DOMAIN NAME JURISPRUDENCE &
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COMMENTARIES ON UDRP CASES

Comments on cases 2008

Treatment of Personal Names as Domain Names ©

The WIPO Second Report (issued on September 3, 2001) provides that “the application of the UDRP to the protection of personal names [is authorized only] when they constitute trademarks” (Para. 179). This established the principle followed by ICANN panelists that “[p]ersons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations.” Undoubtedly this limitation is not a happy one: “many sensitivities [will be] offended by the unauthorized registration of personal names as domain names” and the “result is that there are some perceived injustices,” (Para. 199). It is not enough for a person to be the emperor of his or her domain. Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, D2002-1073 (WIPO February 21, 2003) (“A mark that is 'primarily merely a surname' is not protectable unless it acquires secondary meaning”, quoting from Lanham Act, 15 U.S.C. Section 1052(e)(4), (f) (1994); complaint on behalf of Complainant’s president, relief denied); David Pecker v. Mr. Ferris, D2006-1514 (WIPO January 15, 2007) (businessman, relief denied). He or she has to prove that his or her name has been used in commerce for “the purpose of merchandising or other commercial promotion of goods or services.” This is easier for entertainers, celebraties, sports personalities and writers; not so easy for persons in public service, although sometimes recognized; and impossible for private persons.

As a general rule, success in protecting a personal names depends on the degree of fame or renown of the person. The greater his or her fame or renown the easier the burden of proof. Concomitantly, the lower the fame or renown the higher the proof requirement. For example, the Panel in Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, D2004-0108 (WIPO July 22, 2004) (<tonysnow.com>) states that

As the degree of fame decreases from clearly identifiable celebrities with worldwide renown, to nationwide renown or to less well known authors, actors or businessmen with limited renown in a specific field, the burden of proof on the Complainant increases and the need for clear and convincing evidence becomes paramount. Without such compelling evidence proving the prior right, a Complainant may fall at the first hurdle. Such evidence may also prove crucial at the third hurdle of proving bad faith registration and use in seeking to prove that the personal name in question is known in the jurisdiction where the Respondent is situated, since the Complainant needs to demonstrate that the Respondent was aware of the Complainant at the time of registering the domain name.

Some Panels in early cases appeared uncertain how to rule and were prepared to give the respondent the “benefit of the doubt,” as in Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, D2000-1532 (WIPO January 25, 2001) (complaint denied over a strong dissent). However, the decision was subsequently repudiated in Kevin Spacey v. Alberta Hot Rods, FA0205000114437 (Nat. Arb. Forum August 1, 2002). One of the panelists who also sat on the Springsteen Panel noted that Respondent in the earlier proceeding was given the “benefit of the doubt” at that time. See also Judy Larson v. Judy Larson Club, FA0101000096488 (Nat. Arb. Forum March 13, 2001) (the Majority opinion in Springsteen is “soundly rejected.”). There was also uncertainty on surnames that were shared by many others. For example, in Emilio Pucci SRL v Mailbank.com, Inc., D2000-1786 (WIPO March 19, 2001) (<pucci.com>) the uncertainty was whether Respondent’s claim of legitimate interest trumped Emilio Pucci’s right to exclusive use of its mark because

[a]s a matter of language, arguably it did [have a legitimate interest] . While it did not propose to conduct business under the name, it expected to use the Domain Name to derive legitimate income from persons with the surname Pucci. More importantly, “there [was] no evidence that the Respondent had the Complainant in mind when registering the Domain Name. . . .

Politicians may have other grounds for declaring the domain name forfeit, but not under the UDRP. United States district court cases have held that registered or unregistered marks by political organizations are afforded trademark protection. However, "an individual politician's name, no matter how famous, is outside the scope of the Policy since it is not connected with commercial exploitation as set out in the Second WIPO Report,” Kathleen Kennedy Townsend v. B.G. Birt, D2002-0030 (WIPO April 11, 2002) (Maryland politician) (a subsequent procceding by “Friends” of Kathleen Kennedy Townsend was also unsuccessful over a strong dissent, Friends of Kathleen Kennedy Townsend v. B.G. Birt, D2002-0451 [WIPO July 31, 2002]); Fields for Senate v. Toddles Inc., D2006-1510 (WIPO March 14, 2007) (New York politician) (Relief denied). Where politicians are successful, they have other arrows in their quiver. For example, Hillary Rodham Clinton prevaliled based on her world-wide recognitionand as an author. According to the Panel, the “HILLARY CLINTON mark has become distinctive through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s political activities, including a successful Senate campaign,” Hillary Rodham Clinton v. Michele Dinoia a/k/a SZK.com, FA0502000414641 (Nat. Arb. Forum March 18, 2005) (<hillaryclinton.com>, Respondent defaulted).

The problem “eventually…come[s] down to whether the evidence establishes [a] sufficient ... nexus between the name itself and its use and association in trade and commerce,” Chung, Mong Koo and Hyundai Motor Company v. Individual, D2005-1068 (WIPO December 21, 2005). The Panel provided the following guidelines to establish whether there was proof of such a nexus. These include:

- the extent to which the commercial community identifies the individual with the company; 
- the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company; 
- the extent of the personal ownership of the company by the individual; 
- the degree of personal control that the individual exercises over the enterprise;
- the extent to which the individual is identified with any major achievements of the enterprise; and
- whether it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.

