Abusive, Removed
[Bad Faith Requirements Under Two ADRs: UDRP and ukDRS]
The UDRP requires that the complainant prove both registration and use in bad faith [¶4(a)(iii)]. In contrast, country code ADRs take a different approach: one or the other, but not both. A couple of recent close decisions respectively under the UDRP and ukDRS (Nominet) are instructive in highlighting this point. Under the UDRP model, an inference of bad faith registration may be inferred from bad faith use under limited circumstance, for which typosquatters and pornographers are prime candidates. For other kinds of alleged abuse based, for example, on monetized web sites or competitors taking advantage of the complainant's trademark, Panels look at a combination of mostly circumstantial evidence 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. Unlike the UDRP, under the ukDRS (and other Country code ADRs), the losing party has the right to an administrative appeal.
A three-member Panel over a vigorous dissent on the issue of bad faith registration in Deutsche Lufthansa AG v. Future Media Architects, Inc., FA0802001153492 (Nat. Arb. Forum April 17, 2008) ordered the domain name (<lh.com>) transferred to the Complainant. The decision received considerable adverse comment in concluding that the two-letter domain was abusive in targeting the Complainant’s trademark. For country code ADRs, a finding of good faith registration can still lead to the respondent forfeiting ownership of the domain name because the complainant only has to prove bad faith use. However, in MySpace, Inc. v. Total Web Solutions, DRS 04962, (Appeal Board, April 18, 2008) an order transferring the domain name to the complainant was reversed by an The reversal essentially requires the Complainant to seek judicial relief in a U.K. court on the issue of ownership. A copy of the appeal decision can be viewed here.
In Deutsche Lufthansa, the dissent “doubt[ed] that Respondent was even aware of Complainant’s LH trademark when it acquired the domain name, and mere constructive notice of a trademark is insufficient under the Policy.” However, the majority invoked the principle of “totality of circumstances.” It held that the evidence, which included offering to rent or lease the domain name to the complainant as well as having competitor links on the webpage, preponderated in complainant's favor. Since no evidence is cited to support a finding of bad faith registration, the Panel must have inferred it from bad faith use. This decision may be giving the complainant too much the benefit of the doubt. The proof did not appear to support LH as a famous trademark. Moreover, the majority stated a new principle to be applied against domain owners engaged in “indiscriminate acquisition” of domain names. It held that
Respondent’s business model involves the indiscriminate acquisition and use of as many such domain names as possible. The traditional analyses of the rights to 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 there from.
The principle that the “traditional analyses of the rights to or legitimate interests element” is superceded when the “business model involves the indiscriminate acquisition” of domain names will be tested in a court proceeding. Future Media Architects filed a complaint in the Southern District of New York under the Anticybersquatting Consumer Protection Act (ACPA)(15 U.S.C. §1125(d)), see here.
In MySpace, the respondent registered the domain name many years prior to the complainant acquiring a trademark right. Anterior registration would ordinarily be a complete defense under the UDRP model. However, the complaint alleged that after the respondent learned about the complainant's business plans it changed its webpage to take advantage of the complainant's notoriety, thus supporting a claim of bad faith use. However, a unanimous Panel on appeal did not believe that there was sufficient evidence from which to draw that inference and decided that the Respondent was entitled to keep ownership of the domain name.
Ordinarily, the UDRP model gives the respondent more evidential room to prove its right to retain the disputed domain name and the ukDRS less. In these two cases, however, the split decisions make the rights uncertain and leave them for resolution in the respective national forums.
[Choice of Law When Parties Are Residents of Different Countries ]
Generally, panelists decide cases based on “general principles of law widely accepted throughout the world,” Fundación Calvin Ayre Foundation v. Erik Deutsch, D2007-1947 (WIPO February 25, 2008). Indeed, consistency and predictability are enhanced when the principles are uniformly applied. However, there is an ongoing debate whether the general principles approach is appropriate for all issues and, on one issue in particular, there is a split of views concerning a registrant’s right to a retain a domain name in the form of <trademark.com> intended for non-commercial purposes under ¶4(c)(iii) of the Policy. See, Essay Predictability and Consistency.
