Archive -- 2008
DOMAIN NAME JURISPRUDENCE &
//// udrpcommentaries.com ////
COMMENTARIES ON UDRP CASESGerald M. Levine, Esq.
(212) 596-0851, E-Mail
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| AUGUST 2008 | |||
| SEPTEMBER 2008 | |||
| OCTOBER 2008 |
ICANN Audit Report (July 2008)
ICANN announces publication of its semi-annual Contractual Compliance Audit Report (July 2008), accessable at <http://www.icann.org/en/announcements/announcement-30jul08-en.htm>. Among other subjects, the Report describes a grievance process for those who experience difficulty getting a registrar to comply with a Provider decision. See Comment Registrar Violations of Contractual Obligations. The Report states at Section IV, Paragraph F, pp. 52-53 that
Grievants may only register a UDRP grievance with ICANN pursuant to the Intake Process after exhausting their administrative remedies as set forth in the UDRP. Parties wishing to file a grievance regarding the enforcement of an administrative decision must wait at least fifteen business days after a Provider renders a final decision before they may file a grievance using ICANN’s Grievance Intake System. ICANN intends to provide parties with sufficient time to comply with administrative decisions and/or engage in settlement discussions.
The online grievance form is available at <http://www.internic.net/UDRPIntakeReportSystem.html>.
A particularly inexcusable, indeed inexplicable act of misconduct is reported by the Panel in Mrs. Eva Padberg v. Eurobox Ltd., D2007-1886 (WIPO March 10, 2008). The registrar, MISTERNIC LLC, “arrogate[d] to itself the right to unilaterally determine whether proceedings have been validly commenced under the Policy. Further, it has unilaterally declared, without any real reasoned explanation and without either seeking the views of the Center or awaiting the decision of the Panel, that it will refuse to implement the Panel’s decision.” The case was mentioned in the WIPO letter referred to on July 23rd.
If you're interested in European Trademark News try Class 46.
Personal Name and Pending Court Proceedings
The Panel in Laughton Marketing LLC v. Boris Soposki, D2008-0718 (WIPO July 17, 2008) identified two issues worth looking at, trade mark rights in a personal name and pending court proceeding. A personal name as such is not a protectable right under the UDRP and rises to trademark status only if the complainant is able to establish under common law principles that the name has acquired secondary meaning in the marketplace, which in this case this Complainant failed to do. “Complainant has merely asserted service mark rights and has not provided any supporting evidence of Complainant’s use of the alleged mark in commerce.... The Panel does not have an evidentiary basis from which it might conclude that Complainant has rights in 'Laughton Marketing' as a service mark.” The conclusion on this issue was dispositive and the Panel dismissed the complaint.
Common Law trademarks are discussed in Common Law Marks, Recognition in the Marketplace and Proof of Secondary Meaning.
On the second issue, under Rule 18 of the Rules of the Policy the Panel has discretion to suspend or terminate an administrative proceeding. The Rule reads:
(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.
In this case, the Panel exercised its discretion by not suspending or terminating the administrative proceeding because the Complainant failed to prove its right under Paragraph 4(a)(i) of the Policy. However, when it is shown tht a case is actually filed and the action is or includes declaring rights to the domain name, then no purpose is served by proceeding to a UDRP decision.
Revisiting the decision on <narnia.mobi> discussed below July 25th, Prof. Marc J. Randazza, The Legal Satyricon, has a third look at the case and concludes (as he did the first time) that the Panel got it right: the Respondent is indeed a cybersquatter. In passing, he quotes the Panel's citation to the registration agreement which provides that it is the registrant's duty to “determine whether your domain name registration infringes or violates someone else's rights.” This mirrors the representation provision of Paragraph 2 of the Policy and the proposal in the WIPO Final Report.
Prof. Randazza sees the representation provision as “a rejection of the Sorkin/Cabell theory that there is no constructive knowledge requirement under the UDRP.” This surely is a misreading. Knowledge is not imputed to the respondent as it would under the U.S. doctrine of constructive knowledge, although while the registrant (at least the single registrant) is not required to search trademark databases, he cannot be willfully blind to violating another's right. The question of diligence for high volume registrants is discussed in To What Standard of Diligence Should High Volume Registrants Be Held?
It has been said that the UDRP is not U.S.centric. Constructive notice is a U.S. doctrine found in the Lanham Act, 15 U.S.C. §1072. It is not otherwise referred to in the WIPO Final Report, the UDRP's foundation document, and panelists have been reluctant to apply it for other reasons except, limitedly, to U.S. based parties under appropriate circumstances. The argument against applying the doctrine is that the “essence of the Complaint is an allegation of bad faith, bad faith targeted at the Complainant,” The Way International Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (U.S. parties, involving an unregistered mark). In order for there to be bad faith “the cybersquatter must have actual knowledge of the existence of the trade mark owner. If the registrant is unaware of the existence of the trademark owner, how can he sensibly be regarded as having any bad faith intentions directed at the Complainant?” The Panel concluded that there was no place for the concept under the Policy because if
the existence of a trade mark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly.
See, Swimways Corporation, below, also July 25th., not as it happens decided by either of the panelists named by the Professor, but another who rejects constructive notice. He notes that
while it may be true that the doctrine of constructive notice will have some application in cases where both parties are based in the US, it is also notable that, even in those cases where the doctrine has been applied, there have been other circumstances indicating bad faith, including evidence that the relevant trade mark had been widely used beforehand both in the USA and elsewhere, and was well–known, quite apart from the fact of registration.
The Narnia Respondent showed his true colors all the time denying bad faith by enrolling the disputed domain name together with other domain names corresponding with the Complainant's trademarks in a PPC advertising program, again see below.
Generally, tortious and criminal conduct is outside the scope of the Policy, but there is an instance in which it is not and that is when the evidence establishes that the respondent registered the domain name to phish for confidential information. This is what the Complainant alleged and the Panel found in National Westminster Bank plc v. Bryant Smith, FA0806001209998 (WIPO July 28, 2008) (<natwestbusinessbanking.com>) (Respondent did not appear).
The evidence established that Respondent’s landing page imitated Complainant’s official website in order to “to fraudulently obtain Internet users’ confidential financial information.” Ordinarily, bad faith registration is not presumed but must be proved. The rule is phishing and tarnishment is that if found, bad faith registration is presumed. The Panel ordered the domain name trasferred.
The doctrine of laches is not recognized formally under the Policy, although delay, particularly when extensive, may be a factor in determining bad faith registration. The only approved application of equity in the Policy is the defense established in ¶4(c)(i), which benefits the respondent when “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 in connection with a bona fide offering of goods or services.” If these conditions are met, the complainant, in effect, is estopped from asserting bad faith. The question revolves around what is and is not a “bona fide offering of goods or services?”
One of the markers for bad faith is evidence that the respondent registered the disputed domain name to capitalize on the complainant’s trademark. Sun Studio Entertainment, Inc. v. Memphis Recording Service, FA0805001189842 (Nat. Arb. Forum June 19, 2008) illustrates legitimizing a domain name identical to the complainant’s U.S. trademark in MEMPHIS RECORDING SERVICE when the Complainant fails to police its trademark. The Respondent, an independent U.K. record label created in 2005, in the business of marketing CDs and DVDs in Europe and other countries, registered the domain name <memphisrecordingservice.com> in 2004 and obtained an EU trademark in 2006. The Complainant knew of the Respondent's business and even offered some of its product for sale in its Memphis store.
The Panel came to the conclusion on the issue of “bona fide” goods or services that 1) Respondent’s ownership of an EU trademark registration for the MEMPHIS RECORDING SERVICE mark was not obtained merely to circumvent the Policy; and 2) Respondent registered its domain name and mark not to capitalize on the Complainant’s mark, but, rather “on the history surrounding a recording studio in Memphis known as the ‘Memphis Recoding Service’.”
C.S. Lewis (PTE.) Ltd. v. Richard Saville-Smith, D2008-0821 (WIPO July 21, 2008) (<narnia.mobi>, Respondent appeared; Transferred). This case has generated chatter among bloggers -- the pathos of a little boy having to return his birthday present -- but its real interest as far as domain law is concerned lies in the Panel's construction of ¶4(c)(iii) of the Policy, namely that it applies to “active websites” not prospective ones. This principle is consistent with precedent under UDRP jurisprudence.
The Respondent argued two safe harbor defenses under ¶4(c)(iii) of the Policy, that he registered the domain name for 1) prospective use as an e-mail address [a birthday present to his son]; 2) non-commercial use, such as a fan site [the son is an enthusiast]. These arguments were undercut by his acquiring other dubious domain names and farming them together with <narnia.mobi> for pay-per-click revenue. The Panel held (principally addressing the second argument),
the language of paragraph 4(c)(iii) of the Policy is couched in the present tense and unambiguously requires a respondent to be ‘making a legitimate noncommercial or fair use of the domain name’. Paragraph 4(c)(iii) of the Policy only concerns active websites that practice genuine, noncommercial criticism, and only deals with fan sites that are clearly active and noncommercial. Thus, the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(iii) without actively making a legitimate noncommercial or fair use of the disputed domain name, or at the very least providing evidence of demonstrable preparations to make such use prior to notice of the dispute. Inconsistent with his asserted motive, the Respondent has done neither in this case.
On the first argument, while there are decisions favorable to respondents for registering well known or even famous names for vanity and personal e-mail addresses, in all these cases respondents are either known by that name or they service subscribers with that name. The Panel concludes, “[m]oreover, even where the Respondent is actively using the disputed domain name as an email address, such use cannot support his assertion of rights or legitimate interests in the disputed domain name....”