On the other hand, personal names of artists, performers, musicians and athletes registered or unregistered are protected. The following have been successful at challenging registrants’ choices of domain names: film stars [Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000), Kevin Spacey v. Alberta Hot Rods, FA0205000114437 (Nat Arb Forum August 1, 2002], performers [Larry King v. Alberta Hot Rods, D2005-0570 (WIPO July 21, 2005)], athletes [Freddy Adu v. Frank Fushille, D2004-0682 (WIPO October 27, 2004), Marino v. Video Images Prods., D2000-0598 (WIPO August 2, 2000), ETW [Tiger Woods] Corp. v. Jim Mallamo d/b/a Kids Golf, FA0302000145284 (Nat. Arb. Forum April 17, 2003), Maria Sharapova v. Whois Privacy Protection Service, Inc. c/o Whois Agent, FA0601000621125 (Nat. Arb. Forum February 17, 2006)], columnists [Ann Coulter v. Mark Vadnais, FA0212000137221 (Nat. Arb. Forum February 11, 2003)], musicians [Madonna Ciccone, p/k/a Madonna v. Dan Parisi and Madonna.com, D2000-0847 (WIPO October. 12, 2000) ] and authors [Margaret Drabble v. Old Barn Studios Limited, D2001-0209 (WIPO March 26, 2001), Julian Barnes –V- Old Barn Studios Limited, D 2001-0121 (WIPO Mach 26, 2001), Dr. Michael Crichton v. In Stealth Mode, D2002-0874 (WIPO November 25, 2002)].

Registration of common fore- and surnames like generic terms and common words and expressions, do not violate the Policy unless there is proof that they are registered to take advantage of the complainant. Ancien Restaurant Chartier v. Tucows.com Co., D2008-0272 (WIPO May 6, 2008) (<chartier.com>; recent census indicates at least five thousand people in the United States alone share the name). As with generic terms and common words and expressions, the complainant has to overcome respondent's counter contention that it lacked knowledge of the complainant's existence.

Other cases:

1) Businessmen, Complainants prevailed

Steven Rattner v. BuyThisDomanName (John Pepin), D2000-0402 (WIPO July 3, 2000) (Complainant demonstrated that he was generally seen as the alter ego or driving force behind his numerous companies and businesses and that he used his name in connection with trade and commerce).

2) Eponyms, Complainants prevailed

Dell Computer Corporation v. Logo Excellence, D2001-0361 (WIPO May 7, 2001), Complainant's trademark is eponymous with its founder Michael Dell

Numerous cases by Bloomberg, L.P., whose trademark BLOOMBERG is eponymous with its founder, Michael Bloomberg.

3) Inconsisstent application of principle, Complainant prevailed

Eliot Spitzer v. Eliot Spitzer, FA0702000919828 (Nat. Arb. Forum March 30, 2007) (<eliotspitzer.com>, <eliotspitzer.org>); Complaint granted because “as Governor of New York and as a prominent public figure ... [he established] secondary meaning in the mark.” The doppelganger Respondent defaulted.

Proving Bad Faith, Revised, To be Re-posted

Complainant Must Prove Bad Faith in the Conjunctive ©

Bad Faith in the Conjunctive

Paragraph 4(a)(iii) requires proof of bad faith in the conjunctive. The elements are treated separately although necessarily interconnected. In contrast, the Anticybersquatting Consumer Protection Act (ACPA) and country code ADRs under national registries take a different approach: one or the other, but not both. Whether proof of bad faith should be in the conjunctive or disjunctive was the subject of discussion leading to the adoption of the Policy. The different views are reported in the ICANN Second Report with the conclusion that this requirement should not be changed without further study and recommendation. The Report reads at ¶4.5:

Several comments (submitted by INTA and various trademark owners) advocated various expansions to the scope of the definition of abusive registration. For example:

a. These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO.

Under the UDRP model, bad faith registration may be presumed from bad faith use under limited circumstance, for which typosquatters and pornographers are prime candidates, but for other kinds of alleged abuse based, for example, on monetized web sites or competitors taking advantage of the complainant's trademark, there must be some extrinsic evidence from which an inference can reasonably be drawn. This extrinsic evidence may be a combination of circumstantial facts and the respondent's conduct, to the extent that it can be adduced from the respondent’s explanations or defenses and the content of its website.

Bad Faith Only Reached If Respondent Has Neither Right
Nor Legitimate Interest in the Disputed Domain Name

The issue of bad faith is only reached if the complainant proves that the respondent has neither right nor legitimate interest in the domain name [¶4(a)(ii)] and then its burden is satisfied only if the respondent is shown to have both registered and is using the disputed domain name in bad faith. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, D1999-0001 (WIPO January 31, 2000) (Default; Transferred). Moreover, the bad faith that the complainant must prove must be specific to it. In other words, “there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just ‘someone’s mark,” Builder’s Best Inc. v. Yoshiki Okada, D2004-0748 (WIPO November 17, 2004). On the other hand, proof of good faith defeats a complainant's allegation of bad faith.

Of the two bad faith elements, registration in bad faith is the heavier burden, but the first to be determined is use. It is typically satisfied inferentially. The logic is, If this is the result intended, that is, taking advantage of the complainant’s mark, then the registration is in bad faith. Consensus quickly formed on the principle that “bad faith use may well be implicit in the act of registering a domain name,” Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES Marketing Group Inc., AF-0104 (eResolution, March 20, 2000); EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO December 15, 2000) (the Respondent used the domain name to promote competing auction sites).