On the one side stand panelists who adhere to the principle that it is inappropriate to import national law into UDRP proceedings. McMullam Bros Limited, Maxol Limitd and Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol
Direct (NI) Limited v. Web Names Ltd., D2004-0078 (WIPO April 16, 2004) (Both parties, Northern Ireland; Transferred):
To import a national rule simply because both parties come from the same jurisdiction may result in similar cases being decided in a different manner dependant upon geographical accident. This is a conclusion that this Panel finds inherently unattractive. At times resort to national law may be unavoidable (for example when determining the existence of a trademark recognised by the Policy), but the Panel sees no reason for doing so in this case.
On the other side stand panelists who believe that where “both the Complainants and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes ... the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States,” KeyCorp and City of Seattle v. i-designsolutions.com, Inc., D2005-0104 (WIPO April 14, 2005).
Certainly, when the parties are residents of the same country it may be appropriate to apply local law. In fact, such a construction comports with Section 176 of the WIPO Final Report:
In applying the definition of abusive registration given above in the administrative procedure, the panel of decision-makers appointed in the procedure shall, to the extent necessary, make reference to the law or rules of law that it determines to be applicable in view of the circumstances of the case. Thus, for example, if the parties to the procedure were resident in one country, the domain name was registered through a registrar in that country and the evidence of the bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision-maker to refer to the law of the country concerned in applying the definition.
The Overview of WIPO Panel Views on Selected UDRP Questions at Sec. 2.4 reports the split views specifically with reference to domain names registered with the intention of creating non-commercial sites for criticism, although this should most definitely include commentary and adulation sites [see Richard Starkey v. Mr. Bradley, FA0612000874575 (Nat. Arb. Forum February 12, 2007) (<ringostarr.mobi>, transferred) in which the dissent posited that “Fanatics are just the flip side of critics”]. The more difficult question is which view should be applied when the parties are resident of different countries?
The dissent in Richard Starkey proposed a solution to the split by applying conflict of laws principles to resolve claims by one party against another in a different jurisdiction, which he has repeated as the sole panelist in Sermo, Inc. v. CatalystMD, LLC., D2008-0647 (WIPO July 2, 2008) (<sermosucks.com>, complaint denied). Thus,
If both parties are resident in the same jurisdiction, then it seems wholly appropriate to consider the national laws of that jurisdiction since, presumably, those laws govern the parties’ conduct, legal rights, and potential liabilities. However, where there is some question about the laws that may apply [because the parties are resident in different countries], then a Panel should also consider the location of mutual jurisdiction, and the conflict of laws principles that would be applied by courts in that jurisdiction, since that is the jurisdiction in which the courts may be asked to consider the parties respective rights if a challenge is filed under Paragraph 4(k) of the rules.
Selecting a mutual jurisdiction is a procedural requirement imposed on the complainant as a quid pro quo for access to the benefits of the Policy (defined in the Policy at paragraph 1 of the Rules). In Richard Starkey, the parties are British subjects, but the complainant has a U.S. address and selected as the venue for mutual jurisdiction the location of the registrar in Scottsdale, Arizona. The dissent would have applied U.S. law and, as he did in Sermo, deny the complaint based on strong policy, free speech grounds enforced under U.S. law. The majority applied U.K. law to find in favor the complainant.
Well considered though the suggestion for a conflict of laws approach may be, it has not been taken up by other panelists. A number of decisions involving U.S. residents over domain names identical to trademarks have been resolved in favor of the respondents. One in particular is currently in litigation under the Anticybersquatting Consumer Protection Act, Bosley Medical Institute, Inc. and Bosley Medical Group v. Kremer, 403 F.3d 672 (9th Cir. 2005).