(Other recent literary appropriation, Tokien's "Hobbit," the Panel rejected the defense that HOBBIT was a dictionary word for "small persons." The Saul Zaentz Company d/b/a Tolkien Enterprises v. CheapYellowPages.com / Brian Wick, D2008-0021 (WIPO March 17, 2008) (<hobbitts.com>)).
Swimways Corporation v. Richard Nugent, D2008-0786 (WIPO July 12, 2008) (<toypedo.com>, U.S. Complainant; U.K. Respondent did not appear; Complaint denied)
If the complainant is going to argue that the Panel should apply constructive knowledge against the respondent – a concept that has not gained traction generally in UDRP jurisprudence and, if applicable at all, only to parties who are both U.S. residents or with U.S. addresses – it must, at the very least, provide evidence of the trademark’s reputation when the respondent registered the domain name. (“The fact that the Google search for 'toypedo' received 14,300 hits linking to the Complainant means little, if anything, in this regard, as this search was done in April 2008.” The Respondent registered the domain name in May 2000). The Complainant lost because it failed to satisfy its evidentiary burden of proving bad faith registration.
New Post: Respecting the Record – Construing Rule 12 of the Policy
Retaining Domain Name After Termination of Services
The legal consequence of a complainant admitting that it authorized the respondent to register one of two domain names, see case referred to yesterday, is discussed in another case from Nat. Arb. Forum, Herrmann International d/b/a The Ned Herrmann Group v. Sally Bishop c/o Herrmann International, FA0806001203379 (Nat. Arb. Forum July 24, 2008). “Complainant contends that it should be considered the beneficial owner of both the U.K. trademark and the domain name <hbdi-uk.com>, with the Respondent merely holding these rights in trust for Complainant.” That, says the Panel, “may well be so, but these questions are not before [it]. To the contrary, the Panel’s sole mandate is to decide whether Complainant has established the elements set forth in Paragraph 4(a) of the Policy.”
The question, once again, is “whether a licensee-reseller can resign from her position and retain domain names based on her licensor’s trademark rights” and the answer is guardedly Yes unless there is other evidence, an agreement for example, in which the parties expressly stipulate that the respondent will return the domain name. The Panel notes, however, that “resolution of this question would likely require consideration of matters not susceptible to adjudication under the Policy,” by which he means commencing a plenary action in an appropriate forum.
ICANN Monthly Magazine -- July Issue
Report on actions taken against registrars for breach of Art. 3.8 of the Registrar Accreditation Agreement, earlier reported in Contractual Compliance Newsletter, June Issue (See WIPO Letter on Registrar Practices), Comment Registrar Violations of Contractual Obligations. ICANN has proposed amendments to the RAA aimed at enhancing registrar compliance. See Draft Proposed Changes, June 18, 2008.
ICANN also notes a misconception about its powers: “There remain occasional misconceptions about ICANN's authority. Some appear to believe ICANN is an Internet enforcement agency, with broad power to shut down websites, restrict website content, and penalize Internet users for unethical behavior. This is not the case.”
Rather, ICANN's self description is that it is “an internationally organized, non-profit corporation [formed in 1998] that has responsibility for Internet Protocol (IP) address space allocation, protocol identifier assignment, generic (gTLD) and country code (ccTLD) Top-Level Domain name system management, and root server system management functions.”
Case from Nat. Arb. Forum reenforces the core principle that the Complainant must prove both registration and use in bad faith. Whether a party who initially registers a domain name with permission is entitled to retain it after termination is an issue nominally outside the jurisdiction of the UDRP since it raises, at least, contract and fiduciary issues better resolved in a national court. A domain name registered with permission or one in which the complainant has acquiesced for a length of time will not ordinarily be transferred because permission and acquiescence negate registration in bad faith. So it was in today's case.
In Ivanko Barbell Company v. Syclone Corporation c/o Adam Auerbach, FA0805001191122 (Nat. Arb. Forum July 22, 2008) the Complainant admitted that the Respondent had been authorized to register the <ivanko.com> domain name, incorporating Complainant’s mark, to sell Complainant’s goods, at the time at which the disputed domain name was registered. Accordingly, since the Respondent concededly at one time had rights or legitimate interests in the domain name, the complaint had to be denied.
The question remains open, however, and determinable under the ACPA, whether a respondent would be entitled to keep the domain name following his termination as an approved distributor of a complainant's good or services. In Ivanko Barbell the panel did not have to reach a decision on this point given the lack of bad faith registration.
UDRP Commentaries is being reformated. Comments on Cases will continue to be regularly posted and appear in the Thematic Index with the date of posting. Today's post, Should High Volume Registrants Be Held to a Higher Standard of Diligence?
Two WIPO cases reported today, the first reenforces a core principle, namely that domain name registration antedating trademark right confutes bad faith registration; the second case blurs the distinction between ¶4(b)(iii) and ¶4(b)(iv) of the Policy. A respondent who registers a domain name that is identical or confusingly similar to a trademark is a competitor only in the sense that it competes for Internet users' attention, but it is not a competitor in the marketplace.
Babytel Inc. v. Babytel.com c/o WHois Identity Shield/CKV, Domain Admin, D2008-0588 (WIPO July 11, 2008) (3-Member Panel: “In order to satisfy the third element of Paragraph 4(a) of the Policy, a complainant must demonstrate both bad faith registration and use. The Respondent states that the Disputed Domain Name was registered on August 11, 2003, which was prior to the Complainant’s trademark applications filed in December 2003 or its first declarations of use occurring almost two years later. Further, there is no allegation that the Disputed Domain Name had trademark significance in August 2003 at the time of registration.”) (Respondent appeared; Complaint denied)
Sony Corporation v. John Stewart Last, Dragon Domains Limited, D2008-0812 (WIPO July 2, 2008) (“It may be argued that the Respondent is not a competitor of the Complainant. However, as noted in IGBnvestments, Inc. v. Donald Baker, WIPO Case No. D2007-1320 [November 9, 2007]: “In engaging in this commercial activity, Respondent did (if only indirectly) become a competitor of Complainant and attracted Internet users for commercial gain, and in so doing it must have been apparent to the Respondent that this would have a disruptive effect on the business of the Complainant.”) (Respondent defaulted; Transferred).
It is not necessary to invoke ¶4(b)(iii) when the proof supports a claim under ¶4(b)(iv). Paragraph 4(b)(iii) expressly limits the claim. It reads “[Y]ou have registered the domain name primarily for the purpose of
disrupting the business of a competitor.” Competitor is defined Webster's Ninth Collegiate Dictionary as “one selling or buying goods or services in the same market as another.”
New Comment: What it Means to Tarnish a Trademark
Under ¶4(c)(iii), the respondent can prove a right or legitimate interest if “[he is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” There are two foci to this provision....
Revisit Anomalous Decision (August 26th)
It may be prudential, but not the complainant’s burden, particularly for lesser known trademarks and particularly in WIPO submissions – because there is no provision for a reply in WIPO’s Supplementary Rules as there is in those of the Nat. Arb. Forum – for the complainant to anticipate the respondent’s explanation or defense and demonstrate that the respondent has no safe harbor. Rebutting an argument before or whether or not it is formally submitted was effectively done in BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, D2008-0882 (WIPO August 21, 2008) reported in yesterday’s Daily Note.
Using the ¶4(c) factors against the respondent can effectively neutralize its argument by compelling it to offer tangible evidence to support a ¶4(c)(i) defense [i.e. “[B]efore 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 in connection with a bona fide offering of goods or services.”] The Respondent in the anomalous decision, Nike, Inc. v. nikerotterdam, FA0804001180664 (Nat. Arb. Forum August 19, 2008) (<nikerotterdam>) did not file a response and thus failed to put into evidence any affirmative defense.
Renewal of Registration vs. New Registration
A respondent’s rights or legitimate interests in a domain name can depend on the timing of its acquisition and whether it was the original or a subsequent registrant. Ordinarily, transfer to a new registrant constitutes “ ‘registration’ for purposes of paragraph 4(a)(iii)’s determination of bad faith,” BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, D2008-0882 (WIPO August 21, 2008) and that “mere renewal ... does not amount to registration” for that purpose. This consensus view is set forth in WIPO Overview, paragraph 3.7. The Panel noted that the transfer rule has been applied to factual circumstances supporting a pretextual transfer or an attempt at cyberflight, citing HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (U.S. Complainant, Bahaman Respondent who argued that as successor registrant was immunized from liability because its predecessor acquired the domain name in good faith).
The principal focus in BMEzine.com, however, is the second part of the consensus view that “mere renewal ... does not amount to registration.” The unanimous 3-member Panel laid out the governing rules in two succinct footnotes:
7 A panel might ignore a transfer from one subsidiary to another within a conglomerate not timed coincidentally or otherwise with an event pertinent to the matters claimed to constitute bad faith, for example.
8 A panel might ignore movement from one privacy service to another where a plausible explanation is provided and the evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate. It should also be clear that any change in registrant data in the Whois is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the disputed domain name.
The Panel’s reading of the evidence was that “Respondent, a seasoned domainer who has been the subject of many Policy proceedings, made its latest transfer, from one privacy service to another, to conceal his identity as long as possible.” Since “[t]his transfer occurred a few months after Complainant’s filing its service mark application for BME, and Respondent’s current use for a click-through site began immediately thereafter” and since the “Respondent ... offered no other reason for this or any other transfer,” the natural inference was that the transfer was “something other than a pattern of mere renewals.”