The respondent’s use of the disputed domain name informs, even if it is not necessarily determinative of, the legitimacy of its registration. What a party offers or withholds can prove decisive. For example, inferential proof can be deduced from the respondent’s web site. If it appears that the site offers advertising and links to complainant’s competitors, or if the registrant itself is a competitor, it can be deduced that the respondent registered the domain name in bad faith. “[B]ad faith use may, in appropriate cases, give rise to an inference of bad faith registration,” e-Duction, Inc. v. Zuccarini, D2000-1369 (WIPO February 5, 2001), although the Panel also notes that it is impossible for the Respondent to have registered the domain name in bad faith if Complainant or its mark did not exist at the time of registration. Similarly, Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001).

Bad Faith Registration Can Be Inferred From Bad Faith Use

There is also authority that when bad faith use is the only evidence tending to show the purpose for which a domain name was registered then bad faith registration can be inferred. Bad faith may be ascribed when no other rational purpose can be discerned. Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). Some Panels have concluded that the respondent’s non-use can satisfy the bad faith “use” requirement under ¶4(a)(iii), Kevin Garnett v. Trap Block Technologies, FA0210000128073 (Nat. Arb. Forum November 22, 2002), however it is not conclusive as to registration. For example, a finding that bad faith may have “existed after the date of registration ... does not automatically lead to the conclusion that this intention existed at the time of registration,” William Hill Organisation Ltd. V. Lisa Jane Statton, D2000-0827 (WIPO October 31, 2000).

An instance of this is illustrated in those cases in which the respondent registered the domain name with the complainant’s permission, but subsequently ceased being authorized to use it. Miele, Inc. v. Absolute Air Cleaners and Purifiers, D2000-0756 (WIPO September 2000):

The Panel finds that the Respondent did not initially register the domain name in bad faith, because he registered it to promote his business and attract customers as authorized by the trademark owner whose products he was selling with full authority of the trademark registrant.

For this reason:

in the instant case do not fall within the kind of conduct intended to be covered by the Policy. Th the Panel must take heed of the fact that the circumstances surrounding the domain name registration e legislative history of the Policy indicates that it was promulgated to tackle egregious cases of cybersquatting, leaving other disputes to the courts for resolution.

Complainant’s problem in the Miele kind of case is its inability to prove bad faith registration. It failed to provide contractually for the contingency of Respondent failing in its business or discontinuing it, yet refusing to turn over registration to the disputed domain name.

“[W]hen a registrant ... obtains a domain name that is confusingly similar to a famous mark, with no apparent rights or legitimate interests in the name, and then fails to respond to infringement claims and a UDRP Complaint, an inference of bad faith is warranted,” National Football League v. Thomas Trainer, D2006-1440 (WIPO December 29, 2006) (<nflnetwork.com>).

Once identity or confusing similarity is established, any plausible, actual or contemplated use of the domain name that supports good faith registration can defeat Complainant’s claim. However, the respondent cannot establish good faith by ceasing use that violates the Policy. Sanitizing use after receiving a cease and desist letter does not alter the fact that the bad faith act had occurred during the period following registration. Rolls-Royce plc v. Internet Billions Domains, Inc., D2003-0270 (WIPO 2003). Respondent contended that he was so proud of his Rolls Royce Silver Ghost that he wanted to show the car on the web site. The Panel stated:

While it is difficult to make credibility findings in a hearing of this nature (and which we do not do), the Panel has some difficulty accepting that the Respondent did not know that both of the domain names somehow got linked to the casino site. It also appears it was only when the Complainant started making complaints to the Respondent that the site was changed to the vehicle picture which is now displayed on the Website.

The more well known the trademark, the less justification for incorporating it into a domain name. Famous and well-known trademarks and brand names are the hardest for a respondent to defend, although there is an exception for resellers and suppliers whose domain names have been found distinguishable from the trademark even if it incorporates it.

No Bad Faith If The Registration of the Domain Name
Antedates Complainant’s Right in the Trademark

When a respondent’s domain name registration predates the complainant’s first use of a mark, the complainant cannot satisfy Policy ¶4(a)(iii), Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO March 30, 2001) ("[Policy ¶4(a)(i)] necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name,” and thus the domain name should not be transferred. Obversely, if the complainant did exist its ease or difficulty in proving bad faith in the conjunctive is directly related to the trademark’s fame, celebrity, renown or lack thereof globally, nationally, regionally and locally.

Timing of parties' rights will be the subject of a separate essay.

The Role of Credibility ©

Even though Panels do not see witnesses in the flesh as would the trier of fact in a civil trial and may be reluctant to rule on submission of conflicting evidence, nevertheless the parties make their appearance in submissions and they can be judged for credibility by their candor or lack of it, the plausibility of their arguments and by the evidence they produce or suppress. In Greyson International, Inc. v. William Loncar, D2003-0805 (WIPO December 3, 2003), the Panel noted that the Respondent “has presented a plausible explanation ... and Complainant has offered no evidence to the contrary.” Ultimately, though, credibility is supported or undermined by how parties present themselves and the sufficiency or paucity of evidence. Lack of evidence allows the Panel to draw adverse inferences against the party with the burden of proof or production. Lacuna in the evidence can be equally damaging to a party’s contentions. Questionable candor undermines a party’s argument. On the other hand, genuinely disputed factual issues are for the alembic of confrontational discovery, what the Panel calls the “chastening process of cross-examination.” See also, Rudy Rojas v. Gary Davis, D2004-1081 (WIPO April 18, 2005).