[The Consequence of Disclaiming Words in Design or Design-Plus-Word Trademarks]
Complainants whose trademarks are composed of a design or a design-plus-words for which they have disclaimed the textural component have a particularly difficult burden in persuading the Panel that the domain name is identical or confusingly similar to its trademark. The burden may be satisfied on proof of other factors such as a common law right to words or phonetic elements mimicked in the domain name antedating the design mark. This was the case in an early case, Savino Del Bene Inc. v. Graziano Innocenti Gennari, D2000-1133 (WIPO December 12, 2000). Savino Del Bene possessed a trademark registration its acronym SDB in a three-dimensional box, but had no registration for SAVINO DEL BENE. However, the proof in that case established that the Complainant had a common law trademark in the name and, thus, the domain name <savinodelbene.com> was identical to its trademark and ordered transferred.
The difficulty with a design or design-plus words registration is that it is unlikely that a domain name composed of a string of phonemes can be confusingly similar with it and identity is out of the question entirely. Letters or words incorporated into the design only constitute part of the mark; they are not the mark itself. It is even harder to prove confusing similarity when the respondent in applying for its trademark has disclaimed the stylized words of the design. The Complainant’s burden is to persuade the Panel that the hypothetical Internet user will be confused into believing that the Respondent is the Complainant.
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 in presenting its case. Although it initially had a trademark registration, it had subsequently abandoned it or let it lapse; and, second, in its new application to recapture the lost trademark 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.
Apart from the common law right whose proof is under the complainant’s control, one of a complainant’s few other options is to prove that the respondent acquired the domain name specifically for the purpose of taking advantage of the complainant’s reputation in the market place. This is not an easy task, because although targeting is prima facie proof of bad faith use, it also requires proof that the respondent had the requisite level of knowledge of the complainant or its trademark at the time it acquired the domain name. It can be strongly inferred that registration of a domain name identical to the Complainant’s mark, as was the case in Savino Del Bene, means that the Respondent had actual knowledge of the Complainant.
[Generic Words, Common Expressions and Descriptive Phrases ]
The general rule for selecting common words and phrases as domain names is that it is legitimate when they are being used for their generic or descriptive values. The basic premise of domain names is first-come-first served. Thus, “a party seeking to establish [exclusive rights to] a highly descriptive term, carries a heavy burden of proof in removing the term from the public domain,” Snowboards-for-sale.com, Inc. v. Name Administration Inc., D2002-1167 (WIPO February 19, 2003) (<snowboardsforsale.com>). Even trademark registrations do not confer monopolistic rights to such terms. For example, the words NATURE and MATCH. Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc, D2002-0658 (WIPO September 27, 2002) (<nature.biz>) (Relief denied) and Match.com, LP v. Bill Zag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004) (<match.com>).
However, neither is there an automatic right to register and use such terms if the respondent is taking advantage of the complainant's good will and targeting its mark. The word MARLBORO may be a place name, but it is also a famous brand. Philip Morris USA Inc. v. Prophet Partners Inc., D2007-1614 (WIPO February 8, 2008) (<marlboro.biz>, Transferred). The respondent's knowledge or awareness of the complainant and its mark is a significant factor in determining parties' rights to the domain name, as the Panel noted in Weather Shield Mfg., Inc. v. Lori Phan, D2007-1247 (WIPO October 10, 2007) (<visions.com>: "resale and advertising may in some contexts represent legitimate interests, ‘particularly where the Domain Name is a dictionary word and there is not persuasive evidence that the Respondent was more likely than not aware of the Complainant’s marks’.").
The word REGISTER has featured in a number of cases, most recently in Register.com, Inc. v. Domain-it!, Inc. c/o Domain-It Hostmaster, FA0801001126697 (Nat. Arb. Forum March 18, 2008) (<register.cc>). Both parties are in the domain registration business. The Panel stated
“Register”, being a common word used in connection with domain hosting services, the Panel finds that the Respondent is using the disputed domain name in connection with a bona fide offering of services and that it was doing so before it had notice of the dispute.
Even complainants well known with well known trademarks, but operating in a niche market can find themselves trumped by a respondent who claims to have no knowledge of the complainant or its mark. Broadcom Corporation v. Michael Becker, FA 0108000098819 (Nat. Arb. Forum October 22, 2001) (<cyberbroadcomm.com>) (“The Complainant provided no evidence that its trademark [BROADCOM] is famous or indeed widely known outside of the rather specialized area in which it operates [high-technology network equipment] or that its trademark is known to the general public”); Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum August 5, 2002) (<seaway.com>). Protection has to be earned in the market place. However, disruption of the complainant's business can be inferred when the parties are competitors selling similar products in a “narrow industry niche.” Ed McCabe v. Nu Science Corporation, D2007-0422 (WIPO June 7, 2007) (<mroxygen.com>.