See Comment on Cases, Transferee’s Right (Or Not) To a Disputed Domain Name
Certain cases come along from time to time that are instructive in elucidating the meaning and showing the elasticity of the term “abusive registration.” The WIPO Final Report explains in Paragraph 170 that “[b]ecause of the elastic meaning of cybersquatting in popular terminology, we have therefore chosen to use a different term––abusive registration of a domain name––in order to attribute to it a more precise meaning.” The imagined regime that became UDRP was intended to combat two types of “predatory and parasitical practices” [Paragraph 23]:
[1)] “the deliberate, bad faith registration as 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]
[2) registering domain names] “simply to take unfair advantage of the reputation attached to those marks.”
Also, testimony by Francis Gurry, WIPO’s then general counsel, to the U.S. House of Representatives on July 28, 1999, in which he stated that the “most egregious manifestation of this problem is the exploitation in bad faith of the ease and simplicity of obtaining a domain name registration in order to register, as a domain name, the trademark of another person with a view to extracting a premium from the owner of the mark.” A copy of Mr. Gurry’s full testimony can be found at <http://www.wipo.int/amc/en/processes/process1/testimony/>.
In determining UDRP claims, the construction of “abusive registration” is generally limited to a narrow range of predatory or parasitical conduct that is covered by the term “cybersquatting.” The Policy “distinguishes ... legitimate interests [such as may be proved by the respondent] from a set of circumstances which are likely to represent abuse of the trademark holder’s rights. It is only the ‘bad faith’ registration and use of a domain name that is prohibited by the Policy,” Educational Testing Service v. TOEFL, D2000-0044 (March 16, 2000).
Although expressed as “abusive registration,” there have been decisions through the years that make it clear that UDRP’s jurisdiction extends to “abusive conduct.” Giles Thomas v. UK-Muscle Nutrition, D2008-0824 (WIPO August 19, 2008) is another case in that line. Reducing the facts to a bare summary, the parties had formed a business entity that for the Complainant came unstuck. He owned the domain name which the Respondents caused to be transferred by chicanery. The Panel stated
By no stretch of the imagination can this transfer of the First Domain Name be regarded as anything other than abusive. Even if the Respondent genuinely believed that it was, as is asserted in the Response, the legal owner of the Domain Name, this was not the proper way of going about it. The Respondent was effectively taking the law into its own hands.
It must be said that not all panelists would resolve the factual circumstances in Giles Thomas as did the Panel by ordering the domain name transferred. A different panelist could just as easily have found that the claim involved a business dispute and thus outside the scope of the Policy. See Common on Cases, Disputes Outside the Scope of the Policy.
Anomalous decisions are not unknown from both WIPO and Nat. Arb. Forum in which class Nike, Inc. v. nikerotterdam, FA0804001180664 (Nat. Arb. Forum August 19, 2008) (<nikerotterdam>) is an examplar.
To say that the NIKE trademark is well known probably understates its presence in the market place by a wide margin. As a general rule, while prima facie proof coupled with the respondent’s failure to bring itself within the safe harbor of ¶4(c) subdivisions i-iii is conclusive that the respondent does not have rights or legitimate interests in the domain name, a complainant’s success in proving lack of rights or legitimate interests does not necessarily prove respondent’s bad faith. The scale of proof was discussed in the Daily Note for August 15. The Panel in FabJob Inc. v. Compana LLC, D2006-0610 (WIPO August 16, 2006) noted that the “ ‘bad faith’ requirement of the Policy should not be conflated with the ‘lack of legitimate rights’ requirement, although the facts will often be common to both requirements.”
However, the Panel in Nike held – a position that imposes a greater burden on the Complainant – that to satisfy absence of the “rights or legitimate interests” test the “Complainant must bring evidence of Respondents use of the disputed domain name in a way that infringes upon Complainant’s rights.” In this case, according to the Panel, the
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).
The Panel, of course, did have a "choice." It should have followed precedent by repeating the mantra that the “burden is light,” AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006). However, she supported her view by citing a case that demanded a different spectrum of proof than in Nike. It involved a contract dispute with a respondent who may have had either a right or legitimate interest. There may be prudential, even tactical reasons for a complainant to anticipate a respondent's explanation or argument and use the ¶4(c) factors against the respondent, but it is not a requirement. (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Having found that Nike, Inc. did not satisfy ¶4(a)(ii) the Panel proceeded to hold that it did not satisfy the ¶4(a)(iii) either. In its view, the Panel held
***here as well, Complainant offered no evidence demonstrating the use or non-use of the disputed domain name. Therefore, the Panel lacks the necessary showing upon which to make an analysis or findings of bad faith on the merits of the case.
Ordinarily, particularly with a famous mark the prima facie bar is set low. The Nike Panel appears to have reversed the burdens. See, for example, a much cited case, Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
Nike, or let us just call any “Famous Mark,” having proved that the Respondent was neither licensed nor had permission to use its trademark, the burden shifted to the Respondent for an explanation, which in this case was not forthcoming since the Respondent defaulted. In the words of Compagnie Generale des Matieres Nucleaires the Panel made Nike, Inc. “prove a negative” which it was unable to do. It was given a burden the Policy (as construed by earlier panelists) did not require.
A recent opposition proceeding before the TTAB, Gamers, Inc. v. Game Xpert, Inc. produced an opinion (not precedential) that included a discussion about domain names attaining trademark status. See John Welsh’s TTABlog®. The Board stated that the “Opposer is relying on its use of “GOGAMERS.COM” and “GAMERS” to establish common law rights and priority of use.” It was unsuccessful in opposition, but in passing and the reason for noting it here is that the Board stated that
***while a domain name may attain trademark status, its use as an address does not support trademark use. In re Eilberg, 49 USPQ2d 1959 (TTAB 1998). “When a domain name is used only to indicate an address on the Internet, the domain name is not functioning as a trademark.... Domain names, like trade names, do not act as trademarks when they are used merely to identify a business entity; in order to infringe they must be used to identify the source of goods or services.” Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 956, 44 USPQ2d 1865, 1871 (C.D.Cal. 1997).
Although the Lanham Act expressly provides that a trade name is sufficient to establish priority, 15 U.S.C. 1052(d), there “is no equivalent provision for domain name registration or use; nor is a domain name, per se, similar to a trade name, it is more in the nature of a street address.”
The evidence indicated that the Opposer had a self created problem. While it was the first to register its domain name, which could have achieved trademark status, it never used it in logo form as a source identifier on its website, as did the Applicant, until after Applicant’s filing for registration of “GOGAMER.COM.”
The Opposer lost because of what it did not do in the first instance and in the second its evidence was deficient in establishing priority.
New Comment: Distinguishing Among Theories
The Policy lists four non-exclusive examples of bad faith. Each identifies a particular and distinguishable parasitic or predatory act. One “theory” should not be confused with the other any more than theories of action in civil court. For example, tortious interference with contract is distinguishable from tortious interference with prospective advantage. A plaintiff cannot hope to win....
Respondents have asserted equity defenses, particularly laches, from the earliest cases, with sometimes ambiguous results, for although panelists generally agree that there is no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions, nevertheless sitting on one’s rights has consequences. For example, if in the interim the respondent has used the domain name in conjunction with a bona fide business its right will not be disturbed. In this respect, ¶4(c)(i) of the Policy can be viewed as a kind of equity defense, a waiver and estoppel against the complainant or an acquiescence.
The Respondent in Avaya Inc. v. Holdcom, FA0806001210545 (Nat. Arb. Forum August 9, 2008) had been using <magiconhold.com> (identical to the Complainant’s trademark) for seven years. However, by itself “[c]ontinuous use adverse to the interest of Complainant is not a basis from which Respondent can acquire rights in the domain name” unless it can bring itself within ¶4(c)(i) of the Policy. The term “bona fide business” is construed strictly and is measured by objective criteria.
Paragraph 4(c)(i) provides that a respondent has a legitimate interest in the domain name if it can prove 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 [was] in connection with a bona fide offering of goods or services.” A business competing with the complaint can never be bona fide. In Avaya, the Respondent provided competing services which is mala fide. The Respondent even “acknowledge[d] that it was aware of Complainant’s claim of rights at the time of registration, [but] it nevertheless asserts that it believed that Complainant’s mark was generic.” [See Daily Notes for August 19 and 20; separate words may be generic but their combination is not]. The Panel rejected this argument. It held that
Without evidence of why Respondent selected the at-issue suggestive domain name or showing some evidentiary basis for claiming Complainant’s mark had become generic, this belief does not seem reasonable. Therefore, Respondent’s decision to register and then use the at-issue domain name with knowledge of Complainant’s claim of trademark rights in conjunction with a website for a competing business evidences bad faith registration and use under Policy ¶4(b)(iii).
The obverse of this for businesses that are allegedly bona fide is that the greater the length of time sleeping on rights the more difficult to satisfy the requirements of ¶4(a)(iii) of the Policy. It is not laches, then, that applies, but failure to prove bad faith registration. [See Daily Note for July 28].
When is a gripe site not what the respondent alleges it to be? Paragraph 4(c)(iii) states that the respondent is safe if “you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” To exercise the right, the respondent must prove both that the noncommercial use is legitimate and that it is “without intent for commercial gain.” It is the intent that determines whether the “noncommercial or fair use” is legitimate. Thus, any evidence from which an inference can be drawn that there is intent for commercial gain extinguishes the right. The Panel in Ginn Real Estate Company LLC v. Hilton Wiener, FA0806001211342 (Nat. Arb. Forum August 20, 2008) stated that
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.