According to the Panel in Beat the Bookstore, LLC v. May Enterprise, FA0510000589501 (Nat. Arb. Forum December 19, 2005) “ICANN panels function in a quasi-equitable manner”. He explained that a “party seeking relief before any such panel must itself be worthy of that relief, i.e., appear before the panel with ‘clean hands’.” This would seem to translate to creditworthiness.

Credibility lapses have been found against both complainants and respondents. Against the Complainant in Interactive Television Corporation v. Noname. Com, D2000-0358 (WIPO June 26, 2000) the Panel stated that it was “troubled by Complainant’s apparent lack of candor in not disclosing the Trademark Office Actions issued prior to the filing of this Complaint.” In Fiji Rugby Union v. Webmasters Limited, D2003-0643 (WIPO December 24, 2003) the Panel Majority stated that although the case was “finely balanced” it was able to “draw inferences from the manner in which the Respondent has argued its case, retreated from formal statements of fact and generally been less than forthcoming.”

An indefensible position “necessary harms [a party’s] credibility. R.T. Quaife Engineering, Ltd. v. Luton, D2000-1201 (WIPO November 14, 2000):

Parties would be better advised to admit facts or conclusions that are not genuinely in dispute and instead focus their arguments on the true areas of disagreement.

Whatever the difficulties in making “the necessary credibility determinations,” Custom Bilt Metals v. Conquest Consulting, D2004-0023 (WIPO April 6, 2004):

Nevertheless, it is the Panel’s obligation to make such findings as it can on the record as submitted, bearing in mind that Complainant bears the burden of proving its case by a preponderance of the evidence.

In The Winetasting Network v. 1-800wineshop, D2005-0731 (WIPO September 16, 2005) the Panel was confronted with conduct relating to the proceedings. Although the “Policy requires bad faith in the registration and use of the disputed domain name ... and not bad faith in the conduct of these administrative proceedings [, nevertheless] the Panel finds that the foregoing course of conduct supports its finding above of bad faith registration and use.” The “foregoing course of conduct” started with Respondent failing to reply to the demand letter:

[I]t apparently adopted a strategy of delaying the Complainant’s efforts to resolve the dispute. It did so without, it appears, having any theory as to why the Complainant’s demand was unfounded; if it did have such a theory, it would presumably have set it forth in a Response. Thus, without identifying any basis on which it was entitled to continue using the disputed domain name, the Respondent appears simply to have attempted to delay the inevitable as long as possible. That, in the Panel’s view, suggests the Respondent’s awareness of the Complainant’s superior right to the disputed domain name. This, in turn, inferentially supports the Panel’s finding of registration and use in bad faith.

In Clover Gifts Inc. v. Airs Fragrance Products, D2005-0776 (WIPO October 3, 2005) the Panel found that “neither party has come across with the full story”:

One noteworthy feature of this case is that both parties have submitted evidence, including sworn testimony that is credible at least on its face, of their respective positions. Both assert and supply evidence in considerable detail. Both parties are represented by counsel. In light of these facts, the evidentiary gaps and unanswered legal issues in both parties’ submissions, some of which are discussed below, can only be the result of each party’s intentionally presenting its case in considerably less than full context in a manner intended to prevail in this proceeding.

A respondent’s claim that it was ignorant of a complainant or its rights when it registered the domain name, acceptable under certain circumstance, can become unacceptable where the complainant shows a history of evasive explanations. In rejecting the Respondent’s explanations in Dex Media, Inc. v. Admin Billing, D2005-1060 (WIPO November 9, 2005) the Panel stated that it was “influenced by the Respondent’s track record as evidenced by the results of the Complainant’s investigations into [prior proceedings against] the Respondent.”

Illustrative Cases:

Tommy Lee v. Netico, Inc., D2005-0915 (WIPO December 28, 2005) (“In short, the Respondent has asserted legitimate reasons for registering and using a Domain Name identical to the Complainant’s famous name, but its credibility is undercut by the lack of supporting evidence for its claimed purposes, the opportunistic ways in which it has actually used the Domain Name, a history of involvement in bad-faith registration and use of domain names, the failure to respond to the Complainant’s trademark allegations before this Proceeding, and the Respondent’s evasive and misleading submissions in this Proceeding.”)

General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com, FA0602000651676 (Nat. Arb. Forum May 12, 2006) is particularly interesting because the Panel became exercised by complainant’s position, rejected it and found reverse domain name hijacking. The entire decision was challenged in an ACPA action (SDNY 06 CIV 4051). On a motion for partial summary on the issue of reverse domain name hijacking, the court held that “GMCI did not initiate or pursue the UDRP proceeding or this action in bad faith and has not engaged in actual or attempted reverse domain name hijacking” (January 16, 2007). The balance of the claims are subjudice.

