that Respondent would argue that it is making a legitimate noncommercial use of Complainant’s service mark in the disputed domain name.” In other words, the Panel made the Respondent’s case.
With any set of facts other than privileged speech “presuming” what the respondent would argue were it present would exceed the Panel’s authority. Ironically, it may be that the Complainant put too much into the record; although it probably had no other choice. However, in presenting its grievance, and exposing its torment, it gave credence to the parody; and by its documentary submission (including the disclaimer) it stated the Respondent’s case. Thus, the material was at hand for the Panel to sort out the proper balance.
In dealing with political speech, the Panel found that the parody was “constitutionally protected.” It was “reluctant to use a basis for a finding of bad faith other than those expressly enumerated in the Policy.” This refers to the Complainant’s argument that the registration violated paragraph 4(b)(iii) of the Policy, disrupting the business of a competitor: “Perhaps in some very attenuated sense these two entities are ‘competitors in the marketplace for ideas’, but the Panel does not think this is what the Policy means when it refers to ‘competitors’.” Shades of The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohen, Profile.net and God.Info, D2002-0184 (WIPO June 3, 2002) (“Complainant is careful to avoid any suggestion that he has exploited his name for ‘materialistic’ or ‘commercial’ purposes.”). The Panel in Sutherland Institute concluded
If the right of political speech is to be interfered with based on Complainant’s service mark incorporated in Respondent’s disputed domain name, it is preferable that a federal or state court make that application of the concept of ‘bad faith’.
In other words, the decision to quash political speech is beyond the scope of the UDRP.
How can it be that the Respondent in Ric Jo Swaningson v. thu lins, FA0905001264365 (Nat. Arb. Forum July 1, 2009) forfeited its three letter choice for domain name, <aip.com>? The burden for proving trademark status for an unregistered acronym is satisfied by offering evidence of distinctiveness, but not otherwise. It makes no difference whether the respondent appears, but if there is evidence of secondary meaning, and in Ric Jo there was, and the respondent fails to explain its choice or defaults the respondent forfeits the domain name. This was illustrated in two cases discussed in the Note for June 18. The analysis in these cases is no different than expected for determining rights to the use of generic terms. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”)
Ric Jo, however, has interest on a different level. The fact that the case involved an acronym is by the way. Rather, the case deals with misappropriation of a domain name. The Complainant alleged that the Respondent illegally hacked its account and “fraudulently substituted Respondent’s information for Complainant’s.”
The case is an apt illustration of the reach of the UDRP beyond the traditional misappropriation of trademark. The violation is not simply abusive registration; the Complainant alleges illegality and fraud in misappropriating the domain name itself. The Panel does not question her jurisdiction to determine the issue, but simply ordered the domain name restored to the Complainant.
To whom a case is assigned makes a vast difference. Take “A” and “B”. The parties in both cases are competitors. There is no issue of unawareness; knowledge is admitted. “A” applies for its trademark after the registration of the domain name. “B” has a State trademark. “A” wins; “B” loses. Friday’s Note discussed “A”,