The Hilton Wiener in Ginn Real Estate is a lawyer. He claimed that he registered <ginnlawsuit> as “a forum for investors in Ginn projects to compare notes, get information and keep abreast of pertinent news and litigation’ and maintains that he, like many other investors in Ginn projects, feel they have been duped and misled.” In fact, the website “contained a great deal of trenchant criticism of the Complainant. But it also contained more than critical statements about Ginn.” If the website is more than a criticism site it cannot pretend it is only that.
The “that” in Ginn Real Estate is evidence that the Respondent was selling himself. How? “the commercial use that prevents the Respondent from succeeding on this point is not solely that the Respondent is using the website and hence the Complainant’s trademark to promote himself as an attorney, but also the fact that the successful class action and other litigation he is encouraging must themselves personally benefit him directly and financially.”
See the Narnia case for implausible argument under ¶4(c)(iii).
Complainants prevail when their evidence is not rebuttable; respondents lose when their proof is not persuasive. A name well known but not famous in a niche market requires a higher level of non-rebuttable proof that the respondent had the complainant’s trademark in mind when it registered the domain name. The Respondent in Gettysburg Flag Works, Inc. v. Precision Marketing Solutions, Inc. and Jeffrey Reynolds, FA0804001179369 (Nat. Arb. Forum June 10, 2008) (U.S. parties) (<gettysbergflags.com>) argued that the expression “Gettysburg flag” is a generic expression. However, the evidence it submitted “balanced unfavorably against Complainant’s evidence that the expression “Gettysburg flag” is not a generally recognized expression.” Although (in Respondent’s dismissive view, the Complainant was an “obscure store located in Albany, New York”) Respondent’s argument was not helped by its being in the same niche, the flag business and that it used the domain name to redirect traffic to its own website.
On the other hand, in Mercer Human Resource Consulting, Ltd., Mercer Human Resource Consulting Inc. v. Konstantinos Zournas, D2007-1425 (WIPO November 23, 2007) (U.S. Complainant, Greek Respondent) the Respondent was not a competitor. It argued that it registered the domain name to be used in conjunction with its website “regions.info” that is under development as a city/area website that will offer targeted local content and functionality for travelers and residents. At or around the same time it had acquired many other domain names with geographical terms including <athens.info>, <barcelona.biz>, <roma.info>, <essex.info>, <clemson.info> <losangeles.info>, <granger.info>, etc.” Although the Panel did not buy Respondent’s rebuttal argument that it had a right or legitimate interest in the domain name, that is it failed the ¶4(c)(i) test, it concluded that the Complainant had insufficient evidence to prove registration in bad faith. Why? Because the Complainant is in a niche business that caters to “organizations as opposed to the general public.” There was no proof of knowledge. Complainant’s evidence did not establish
that its trademark MERCER is well known among the general public in the United States of America or Europe. Complainants’ trademark MERCER is probably well-known among organizations requiring and using human resources, pension, investment and related services within their organizations in many countries throughout the world.
Since “there is no evidence before the Panel that Respondent is such an organization or part of such an organization” its explanation is plausible and plausible wins over suspicion.
In Gettysberg Flags, the Panel based its conclusion on several factors. Two are noteworthy for the inferences they are made to yield, that the “explanation[s] [were] created after the fact.” First, “Respondent did not offer a 34-star flag until after Complainant obtained federal registration for Complainant’s trademark and after Complainant contacted Respondent about the disputed domain name.” Second, the Respondent does not have other domain names reflecting other significant Civil War battles, which “this Panel finds demonstrates that Respondent did not register the disputed domain name ‘to sell historic flags marking the Civil War’.” Finally noteworthy was the Panel’s analysis of the market. It is not necessary to have physical presence in the complainant's jurisdiction:
[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.
For these reasons, the Panel found that the Respondent registered and was using the domain name in bad faith.
Knowledge of Complainant or its Trademark
It has become de rigueur for respondents to either or both deny knowledge of the complainant or its trademark and assert that the domain name is a generic term or common word as a means for retaining ownership of it. Lack of knowledge, if credibly evident, defeats the claim for registration in bad faith as does the generic term or common word when used for its ordinary meaning. A respondent’s knowledge resolves to a question of plausibility. The latest entry in this derby is The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc., D2008-0483 (WIPO June 20, 2008) (18 domain names). Except for one registration which the Panel found not to be confusingly similar, the rest “all contain minor, non-distinctive variations from the Complainant’s CARPHONE WAREHOUSE mark.”
It is true that the trademarks in The Carphone Warehouse case are composed of common words, which together with lack of knowledge could have been a convincing argument for good faith registration. However, the common words in this case – which separately would have minimal protection – in combination strengthen the mark and shifts the burden to the respondent to explain why it selected that name and non other for its business.
The Panel notes that the Respondent in The Carphone Warehouse was also the Respondent in mVisible Technologies Inc v. Navigation Catalyst Systems Inc., D2007-1141 (WIPO November 30, 2007) “and has been a respondent in other panel decisions under the Policy.” As such it
could hardly have failed to appreciate that this administrative proceeding is not concerned with whether or not United States trade mark law would permit the Complainants to stop others from using their CARPHONE WAREHOUSE and PHONE HOUSE marks in commerce in the United States.
Further downgrading the Respondent's arguement, the Panel notes that the “Internet is worldwide, and the application of the Policy in a case such as this is not restricted to matters affecting commerce in the United States of America.”
Due Process, Naming the Right Respondent
Dispute Resolution Service Providers are responsible for reviewing the complaint for compliance with Rule 2 of the Rules of the Policy which includes obtaining verification from the registrar that the complainant has properly identified the registrant and his or her contact information. Rule 5 of the WIPO Supplementary Rules expressly sets out the requirement. The primary concern is due process. The respondent is entitled to receive actual notice of the proceedings, not only from the complainant under Paragraph 2 of the Rules, but also from the Provider after it has certified complaint compliace.
The lengths to which panelists go, their fastidiousness in examining the file for due process compliance is illustrated in 322 West 57th Owner LLC v. Administrator, Domain, D2008-0736 (WIPO August 6, 2008). See Daily Note for August 13th discussing a substantive issue in the case. Due process was also brought up in another recent case, Atrium Medical Corporation v. Emin Keklik, FA0803001172416 (Nat. Arb. Forum June 18, 2008).
In 322 West 57th the “the Center requested confirmation from the Registrar as to whether [it] received a copy of the Complaint from the Complainant and to confirm contact and registrant information set forth in the Complaint relative to the disputed domain name.” It
also requested the Registrar to specify, for the domain name: (a) whether the Policy applies to the name, (b) whether the registrant has submitted, in its registration agreement, to the jurisdiction at the location of the principal office of the registrar for court adjudication of disputes concerning or arising from the use of the name, (c) the language of the registration agreement, and (d) whether the name will remain “locked” during the proceeding.
The registrar’s initial response identified registrant as the party appearing in the WHOIS directory, who turned out to be a proxy. The proxy informed the Center “one day before the expiration of the response period and as such rather late in the process” that it was merely a reseller of domain registrations and that the actual registrant was Ms. Jansson a resident of the Sheffield (a residential building currently being sponsored by the Complainant for conversion to a condominium) who was shielding her name under a privacy agreement. Ms. Jansson's website is less than complementary of the sponsor and its sales tactics. The Panel explains that
Inasmuch as Respondent C/O Mecca Hosting identified Respondent Jansson to the Center on June 17, 2008 –one day before the expiration of the response period and as such rather late in the process, apparently Respondent Jansson was never formally notified of this administrative proceeding and served with the Complaint by either the Complainant or the Center. Thus, Respondent Jansson, due to her rather late identification as the actual registrant, was effectively denied an opportunity at that time to participate in this proceeding.
Implicit is that the Respondent not be prejudiced by delay in receiving process. Providers’ failure to comply with the service rules, inadvertent or not and discovered after submission of the file to the Panel and even if it causes delay in the proceedings, must be corrected. Atrium Medical, supra. The remedy, rejected by the Panel in 322 West 57th, would be to restart the proceedings and require a refiling of the response. However, he made a procedural ruling that “in spite of the delay with which [Ms. Jansson’s] Response has been filed [he] has nevertheless accepted and fully considered her Response. Given this, the Panel sees no valid reason to require the Center to restart this administrative process.”
There have been a number of recent cases involving two to five letter domain names accused of violating the Policy. The history is mixed, but there is a lesson for a losing complainant. Two recent examples are interesting, one for which the complainant was successful, Deutsche Lufthansa AG v. Future Media Architects, Inc., FA0802001153492 (Nat. Arb. Forum April 17, 2008) (<lh.com>, transferred over dissent), and the other not, Museum of Science and Industry v. Sam Wilkinson, FA0806001211341 (Nat. Arb. Forum August 12, 2008) [<msichicago.com>]). The Respondent in....
Proving Lack of Rights or Legitimate Interests
The ease or difficulty of a complainant’s middle burden of proving that the respondent has no rights or legitimate interests in the domain name depends upon the classification of the trademark. The evidential demands are proportional to the trademark's fame or presence in the marketplace. The greater the fame or presence the less evidence necessary to shift the burden; vice versa where there is less fame or presence. For famous or well known trademarks simply denying that the respondent has permission to use the trademark is prima facie proof that the respondent has no rights or legitimate interests in the domain name. The burden having shifted, the respondent's evidential rebuttal must be of a higher quality to prove its rights or legitimate interests in domain names identical or confusingly similar to famous or well known trademarks.