[Distinguishing Among Theories]

The Policy lists four non-exclusive examples of bad faith. Each identifies a particular and distinguishable parasitic or predatory act. While it may be true that a respondent’s conduct can be actionable under more than one theory, they should not be blurred or blended any more than theories of action in civil court. The elements for proving tortious interference with contract is entirely different from tortious interference with prospective advantage. A plaintiff cannot hope to win the first by offering as proof the elements of the second. Not infrequently, however, complainants and panelists blur the distinction between ¶4(b)(iii) and ¶4(b)(iv) of the Policy. The two Policy provisions read:

“[Y]ou have registered the domain name primarily for the purpose of disrupting the business of a competitor” [¶4(b)(iii)]; and

“[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location ¶4(b)(iv)].”

An example of blurring of theories is illustrated in a recent case, Sony Corporation v. John Stewart Last, Dragon Domains Limited, D2008-0812 (WIPO July 2, 2008). The Panel first noted that it “may be argued that the Respondent is not a competitor of the Complainant.” However, he then cites to IGBnvestments, Inc. v. Donald Baker, D2007-1320 (WIPO November 9, 2007) in which the Panel holds that

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.

The blurring harks back to Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) where the Panel stated that “the natural meaning of the word ‘competitor’ is one who acts in opposition to another.” This is questionable and certainly not the "natural meaning.” Rather, the term “competitor” means, as defined in Webster's Ninth Collegiate Dictionary “one selling or buying goods or services in the same market as another.”

It is possible for a respondent to violate both ¶4(b)(iii) and ¶4(b)(iv), but only if he is a competitor not just someone who competes for Internet traffic. It is error to apply the term “competitor” to respondents whose landing pages contain links to competitors. The predatory conduct in Sony is not that the Respondent was a competitor but that it was using the domain name intentionally to attract Internet users to its website for commercial gain “by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation.” However, there are cases that apply the term to respondents whose landing pages contain links to the complainant or to its competitors.

The Panel in Vishwa Nirmala Dharma a.k.a. Sahaja Yoga v. Sahaja Yoga Ex-Members Network and SD Montford, D2001-0467 (WIPO June 16, 2001) among later panelists declined “to accept the contention of the Complainant that the broad definition of ‘competitor’ will include not only commercial or business competitors, but anyone acting in opposition to another.” The theory upon which a remedy is granted should be called what it is rather than what it is not.

Should High Volume Registrants Be Held to a Higher Standard? ©

There is a division among panelists whether high volume registrants in the pay-per-click (“PPC”) landing page business should be held to a higher standard for vetting their acquisitions. The PPC business was not dreamed of in the UDRP foundation documents and although there is no present consensus there is ongoing inter- and intra-Panel dialogue on the issue. The question being mulled over is, What amount of diligence, if any, does a high volume registrant have to exercise to be free of the imputation that it has acted abusively in acquiring the domain name? The PPC business is a relatively recent phenomenon.

However, neither the WIPO Final Report, entitled “The Management of Internet Names and Addresses: Intellectual Property Issues,” dated April 30, 1999, nor the ICANN Implementation Report, the Second Report, distinguish between high volume and a single user registrations and there is a degree of ambivalence about the amount of diligence a registrant must perform to avoid the imputation of abusive registration. On the one hand, the registrant is not required to perform a trademark search. The WIPO Final Report states at Sec. 105 that the “performance of a prior search for potentially conflicting trademarks should not be a condition for obtaining a domain name registration.” On the other hand, the Final Report also called for appropriate language in the domain name application “encourage the applicant to undertake voluntarily such a search. The Registrar Accreditation Agreement provides

3.7.7.9 The Registered Name Holder shall represent that, to the best of the Registered Name Holder's knowledge and belief, neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party.

The typical Registration Agreement, in fact, contains the following language:

REPRESENTATIONS AND WARRANTIES. You agree and warrant that: (i) neither your registration nor use of the any of the Network Solutions services nor the manner in which you intend to use such Network Solutions services will directly or indirectly infringe the legal rights of a third party.... (From Paragraph 11 of Network Solutions’ Service Agreement)

There are three views on high volume registrants’ burden to legitimate their interest in the disputed domain name or good faith in registering it, although a consensus appears to be forming in favor of the first view.

Application of the first view has the effect of shifting the burden to the respondent to disprove that it has engaged in abusive registration. For example, the Panel in Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006) states that where “a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”

More recent expressions of this view are the majorities in BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. Future Media Architects, Inc., D2006-0534 (WIPO July 28, 2006) (<psk.com>) and The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc., D2008-0483 (WIPO June 20, 2008) (18 domain names).

The Panel in Mobile Communication further stated that for registrants who regularly engage in the business of registering and reselling domain names, and/or using them to display advertising links, they must show that

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

The Mobile Respondent failed the test in its entirety. The Panel stated that

the likelihood of infringing the rights of a third party or creating a likelihood of confusion as to source is clearly greater where the domain name is not a dictionary word or descriptive phrase. This is particularly true for three- or four-letter strings beginning with “W,” since these are used as distinctive call signs for hundreds of licensed broadcast television and radio stations in the United States, many of which are trademarked. It is not credible that the Respondent was unaware of this practice, as it is evident to anyone watching American television or listening to American radio; this is one of the principal means of branding sources of American broadcasting services.