These observations about the quality of evidence are illustrated in Perpetual Motion Interactive Systems Inc. v. NameBubble LLC, FA0806001212590 (Nat. Arb. Forum August 13, 2008). The Complainant alleged ownership of a three-letter trademark, DNN. The Respondent, a bulk registrant, had purchased the domain name a few months earlier for $14,000 and was allegedly preparing to use it – but would give up this intention if the Complainant wanted to buy it for $60,000. The Complainant (no doubt outraged by the sticker price) simply alleged that the Respondent had no right or legitimate interest in the domain name because it “is not being used for any legitimate purpose. It merely purports to be the site of the ‘Domain Name Network’ and states that it is ‘under construction’.” That was not enough.
The Panel pointedly noted that it “does not share the Complainant’s view that Respondent has the burden of proving legitimate rights or interests.” The shift of burden to the respondent does not relieve the complainant of its own burden. The complainant must still support its claim by a preponderance of the evidence, but it gives the respondent the opportunity to rebut the prima facie evidence. At minimum, this can consist of an explanatory rebuttal; maximally, the respondent can offer irrefutable proof of its rights or legitimate interests. The Respondent in Perpetual Motion Interactive alleged a defense under ¶4(c)(i) of the Policy – “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 in connection with a bona fide offering of goods or services” – but its evidence consisted of a one page outline of its intentions for the website. The Panel stated that while it
shares Complainant’s view that the threshold to demonstrate preparations to use the disputed domain name in connection with a bona fide offering of goods or services ... has to be higher than submitting a single, unpublished, and undated page with almost no content ... the situation at hand[] goes further: The domain name is comprised of a generic acronym, consisting only of three letters which is also used by several third parties and which correspond as initials to the name for the website intended by Respondent; this name, “Domain Name Network,” again, plausibly corresponds to Respondent’s business, the trade in domain names; the time frame between Respondent’s registration of the disputed domain name and the notice of the Complaint is indeed short, so that the lack of an active website is of little relevance.
The problem, evidently not anticipated by the Complainant, is that its trademark neither famous nor well known is in a less protectable category requiring more proof than it could possible marshal at this time.
Revisiting Consent to Transfer (See Comment, Rejecting Respondent’s Consent to Transfer and Finding Bad Faith):
Texas International Property Associates - NA NA has the dubious distinction of being a serial cybersquatter with over a hundred claims against it. Its modus operandi much detailed through numerous cases is to evade returning the domain name until it has to and then in an act of piety consents to transfer. The delaying tactics have been reviewed and condemned. Some panelists have seen through these shenanigans; some either have not or ignore it and accept the consent, as in the latest episode, WD-40 Company v. Texas International Property Associates, D2008-0876 (WIPO August 6, 2008).
In Messe Frankfurt GmbH v. Texas International Property Associate, D2008-0375 (April 29, 2008) the Panel rejecting the Respondent’s request to terminate the proceedings without a decision, stated:
[I]n cases of this type it would be contrary to the spirit and intent of the Policy for a party to use the expedient of offering to transfer the disputed domain name at the last minute, in order to avoid a decision on the merits and thereby minimize the risk of adverse findings/comments.
This conduct, the Panel stated, is particularly egregious
where that party appears to have done the same previously and where the purpose of the step appears to be to circumvent the Policy. In the instant case the Panel infers that the purpose of this strategy is not only to delay the inevitable... but also effectively to thwart the Policy (where patterns of questionable conduct have always been relevant) and that this is an abuse of process and a further indication of bad faith conduct.
Within less than a one week span, August 8 to 13, the Nat. Arb. Forum reported 6 “claim denied” decisions. Not what one is used to seeing. The Complainants lost for a variety of reasons: in the first, it failed to prove that the Respondent lacked rights or legitimate interests in the domain name (Mattel, Inc. v. Konstantinos Zournas, FA0806001203398 (Nat. Arb. Forum August 8, 2008) [<barbitwins.com>]) ; in the second, the pleadings raised an issue that was outside the scope of the Policy (Halliburton Energy Services, Inc. v. M2 Polymer Technologies, Inc., FA0806001212731 (Nat. Arb. Forum August 11, 2008) (<baraclear.com>)]; in the third, it failed to prove common law rights in an acronym (Museum of Science and Industry v. Sam Wilkinson, FA0806001211341 (Nat. Arb. Forum August 12, 2008) [<msichicago.com>]); in a fourth, it failed to prove that the domain name was identical or confusingly similar to the trademark and even if it had, the Respondent proved that it had a legitimate interest in the domain name, actually dozens of them (Slide, Inc. v. SLIDETV.com, Inc. c/o Marketing Department c/o Daniel Bryan, FA0806001212529 (Nat. Arb. Forum August 13, 2008) [<slidetv.com>]); and in the fifth and sixth, they failed to prove bad faith registration (MNM Media LLC v. leftlane.com, FA0806001211465 (Nat. Arb. Forum August 12, 2008) [<leftlane.com>] and Compudata S.A. Corporation v. Gilbert Melgar, FA0806001211478 (Nat. Arb. Forum August 12, 2008) [<multiscan.com]).
Respondents appeared in all but the last case. Except for the second case which raised an issue outside the scope of the Policy, whether a registrant is contractually required to return the domain name after the expiration of its contract, and the third in which the Complainant was unable to satisfy its burden on the threshold element, the others offered persuasive explanations or defenses to the claim of abusive registration. The two most amusing are Mattel and MNM Media. In Mattel (trademark, Barbie), however
The Barbi Twins are 2 women named Barbi that were born as twins. “Barbi Twins” are widely known in the adult entertainment and references on them can be found in thousands of websites on the Internet and on numerous magazines. <barbitwins.com> displays adult links, so in the adult context no visitor would assume that there has been a misspelling.
In MNM Media the Complainant registered the trademark LEFT LANE after the Respondent known as “leftlane.com” inadvertently abandoned it. However, the domain name was registered years prior to the Complainant commencing business using the trademark. The Panel held that “the fact that the LEFTLANE.COM trademark registration was allowed to lapse has no bearing on continued use of the <leftlane.com> domain name in connection with the Respondent’s business.”
Worth noting in the Compudata case, although the Respondent filed a timely Response it was in electronic format only, therefore decreed incomplete under ICANN Rule 5 and not considered in the decision. The Complainant alleged that the domain name resolved to a landing page of “jibberish.” However, I went to <multiscancorp.com> today and found that the domain resolves to a professionally developed website for a trading company established in 1998 offering numerous services to local Philippine government units and agencies. Ergo, this appears to be one of those cases in which two business entities adopted the same name, the Complainant by registering it as a trademark and the Respondent by using it as a tradename.
322 West 57th Owner LLC v. Administrator, Domain, D2008-0736 (WIPO August 6, 2008) (<sheffield57resident.com>)(complaint denied) has two issues worth comment, one procedural (administrative responsibilities and privacy) the other substantive (exercising free speech). I'll briefly note the substantive and leave the procedural for another day. The unnamed registrant is a “resident” of the Sheffield, a residential building in New York City that the Complainant is sponsoring to convert to condominium ownership.
Panelists’ views about “gripe” sites in the form of <trademark.gTLD> have a mixed history. They range from Monty and Pat Roberts, Inc. v. Bill Keith, D2000-0299 (WIPO June 9, 2000) (<montyroberts.net>)
In the instant case, the Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant ... . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.
to Howard Jarvis Taxpayers Association v. Paul McCauley, D2004-0014 (WIPO April 22, 2004) (<hjta.com>)
***although there has been a split even in the United States, in this Panel's view, the weight of authority suggests that a consensus is emerging that trademark.TLD domain names, when used for U.S.-based criticism sites, can constitute a legitimate interest, especially if there are not other indicia of bad faith.
This dialogue continues in 322 West 57th Owner LLC. The website to which the domain name resolved is critical of the Complainant. However, the Panel concludes that “[w]hile the addition of the term “resident” is insufficient to distinguish the disputed domain name from the Complainant’s mark for purposes of assessing confusing similarity, it suffices here to dramatically change the meaning, identification or overall impression of that name, in the minds of ordinary Internet users, from that associated with the mark itself, SHEFFIELED57.” Further,
use of a non-pejorative term, in conjunction with a mark, may well suffice to sufficiently distinguish the meaning, identification or overall impression associated with the resulting domain name, when used as an address of a website solely providing commentary of any sort, whether critical or otherwise, from that associated with the mark itself so as to avoid confusion and ultimately disparagement of the mark, and thus legitimize the use of the name as fair use under paragraph 4(c)(iii) of the Policy.
Neither the Howard Jarvis (“even if libelous [] is not prohibited by the Policy”) nor the 322 West 57th Owner (“no need, despite the Complainant’s fervent allegations and arguments to the contrary, to opine on such issues”) Panel had any interest in opining about the truthfulness of the messages. Tort claims have to be challenged in a different forum.
One of a complainant's investigative tools in developing its case (and no less useful for the Panel in confirming information about the website) is researching the history of the pages on The Internet Archive (“IA”) (http://www.archive.org). IA is a public nonprofit company dedicated to building an Internet Library. To take a recent example, the usefulness of the archive can be seen in Research in Motion Limited v. Louis Espinoza, D2008-0759 (WIPO July 23, 2008). The Complainant annexed to the complaint an image of a website to which <blackberrycoach.com> resolved. The Panel found that “it contained references to podcasts and other items that appear to relate to versions of computer software. There is no reference to the alternative meaning of ‘blackberry’ as a fruit” from which the Panel inferred that the domain name was registered not to extol the fruit but to take advantage of the Complainant’s trademark.
A well persented overview of IA's mission and well worth reviewing again is the Panel's discussion in The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], D2007-1438 (WIPO December 18, 2007) (unanimous 3-member panel). IA collects web pages and “[l[ike a paper library ... provide[s] free access to researchers, historians, scholars, and the general public.” In late 1999, IA started to build better-rounded collections using Alexa to crawl the web. With its Way-Back Machine -– a device that displays the web as it looked on a given date – anyone can have literally a window on the past. However, “Alexa respects robots.txt instructions [not to crawl a particular site], and even does so retroactively” thereby preventing the researcher from discovering targeted pages. The anecdote to this is drawing a negative inference against the respondent supporting the truth of a complainant’s “reasonable factual allegations ... as to the historical use of the web site to which the domain name at issue resolves ... and that the use of robots.txt in the particular case may be considered as an indicia of bad faith.”
Archived pages from IA have been accepted as reliable proof of web images in UDRP proceedings. The E.W. Scripps Company v. Sinologic Industries, D2003-0447 (WIPO July 1, 2003) (“On the balance of probabilities, the Panel holds that they are accurate records of the home page accessed by the domain Name on those dates.”). A federal magistrate ruled IA snapshots admissible as “an admission of a party-opponent and are not barred by the hearsay rule,” Telewizja Polska USA, Inc. V. Echostar Satellite Corp., No. 02 C 3293, 2004 WL 2367740, at *5 (N.D. Ill. October 15, 2004); also, Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 535 (2d Cir. 2005) (evidence of defendant’s Web site advertisements presented through archive.org capture of the site content at particular time).
Reclaiming lapsed domain names is particularly problematic for trademarks that make few ripples in the marketplace, although easier for those that are famous or well known. How is the registrant to know that the availability of the name is due to trademark owner's negligence in protecting its property and not abandonment? What is the registrant's duty? “Normally those who sleep on their rights do so at their peril,” Official Pillowtex LLC v. Smadar Zangi, FA0411000366168 (Nat. Arb. Forum January 6, 2005).
Offsetting this position is the view expressed in World Wide Commerce Corporation v. WebContents, Inc., FA1124467 (Nat. Arb. Forum February 13, 2008). The Panel noted that “[w]hile it is clearly recognized that anyone has the right to purchase and make immediate or planned use of an available, non-confusing domain name that is legitimately offered for sale,” it is also true that the expression
“finders, keepers-losers, weepers” ... quaint and classic [though the saying may be] ... 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.
Fitting “one of the preferred categories” is an evidentiary hurdle, however, as the Complainant discovered in Promatic International Limited v. Name Administration Inc., D2006-0673 (WIPO July 19, 2006) (<promatic.com>). The Respondent pointed out that the Complainant did not have a trademark to which the domain name was identical or confusingly similar. It owned a device mark rather than a word mark registration. The case is instructive because it shows the Panel’s close attention to the evidence; what is offered and what withheld. The Panel expressed concern that “the Complaint failed to describe the Complainant’s trade marks accurately....”
What emerges in Promatic is that the Complainant has to do more than simply complain that the Respondent used an automated program to pick up its lapsed domain name. One of the questions much in dialogue among panelists after automated programs began scooping domain names is whether respondents have “a duty to conduct a search to check that the domain name in issue is not a trade mark of a third party.” The answer is “no,” unless there is “evidence that the domain name was registered (whether automatically or otherwise) ... [because] of any goodwill or reputation that the Complainant has built up in the name.” This points to the kind of evidence that must be offered, in Promatic omitted, if the complainant is to prevail.
Against a complainant who abuses the UDRP procedure – a recent example being Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, D2008-0641 (WIPO July 31, 2008), who argued entitlement to the domain the registered years before because it had applied for a trademark of that name and wanted it for its business – the only penalty in a panelist’s quiver is
Nominet updated its UK Dispute Resolution Service from July 28, 2008. One of the major changes defines “Abusive Registration,” or rather what it is not. Domaining is not in itself an Abusive Registration. Paragraph 4(e) of the Policy reads:
Sale of traffic (i.e. connecting domain names to parking pages and earning click-per-view revenue) is not of itself objectionable under the Policy. However, the Expert will take into account: the nature of the Domain Name; the nature of the advertising links on any parking page assocated with the Domain Name; and that the use of the Domain Name is ultimately the Respondent's.
Interesting to note is that the evidence that the Expert is to take into account is consistent with the decisions coming down from WIPO and the National Arbitration Forum. In Solon AG v. eXpensiveDomains.com Project, D2008-0881 (WIPO August 1, 2008), for example, in response to the Complainant's view that "domain name dealers are cybersquatters because they acquire domain names without any intention of making any genuine active use of them and for no reason other than to sell them on at a profit," the Panel stated
That is not the definition of a cybersquatter envisaged by the Policy. While domain name dealing carries with it the disadvantages to which the Complainant has drawn attention, it is of itself a lawful activity in most countries and it is not, of itself, a vice at which the Policy is directed.
See Comment Should High Volume Registrants Be Held to a Higher Standard of Diligence?
Reflecting on another, not uncommon failing – see yesterday’s Note on the complainant who imagined he possessed a trademark but offered no proof of it – today’s Note highlights parties lacking persuasive proof that they had any right to the relief requested. This is not a failing particularly associated with UDRP parties, although it is far from rare even when represented by counsel. A number of parties in recent trademark cases in other forums have similarly failed (or erred) in supporting their contentions and it may be useful to put three examples on the table for a quick autopsy. What did the parties and their counsel not do right?
Body 1: John Walsh reports on TTABlog® a recent case, Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (July 15, 2008) [precedential] in which the Opposer failed both to properly introduce its trademark registrations or provide evidence establishing common law rights in its mark from a date prior to the Applicant’s filing date. The Board was impatient with both sides for their evidential failings and errors. On balance, however, “even if the applicant admitted opposer’s use [of its mark] on some goods, it [was] ultimately of no help to opposer, because opposer has not proven (nor has applicant admitted) when such use commenced.” Consequence: The Board dismissed the opposition for lack of priority.
Body 2: In Vail Associates, Inc. v. Vend-Tel-Co, Ltd, 2008 U.S. App. LEXIS 2782 (10th Cir. 2008), a case brought under the Lanham Act for trademark infringement, the Court had this to say about the plaintiff’s evidential failings:
By now we know the record contains little credible evidence of actual consumer confusion between the alphanumeric number 1-800-SKI-VAIL and the word Vail. We know the evidence has not established VA’s Vail mark as particularly strong. ... We know the sight, sound, and meaning of the two marks are not irrefutably similar. ... We know consumers exercise a high degree of care when planning ski vacations, mitigating confusion that might initially exist between the marks.
And in a risible footnote to the last sentence in the quote, the Court noted that
14 Indeed, at oral argument, counsel for VA, who no more wanted to talk about the record evidence than a hog wants to talk about bacon, opined that VA would be well within its rights under the Lanham Act to pursue claims of mark infringement against such retailers, merchants, and innkeepers. According to counsel, VA declined to do so only as a “matter of policy.”
Body 3: The Complainant in Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, D2008-0641 (WIPO July 31, 2008) argued that although the Respondent had registered the domain name years prior to its application for a trademark (it had not even at this date progressed to registration) the domain name should “no longer” be registered by the Respondent because it had a better right to it. The Complainant (represented incidentally by a major law firm) failed dismally to understand the legal underpinning for abusive registration. It is not abusive to have registered a domain name which a complainant subsequently argues is identical or confusingly similar to its recently possessed trademark. Consequence: the Panel not only denied the complaint but it issued an order of Reverse Domain Name Hijacking.
Construing the Threshold Requirement
The Panel in Tanner Gould d/b/a Rhythm Motor Sport (RMS USA) v. Daniel Lundberg, FA0806001198556 (Nat. Arb. Forum July 31, 2008) highlights two interconnected threshold factors in determining compliance with Paragraph 4(a)(i) of the Policy (<rms-usa-fraud.com>), namely the dual, inseparable requirements linking identity or confusing similarity and trademark rights. The Complainant complained that the “only difference between the domain name and the mark is that the Respondent attached the word ‘fraud’ to Complainant’s mark,” implying that the criterion for jurisdiction was identity or confusing similarity. The Panel, however, explained that the Complainant “misses the mark [pun no doubt intended]”:
The issue is not whether the disputed domain name is identical or confusingly similar to Complainants domain name, but rather as posed by ICANN, whether “your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.”
If the Complainant had rights, the Panel would have moved on to consider whether the Respondent met its burden under Paragraph 4(c)(iii) in exercising free speech, which the term "fraud" implies. Low though the bar may be for complying with Paragraph 4(a)(i) there still has to be some proof that the complainant owns a trademark. This burden is heavier when the alleged trademark is based on common law principles.
Complainant’s proof, such as it was, which failed to include any evidence that it had common law rights, showed that it had filed RHYTHM RACING MOTORSPORTS with the Arizona Secretary of State as a trade name rather than as a trademark or service mark. The Second WIPO Report, subtitled Internet Domain Name Process: Recognition of Rights and the Use of Names in the Internet Domain Name System, dated September 3, 2001, discusses personal names, trade names and geographic identifiers. Personal and trade cognomens and identifiers are expressly barred from the protective jurisdiction of the UDRP unless the complainant has achieved recognition in the marketplace as the source of goods or services.
Since the best that the Complainant could do was to prove that it had a registered trade name it failed the threshold test and the complaint was dismissed.