The 3-Member Panel mVisible Technologies Inc v. Navigation Catalyst Systems Inc., D2007-1141 (WIPO November 30, 2007) concluded that “it is reasonable to infer, based upon the circumstantial evidence available, that Respondent, a sophisticated party in the PPC landing page business, must have been aware of the relevant trademark.”The majority in Bewag suggested that registrants who use their vast accumulations to exploit a business opportunity have “a greater duty ... to verify that the use of a domain name ... is legitimate.” The Panel in The Carphone Warehouse also subscribes to this view.

The second view which is not gaining any traction is expressed by dissents in BAWAG and Banco do Brasil, S.A. v. The Universal Kingdom, LLC, D2008-0389 (WIPO June 6, 2008) (<bb.com>). In Banco do Brasil the dissent’s view was that the Respondent had a duty to investigate and that it is failure was actionable negligence. He stated

In fact, when a registrant fails to observe a reasonable degree of diligence, failing to undertake an easy, fast and cost-free trademark search on the Internet, as was already available both at the USPTO and the BTO in 2002, this Panelist understands that such negligence is tantamount to bad faith. Being a professional investor, the Respondent obviously knew that by purchasing the disputed domain name there was a risk of entering into the scope of a third party’s trademark rights, but the Respondent preferred not to look any further into the matter. By so doing, this Panelist understands that the Respondent assumed the risks that such omission could entail. (Emphasis added).

The majority in both cases rejected the dissents’ reasoning. In Banco do Brasil it “reject[d] the surprising assertion by the Complainant that bb is uniquely associated with its financial and banking services. As one might expect, a glance at a Google search produced by the Respondent shows numerous diverse uses of that term.” In BAWAG it rejected the suggestion by the dissent that bulk domainers should be found to have “accepted the risk of infringement” in registering two or three letter domain names, although it appeared to concede in dictum that in “appropriate circumstances [the analysis may] be broadened to encompass a knowing assumption of the risk of infringement.” However,

The traditional analyses of the rights or legitimate interests element should not apply in gross when a registrant is not seeking to use any particular domain name to conduct business, is not otherwise known by that name, and has no interest in the nature of the transferor’s rights.

The third view is represented by American Wealth Alliance, Inc. v. KB a/k/a Katarzyna Bieniek, FA0801001139762 (Nat. Arb. Forum March 17, 2008) (<breedersclub.com>). The Panel in this case takes a middle ground by more directly examining the respondent’s conduct and applying objective criteria. In his view, the question is not the respondent’s status as a high volume registrant but whether its denials and professions of good faith are plausible in view of the circumstances or simply a case of willful blindness to another’s rights. The Respondent argued that it conducted a bone fide business. However, the Panel’s analysis focused on specific elements to determine the parties’ rights. It stated that “[e]ven [in] bulk registrations or acquisitions of domain names by professional domainers, the critical consideration seems to be whether or not it can be said that the disputed domain name has been acquired because of its generic value, or because it is identical or confusingly similar to a third party’s trade mark.”

Significantly, the Respondent rebuts the Complainant’s contentions only if “the links on a given landing page are truly based on the generic value of the domain name ... may [such use] be bone fide because [then] there are no trademark rights implicated by the landing page.” The American Wealth Alliance Panel concluded that it was “more likely than not that the attraction of adding the particular domain name to Respondent’s bank of domain names was because of its trademark value not because of any descriptive quality that the domain name might have.” For this reason the complaint was granted and the registration of the domain name ordered transferred to the Complainant.

The dissent in Banco do Brasil concludes: “a registrant must exercise a certain degree of diligence is clear from paragraph 2 of the Policy.” That seems to sum up the situation whichever view the panelist holds.

Common Law Marks, Recognition in the Marketplace and Proof of Secondary Meaning ©

To establish a factual basis for bad faith the right a complaining trademark owner claims to have must antedate the respondent's acquisition of the disputed domain name. The “right” is easily demonstrated with a registered mark, but demanding for one based on common law principles because it has to be documented. The complainant must prove that the mark has acquired "secondary meaning” in the marketplace by offering among other proof, longevity, amount of sales, the nature and extent of advertising, consumer surveys and media recognition. In the words of the Supreme Court, and echoed in many ICANN decisions [Museum of Science v. Asia Ventures, Inc., D2003-0691 (WIPO October 20, 2003), for example], a mark acquires secondary meaning when, “in the minds of the public, [its] primary significance [] is to identify the source of the product rather than the product itself,” Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 851, n.11 (1982).

Whereas an owner of a registered mark proves its trademark right by submitting a certificate, an owner of an unregistered mark has to marshal evidence sufficient to prove that its mark is in fact a trademark. If there is not enough evidence of the existence of a mark, that is, no showing that it is recognized as the source of goods or services, the mere fact that a domain name is identical or confusingly similar to a complainant’s alleged mark is irrelevant. The test of ownership under common law principles is priority of use whether or not the mark is registered to another person, but the party claiming ownership must have been the first to actually use the mark in commerce. All Packaging Mach. Supplies, Corp. v. Crystal Flex Packaging Corp., D2002-0383 (WIPO July 17, 2002) (U.S. parties, <allpackagingmachinery.com>, “although the phrase may be descriptive, it is entitled to protection as a mark based on 20 years of use. As a result of that long use, there is a presumption that the mark has acquired distinctiveness, and Respondent has presented no evidence to rebut that presumption.” A complainant cannot prove first use in commerce by reference to its disclosure in a trademark application alone. Rather, the right has to be established by extrinsic evidence, Operation Homefront v. Illinois Office of Lt. Governor, D2007-1037 (WIPO October 1, 2007); Kay Hill, Ltd. v. Texas International Property Associates- NA NA, FA0805001190984 (Nat. Arb. Forum July 9, 2008), On the other hand, the disclosure of a date later than the registration of the domain name can be determinitive against the complainant as an admission against interest, Javacool Software Development, L.L.C. v. Elbanhawy Investments, FA0611000836772 (Nat. Arb. Forum January 2, 2007) .