It is a mistake not uncommonly made by a complainant whose business and trademark came into existence in Year 5 and who discovers that someone else beat it to the domain name in Year 1 to believe that it has a superior right and is the victim of an abusive registration. This is the story in Pedro Amador Lopez v. Visel Ce, D2008-0671 (WIPO July 21, 2008) (<autocoaching.com> The WIPO Overview of WIPO Panel Views on Selected UDRP Questions summarizes the consensus as follows:
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right. …
As the Overview also reports, the conclusion may be different if the complainant shows that the respondent acquired the disputed domain name at 11:55 p.m. of the last day of Year 4 at or around the time there was significant publicity of the complainant’s business being launched. This was the story in Ustream.TV, Inc. v. Vertical Axis, Inc., D2008-0598 (WIPO July 29, 2008) (<ustream.com>) discussed in yesterday Daily Note.
In Pedro Amador Lopez, the respondent was the original registrant using its domain name to deliver information on auto and coaching. Complaint denied.
Eric Goldman has posted a copy of a Decision and Order in Verizon California Inc. v. Navigation Catalyst Systems, Inc. et al. (CD CA, June 30, 2008) granting Verizon’s motion for preliminary injunction enjoining Defendants from registering or using any domain name identical or confusingly similar to [a specified number of marks].” Defendants employ an automated registration system to “reserve” domain names during the “Add Grace Period” which captured numerous typographical variations of Verizon’s marks. The Court expressly did not enjoin Defendants forbidding automatic registration, which “would essentially have shut down Defendants’ business completely.”
Navigation did not challenge Verizon's allegation that the domain names in issue were “confusingly similar” to its marks. Rather, it argued that its “reservation” of domain names did not amount to a “registration” as required under the ACPA. The Court disagreed: “There is nothing in the statute that defines 'registration' as complete only upon payment, and Defendants have pointed to nothing to show that Congress intended 'registration' to hinge on payment. Further, 'reserving' versus 'registering' is a distinction without a different -- either here entitled Defendants to the exclusive control and use of the names at issue, at least for some period of time.”
Further on domain name tasting, go to
http://www.domainnamenews.com/miscellaneous/icann-board-resolution-kills-domain-tasting/1689, ICANN Board Resolution Kills Domain Name Tasting.
The Respondent in Ustream.TV, Inc. v. Vertical Axis, Inc., D2008-0598 (WIPO July 29, 2008) (<ustream.com>) committed a number of errors compounded by its falsely stating when it acquired the domain name. In its initial declaration, the Respondent stated that it registered the domain name years prior to the Complainant’s first public use of its mark which, if true, would negate registration in bad faith and require dismissing the complaint.
The acquisition date is therefore critical in determining bad faith. In a second declaration the Respondent amended its assertion by giving a date closer to the Complainant first public use of its mark, but still prior thereto. A party’s credibility is always a factor in weighing its testimony. In this case, the majority found that the Respondent’s “shifting story ... [to be] inherently incredible.” Important in reaching this conclusion was the Respondent’s “failure to provide a compelling explanation for why its first declaration was materially incorrect ... [which] smacks of being a post-hoc justification for a date just prior to the date the Complainant began public use of its mark.” It could have been expected “to provide a compelling explanantion” because, after all, only it knows the true facts of its acquisition.
Therefore, in weighing credibility panelists take into account a variety of factors, among them in this case was the Respondent’s use of a privacy shield and its “reputation as a serial registrant of domain names that cybersquat on others’ trademarks.” The majority explained that the privacy shield factor rose to significance because “the Complainant’s prima facie showing that the Respondent registered the disputed domain name after the Complainant publicized its prospective Ustream.TV services” and its explanations were “inherently incredible.”
There was, as the dissent pointed out, a paucity of evidence on the issue of acquisition which should be read against the Complainant because it had the burden of proving bad faith. The majority in footnote 6 disagreed:
Although the dissent finds that the burden was on the Complainant to prove when the Respondent registered the disputed domain name given the absence of any information about the ownership since February 2005, the majority of the Panel holds that, given that the date when the Respondent registered the disputed domain name is uniquely within the Respondent’s knowledge and control, it was sufficient for the Complainant to make a prima facie showing and for the burden of production to then shift to the Respondent. Here, the Complainant met that burden ....
Significant here is the emphasis on the registration being “uniquely within the Respondent’s knowledge and control.” It chose not to disclose when it acquired the domain name. Interestingly, the “Wayback Machine at “www.archive.org” shows that there were archived pages from 2003 through February 2005, and then there were no archived pages again until March 2007, which, as the dissent acknowledges, is after the spate of publicity the Complainant received in February 2007. These facts, though hardly conclusive, further support the inference that the disputed domain name was unregistered (or at least unused) during the period between February 2005 and March 2007.”
The Complainant in CeWe Color AG & Co. OHG v. Shenbun Limited, D2008-0810 (WIPO July 10, 2008) (<cewe.net>) received a nasty shock on learning that the word it is using as a trademark and believed was arbitrary, which perhaps it is in German, is also a “slang word in the Bahasa Indonesia language meaning ‘girl or young woman’ that the Respondent had chosen for its domain name.
The Panel held that “the Respondent has been able to demonstrate to the satisfaction of the Panel that it is the proprietor of other domain names featuring words in the Bahasa Indonesia language, being words associated with girls and young women and the registrations dating back to 2003 and 2004. Accordingly, it is not as if the Domain Name is an isolated example.” This suggests that the decision may have been otherwise if this particular domain name were an isolated example.
The determinative question in cases involving common or dictionary words is whether the respondent had knowledge, or could at the time of registration have had any awareness of the complainant or its mark. The equation is, If no knowledge then no bad faith registration. The complainant’s burden is heavier where its market is on one side of the world and the respondent is on the other side. It must be able to show that it has a market presence in the country in which the respondent lives. In this case, the Panel stated that it had
examined carefully the Respondent’s denial as to any knowledge of the existence of the Complainant at time of registration of the Domain Name. As indicated in Section 4 above, the evidence put in by the Complainant as to the nature and scope of its business is sparse in the extreme, so it is not reasonable to infer that the Respondent must have known of the Complainant at that time. The Complainant’s trade mark registrations in existence then seem to have been exclusively European and primarily German, so the Panel assumes that the Complainant’s business was primarily domestic/European at that time and not therefore one of which an Asian based individual or company need necessarily have been aware.
Accordingly, the complaint was dismissed.
New Comment, Unilateral Consent to Transfer; Respondent's Motivation
Rule17(a) of the Rules of the Policy read, “If, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.” Consent to transfer takes two forms: 1) The respondent unilaterally agrees to relinquish its registration; and 2) the parties mutually agree...
Similar Facts; Different Results
National Arbitration Forum reported two cases by The Great Atlantic & Pacific Tea Company, Inc. decided the same day, yesterday, July 31st, that came to opposite results. The one in which the Complainant lost, against RareNames, WebReg for <foodemporium.net> (FA0806001204243), the Respondent, a high volume registrant, appeared and aggressively defended itself from the imputation of bad faith. In fact, the Respondent's Vice President, indignantly swore in her affidavit that
We have developed proprietary technology to help us comply with our corporate policy of registering and maintaining only those domain names that incorporate common words or phrases, descriptive terms, and/or words to which we consider no single party has exclusive rights....
Rare Names used the same aggressive defense with less success in, among other cases, Orchard Supply Hardware LLC v. RareNames, Web Reg, FA0804001178941 (Nat. Arb. Forum June 27, 2008).
The other case, against Belize Domain WHOIS Service Lt c/o Whois Service for <foodemporium.org>(FA0806001204908), the Respondent defaulted. Consequently, there is no substantive counter-factual information about the Respondent, although had it appeared it may have been able to mount the same successful argument as Rare Names.
In New York City, the name FOOD EMPORIUM or THE FOOD EMPORIUM has been around a long time, but Rare Names (an irony in that it deals not in “rare names” but common ones) is located in Massachusetts and denied by fulsome affidavits any knowledge of the Complainant’s registered mark. However, that may be, this appears to be another case in which the trademark owner failed to police its intellectual property [See, Sun Studio Entertainment, Inc. discussed below July 28] and there was a sufficient basis for leaving the domain name with the Respondent. Rare Names registered the domain name in 2000. Although the Complainant did not register its trademark until 2002 it had been in use since 1980. But for the timing of the registration and the lapse of time before commencing a proceeding, there is a question in this class of case whether the Respondent should have been held to a higher standard. See Comment, Should High Volume Registrants Be Held to a Higher Standard of Diligence?
Smith & Nephew plc , the protagonist in a proceedings against Wesley Perkins, Smith and Nephew Trading, D2008-1029 (September 8, 2008), is a company with a 150 years history. The antagonist sought to justify the registration of <smithandnephew.com> by pretending to be a business entity with the same name. “The Response [states the Panel] is signed by ‘Mark Smith.’ It contends that ‘Smith and Nephew Trading’ is the business of sole proprietor ‘Mark Smith’ who runs that business with his nephew ‘Paul Smith’.” Skipping over the evidential problem whether such a business even existed – the Respondent submitted no evidence that it did and was indignant that anyone would question the truth of its assertion – it offered an argument that shows incomprehension of distinction between trademark and domain name law. “On the question on confusing similarity the Response asserts that the Complainant has no trade mark rights in relation to the goods in which ‘Smith and Nephew Trading’ is said to trade.” However, the test of confusing similarity under ¶4(a)(i) of the Policy simply involves comparing the domain name with the trademark.