Panels in the formative cases determined that the UDRP was intended to include protection of unregistered marks through a step by step construction of the Policy and the WIPO First Report. Thus, the Panel in The British Broadcasting Corporation v. Jaime Renteria, D2000-0050 (WIPO March 23, 2000) noted that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names.” He was followed by other Panels who similarly construed the Policy to mean that it was not necessary for a trademark to be registered by a governmental authority for such rights to exist, America Networks Inc. v. Masood, D2000-0131 (WIPO April 13, 2000). As for its application to personal names, the Panel in Antonio de Felipe v. Registerfly.com, D2005-0969 (WIPO December 19, 2005) was skeptical that unregistered trademark rights in personal names can be vindicated by non common law complainants. For him, these “rights derive from national laws and do not exist divorced from such laws.” However, according to Paragraph 1.7 of the WIPO Overview of Panel Views on Selected UDRP Questions the principle applies “even when the complainant is based in a civil law jurisdiction.” It should be noted that the Staff Manager’s Issues Report (August 1, 2003) stated that “Care must be taken ... to avoid placing ICANN in the role of legislating normative rules for deciding disputes between third parties regarding entitlement to the use of names, particularly where those rules are already addressed by national or local law.”

Whether the question involves vindicating trademarks of businesses or persons, evidence of common law rights must include proof that the complainant has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to complainant’s goods or services. This includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. It “would be wise not only to provide evidence of the activities that are alleged to found those rights but also to provide evidence that as a matter of law those activities are recognised as giving unregistered trademarks rights in that jurisdiction,” Antonio de Felipe, supra. (referring specifically to personal names, but equally applicable to businesses in trade and services); Shon Harris v. www.shonharris.com c/o Whois Identity Shield, D2007-0997 (WIPO September 3, 2007) (same panelist). “[A]uthors and performers can establish trademark rights ... through deployment of the names as source indicators in commerce,” Celine Dion and Sony Music Entertainment (Canada) Inc. v. Jeff Burgar, D2000-1838 (WIPO February 13, 2001).

As to the second question, while it became accepted that the complainant may have rights to its unregistered trademark, it was recognized that those rights had to be concretely demonstrated. To establish secondary meaning the complainant must show that the public identifies the source of the product rather than the product itself. This forcefully summed up in The Monticello Group, Ltd. v. Teletravel, Inc., D2002-1157 (WIPO April 16, 2003). The Panel found that the Complainant produced no details of the extent of its trade under the claimed mark. “One would have expected,” he continues “to see sales figures, details of advertising and promotional expenditure, sample advertisements and promotional material to suggest that the Complainant has a reputation and goodwill associated with the name.” However, the complainant produced none of this and simply made “a few very general unsupported statements as to the nature of [its] business.” In Progressive Lighting, Inc. DBA Lee Lighting, Inc. v. Manja Klimenko, FA0502000424539 (April 8, 2005) the Panel found that the Complainant not only “failed to produce any evidence relating to the extent of advertising, promotion, sales, or media coverage, but it has also neglected to reveal to the Panel the day on which it began using the LEE LIGHTING mark in commerce.” The fact that the company was publicly traded on the NASDAQ exchange with those initials was not a relevant factor. Trade names, as with personal names, are not protected unless they are source indicators of goods or services.

The burden for the complainant is made even heavier when it has abandoned its trademark, or its application to the trademark office has been rejected, or if accepted as a design mark, the complainant has disclaimed the textual component. This was the case in Game X Change, Inc. v. Modern Empire Internet Ltd. c/o Administrator, FA0803001155839 (Nat. Arb. Forum May 6, 2008) (<gamexchange.com>). The Complainant suffered under two disabilities. First, it abandoned its trademark and, second, in its new application it disclaimed the words GAME EXCHANGE “apart from the mark as shown.” The Panel held that the “disclaimer eliminated any special common law trademark rights Complainant may ever have had to “GAME EXCHANGE,” citing VideoCall Co. v. M Koenig, FA 167922 (Nat. Arb. Forum Aug. 20, 2003) and it “also eliminated any special common law trademark rights Complainant may ever have had to phonetic and telescoped equivalents such as ‘GAME X CHANGE’.” The Panel explained that

in cases in which the device of figurative element is an integral element of the trademark’s distinctiveness, domain names identical or confusingly similar to the textual components of the mark have been found to be not identical or confusingly similar to the mark.

Accordingly, the Panel rejected Complainant's contention that the domain name was identical or confusingly similar to its trademark and dismissed the complaint on the grounds that Complainant had failed to satisfy its burden under ¶4(a)(i) of the Policy. .