“Likelihood of confusion” when it appears in ¶4(b)(iv) of the Policy is a test to establish whether the respondent has registered and is using the domain in bad faith. If there is proof that the domain is being used in an intentional attempt “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,” then the domain was registered and is being used in bad faith. The interpretation of “likelihood of confusion” in this context reprises the trademark standard but offers less analytical elaboration than found in federal cases.
Virtual space compresses the World into a single community in which domain names and trademarks jostle each other. The greater the similarity between domain name and mark the greater the likelihood that Internet users will be confused about the source of goods and services. While the trademark model allows concurrent uses of the same name that are non infringing, the cyberspace model has no “different geographic area.” Regardless of the classification of its goods or services only one entity at a time can be present in the same alphanumeric space. The trademark model is explained in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1026, 1054 (9th Cir. 1999): “Even where there is precise identity of a ... mark [used by two persons], there may be no consumer confusion – and thus no trademark infringement – if the alleged infringer is in a different geographic area or in a wholly different industry.” In contrast, the domain name model is indifferent to classes of goods and services and imposes a different set of tests for ownership.
The Respondent in Smith & Nephew fails to understand the distinction between the two models. Even if there really was a business called ‘Smith and Nephew Trading’ purveying goods in a different Class than the Complainant’s its choice of domain name would still confuse the consuming public and violate the Complainant’s rights in its trademark. The domain name model merely asks the complainant to prove that it has a right to invoke a remedy under the UDRP; that the respondent has no rights or legitimate interests in the domain name; and that the respondent registered and is using the domain name in bad faith. If the evidence supports a conclusion that the domain name was chosen to capture traffic from Internet users looking for the complainant by diverting them to a third party website then the registration and use are in bad faith.
Common Words; Distinct in Combination
Lacking direct evidence of a respondent’s motivation for registering a domain name identical or confusingly similar to a complainant’s trademark its intention can be inferred from the composition and content of the website. This was observed in an earlier Note on The Royal Bank of Scotland Group plc v. TA Funds c/o Kison Patel, FA0807001218036 (Nat. Arb. Forum September 17, 2008) (<mintbanks.com>). If the website had been dedicated to herbs it might have passed the legitimacy test, but the addition of the word “banks” and its use as a search page for financial services were the facts from which the Panel deduced that in registering the domain name the Respondent intended to target the Complainant’s trademark.
Common words as domain names used for their dictionary value are legitimate absent proof of targeting. The principle is based on the concept that a trademark owner's monopoly does not extend to a dictionary word unless the word has evolved into a famous mark, like SWATCH, RITZ, VOGUE, STAPLES and FLEET. However, mimicking a combination of common words for a domain name that is identical to a complainant’s trademark – “health”, “studies” and “institute” for example – is only legitimate if it forms a generic expression or descriptive phrase and, then, only if it is chosen without reference to another's trademark. To argue otherwise would be at odds with the anti-dissection principle of trademark law.
Texas International is one of the more familiar actors on the UDRP stage. As the Respondent in Health Studies Institute, Inc. v. Texas International Property Associates, D2008-1012 (WIPO September 22, 2008) it chose for its domain name <healthstudiesinstitute.com>, the three separate common words of the Complainant's name – one of its standard ploys – which is also identical to the Complainant’s trademark. It used the domain as a link farm for dental continuing education providers, as well as to third-party websites relating to other, more general health education. Link farms can be a bona fide use of a domain name, but in this case the sites included links to the Complainant’s competitors. Of note in this case, however, is the Respondent’s contention that the Panel cannot “infer [that is, she is not authorized to deduce] that the Respondent targeted the Complainant in adopting the disputed domain name unless there is evidence that the Complainant’s mark is inherently distinctive or famous.” But, of course, exercising deductive reasoning is a staple of legal and logical analysis. It applies in unopposed as well as opposed records. The fact that the sole reference to inference in the Rules of the Policy is in the context of an event of a default – Paragraph 14(b) of the Rules of the Policy authorizes panelists to draw “such inferences ... as it considers appropriate” – the procedure is not read by panelists as being a limitation on their power. Drawing inferences from a factual matrix is what judges are expected to do.
In Health Studies Institute, the Panel rejected the Respondent’s contention that no negative inferences can be drawn unless the trademark as a combination of common words is distinctive or famous. It held that
While the inherent distinctiveness or fame of a trademark may create a presumption that a later domain name comprising or including it was registered with the trademark in mind, an inference of targeting may also be drawn from other circumstances surrounding a respondent’s adoption or use of a domain name. In particular, under paragraph 4(b) of the Policy the Panel is entitled to infer both bad faith registration and bad faith use in certain circumstances which, in particular but without limitation, are to be construed as evidence of both.
The Respondent also argued and the Panel rejected the contention that because the disputed domain name consists of generic, descriptive terms it had a right or legitimate interest in it. The fallacy of this contention is that “the words ‘health studies institute’ are more than a single, generic term...; they are a three-word combination that does not directly describe the provision of continuing professional education in the field of dentistry, the Complainant’s main field of activity.” Moreover, “the use made of the disputed domain name is calculated to mislead Internet users into accessing a website that appears to be that of, or related to, the Complainant.... As such, it is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(1) of the Policy, and confers no right or legitimate interest in the disputed domain name.”
A Laches Defense Under the ACPA
Laches does not apply against the complainant in a UDRP proceedings, at least not through the front door. However, the doctrine is applicable in an ACPA lawsuit. In Southern Grouts & Mortars, Inc. v. 3M Co., 07-61388-civ (USDC Southern District of Florida (September 17, 2008) 3M acquired the disputed domain name, <diamondbrite.com> in 2000 when it purchased the assets of the company that registered it. SGM dilatorily served notices on 3M and was even more laggard in follow them up. It finally commenced a trademark infringement and cybersquatting action in 2007. This case was brought to my attention by Williamette Law On-Line (September 15 - 19, 2008).
The court noted that “many ACPA claims are ‘continuing-harm claims. That is, the alleged infringer or cybersquatter continues to possess and use the domain name in violation of the ACPA.” However,
“While this continuing-harm argument may prevent application of a statute of limitations defense, laches is an equitable defense that can bar a claim even if the statute of limitations has not run; and both the nature of the claim and the situation of the parties was such as to call for diligence.” (Citing Holmberg v. Armbrecht, 327 U.S. 392, 396 (1946)).
The court held that SGMs action was barred by laches. “Plaintiff knew about 3M’s ownership and non-use of diamondbrite.com as early as July 16, 2002. SGM did not file suite until September 27, 2007, and ... nothing occurred in the interim to excuse or toll any of the more than five years that lapsed.” Moreover,
While memories and evidence regarding the more recent re-registrations are not likely to be significantly effected, SGM failed to controvert 3M’s contentions in its Statement of Material Facts that the re-registrations were simply done as both routine company policy, and to protect one of 3M’s trademarks, DIAMOND GRADE.
To prevail on the defense of laches, the plaintiff must prove prejudice, of which there are two forms, evidentiary and economic (also referred to as “expectation”) prejudice. 3M argued evidentiary prejudice in support of its motion for summary judgment and the court concurred. “Evidentiary or “defense’ prejudice, may arise by reason of a defendant’s inability present a full and fair defense on the merits due to the loss of records, the death of a witness, or the unreliability of memories of long past events, thereby undermining the court’s ability to judge the facts,” Decision at page 11.
Although evidentiary prejudice may hamper a UDRP respondent, the argument is unavailing for the reason that “[c]ontinuous use adverse to the interest of Complainant [alone] is not a basis from which Respondent can acquire rights in the domain name,” Avaya Inc. v. Holdcom, FA0806001210545 (Nat. Arb. Forum August 9, 2008). Nevertheless, delay in asserting one’s rights may have consequences under both ¶4(c)(i) – “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 in connection with a bona fide offering of goods or services” – and ¶4(a)(iii) – “the domain name has been registered and is being used in bad faith.” Respondent's proof that it is entitled to the disputed domain name under ¶4(c)(i) is equivalent to an argument for economic prejudice, which (substituting domain name for trademark) “arises from investment in and development of the trademark, and the continued commercial use and economic promotion of a mark over a prolonged period adds weight to the evidence of prejudice,” Bridgestone/Firestone Research, Inc. v. Automobile Club De L'Quest De La France, 245 F.3d 1359, 1363 (Fed. Cir. 2001).
Indeed, there are many UDRP cases in which the passage of time favors the respondent because it has developed a business in which the disputed domain name is used “in connection with a bona fide offering of goods or services.” There are also cases in which so much time has elapsed that panelists reject the complainant's contention that the respondent registered the domain name or is using it in bad faith, of which a representive example is The Economist Newspaper Limited v. TE Internet Services, D2007-1652 (WIPO February 5, 2008)(<theeconomist.com>, Complaint denied; 11 year delay in commencing the proceeding).
Overplaying One’s Hand, and Losing
Except for targeting and using trademarks for phishing and pornography, which are prima facie bad faith, claims that may be actionable under civil or criminal law for tortious or felonious acts(libel, fraud, forgery, larceny, etc.) or statutory violation (infringement, dilution) are not grounds for finding abusive registration. The parties in ICTSecure AG, ICTsecure Inc, CyberStor GmbH v. Roger Clive Crews, D2008-1018 (WIPO September 10, 2008) accused each other of theft and fraud; in Eric Haddad Koenig v. All Ltd, Selena Kovalski, D2008-0322 (WIPO June 17, 2008) of fraud, misappropriation of the domain name and forgery; in Sermo, Inc. v. CatalystMD, LLC