The heaviness of Complainant’s burden receives added emphasis in every case in which its offering is found to be insufficient. BioDelivery Sciences International, Inc. v. HLK Enterprises, Inc. c/o Domain Admin, FA0804001175189 (Nat. Arb. Forum May 19, 2008) (<bdsi>) is emblematic. In that case, the Complainant failed to offer sufficient proof that it had provided goods or services under the unregistered mark or that it had done business using the name in question in a sufficient manner for the letters “bdsi” to have accrued any secondary meaning. The Panel noted that the “four letters that create the asserted mark and the disputed domain name could stand for many things that do not interfere with Complainant’s business.” The fact that the company was publicly traded on the NASDAQ exchange under those initials was not a relevant factor.

In sum, the right to have an unregistered trademark recognized has to be earned with proof. This includes proof that the Complainant has done business using the name in question in a sufficient manner to cause an identification with its goods or services. Imperial College v. Christophe Dessimoz, D2004-0322 (WIPO June 30, 2004) (transfer ordered), citing Action Sports Videos v. Jeff Reynolds, D2001-1239 (WIPO December 13, 2001) (complaint dismissed, but sufficient for jurisdiction):

[When a complainant proves that there is] ‘enough goodwill and reputation in and to a name and sufficient association of the same with the [complainant], no matter how strong or weak those trademark and service mark rights may be,’ [that is sufficient to satisfy the first element the Policy]

If the public does identifies the mark with the source of the product the complainant prevails, as it did in Theodore Presser Company v. John Smith/Whois Protection, D2008-0549 (WIPO May 29, 2008) (Counsel offered more than simple allegations of long term use). However, if there is no evidence that the public identifies the mark with the source of the product or services, as the Panel found it did not in BioDelivery Sciences International, supra., then the respondent keeps the domain name. The unhappy consequence for the complainant presenting insufficient evidence of its alleged right is that its complaint is dismissed.

[Uncertainty in Protecting Two and Three Letter Trademarks ]

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 Deutsche Lufthansa is presently contesting the transfer order in an ACPA action the District Court for the Southern District of New York (discussed in Plenary Adjudication After An Adverse Decision, June 24, 2008). The winning complainant generally has a famous or well known acronym. The dissent rejected the majority’s finding in a strongly worded opinion that the letters LH were distinctive as a trademark.

Some panelists have suggested that the failure to perform a Google search prior to acquiring the domain name is grounds for finding bad faith. CTV Inc. v. Murat Yikilmaz, FA0804001177671 (Nat. Arb. Forum June 10, 2008) (<ctv.com>, transferred over dissent who stated that registering “a domain name without a prior Google search seems to me to be wilful blindness”). Automated registration programs used by professional traders to snap up expired domain names are not “ a shield against bad faith” and should not be discounted as a factor. Geopack v. Name Administration Inc. (BVI), D2006-1590 (WIPO March 15, 2007) (not an acronym case).

In order for a complainant to succeed on an acronym claim where the letters are used by many business, it must offer proof of targeting, ARO v. Philip Price, D2005-0498 (WIPO August 1, 2005) (<aro.com>) (Respondent defaulted):

the Domain Name is a three-letter word which appears as a common abbreviation as confirmed by a quick search on Google search-engine that has shown that “aro” is used by many different users (amongst others: Army Research Office, Association for Research on Otolaryngology) as an abbreviation.”]

Generally the trademark owner’s right is only enforced with letters that are famous and well known, which the Panel in Deutsche Lufthansa believed to be the case as did the Panel in Hewlett-Packard Company v. Kim Yong Hwan, FA0008000095358 (Nat. Arb. Forum September 7, 2000) (U.S. Complainant; Korean Respondent, <hpweb.com>). In these cases, willful blindness – an unacceptable level of ignorance – of another’s rights is tantamount to knowledge that negates good faith. In Red Nacional De Los Ferrocarriles Espanoles, D2001-0981 (WIPO November 21, 2001) (a five letter acronym, <renfe.com>), the Respondent, by his own showing a knowledgeable Internet analyst, registered a recently lapsed, commonly searched domain name. The Panel held that

where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.

The complainant’s burden in these cases is to demonstrate, and thereby persuade the Panel, that it is known by the acronym. The Panel in Museum of Science and Industry put the matter bluntly:

Complainant appears to have a well known and respected reputation in the industry for its name “Museum of Science and Industry.” Its advertising and products are also promoted under the name “Museum of Science and Industry.” However, at issue in this proceeding is the acronym MSIChicago. Complainant must meet its burden of proof in showing that it has sufficient common law rights and secondary meaning and meets the UDRP standards for MSIChicago.

The Respondent stated that “he registered the domain name with the intention of creating an informational website entitled “Minority Serving Institutions of Chicago,” which is abbreviated as “MSIChicago.” This seems slim for parties whose home base is Chicago, but the Panel focused on the Complainant’s failure to satisfy its right to the acronym. and discounted “willful blindness.”

See also, Thomas Pick aka Pick Inc. v. EUROPREMIUM LTD, Elaine Maria Gross, D2008-1010 (WIPO September 1, 2008) (<bs.com>):

The Complainant has produced no evidence at all of the extent of his business. The Panel is aware that there was a Business Solutions Int’l webpage attached to the Domain Name in 1997 and is also aware that Business Solutions Int’l continued to be the registrant of the Domain Name until 2003, but the Panel has no knowledge of the extent of the trade conducted by Business Solutions Int’l, whether through that website or otherwise. The Panel has been provided with no sales information.