NOTE: The following case was decided under the auDR Policy which, unlike the UDRP, protects the complainant's “company, business or other legal or trading name.” Also, the complainant satisfies the auDR bad faith requirement by showing either registration or use in bad faith, not in the conjunctive.
Spanton Media Group Pty Limited v. Lion Global Pty Limited, DAU2007-0007 and DAU2007-0008 (WIPO January 2, 2008) (<barawards.com.au> and <bartender.com.au>, Respondent appeared, Complaint dismissed).
Although the Complainant had established that the domain names were confusingly similar to trademarks in which it claimed a right, the descriptiveness of the claimed marks made the registrant “immune from action,” quoting from a decision in the High Court of Australia, Hornsby Building Information Centre v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229. The Court in Hornsby held that "one who appropriates to himself descriptive words" cannot secure a monopoly on them:
A plaintiff who uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action.
As it applies to trademarks, this is also sound cautionary advice.
[Credibility, Candor and Good Manners]
UDRP complaints are resolved solely on papers without benefit of discovery and with no right of confrontation. For this reason the pleadings and evidence must be developed with as much care and be as complete as a motion for summary judgment in a civil action. It is a mistake to discount credibility and good manners even though there is no appearance in the flesh. Parties make their appearance in submissions and can be judged for their candor or lack of it, the plausibility of their arguments, by the evidence they produce or suppress, and their demeanor.
Credibility played a key role in a recent case involving Turkish parties. The 3-Member Panel in Hurriyet Gazetecilik Ve Matbaacilik A.S. v. INFOMED, D2008-0127 (WIPO March 30, 2008) (<hurriyet.net>, Complaint dismissed) listed four factors weighing in favor of the Respondent, one of which is “[t]he fact that the Respondent has a track record of using his domain names in connection with his interests.” The Respondent provided sufficient evidence to persuade the Panel that he was a respected professor with a variety of interests. Panelists take seriously parties' who fail to disclose information.The Panel in Interactive Television Corporation v. Noname. Com, D2000-0358 (WIPO June 26, 2000) 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 Jay S. Cohen d/b/a Elite Cruises v. Smoking Domains, LLC., FA0803001155799 (Nat. Arb. Forum May 7, 2008) the Complainant alleged that it had rights to ELITE CRUISES and disclosed a USPTO serial number but failed to disclose that its application was denied.
Panel also take seriously parties' who present arguments of questionable merit. It does not advance one's case by arguing an indefensible position. Indeed, it “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.
In Fiji Rugby Union v. Webmasters Limited, D2003-0643 (WIPO December 24, 2003) the 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.” Comportment or demeanor can also sink a party, as in Rudy Rojas v. Gary Davis, D2004-1081 (WIPO April 18, 2005). The Panel noted impatiently in rejecting a claim for reverse domain name hijacking that the Respondent “Like Complainant ... indulges in needless name-calling and diatribe that have no place in any proceedings. ”
It is not only lack of evidence or lacuna that allows the Panel to draw adverse inferences against the party with the burden of proof or production, but intangibles such as appropriate selection and choice of language, in fact all the factors that go into a successful summary judgment.
See essay, The Role of Credibility.
[Demonstrable Preparations to Use: Respondent’s Burden Under Paragraph 4(c)(i) of the Policy]
Domain names composed of common, dictionary words or phrases that do not trespass on another’s rights are legitimately owned by the first to register. Priority of registration is a fundamental principle of the Internet whether or not the complainant has a trademark. Thus, a domain name that anticipates registration of a trademark by a long interval undercuts an allegation of bad faith registration even if the respondent subsequently uses the domain name in bad faith. For example, there are a string of cases alleging bad faith based on offers to sell the disputed domain to the complainant [¶4(b)(i)]. Unless there is proof of bad faith registration, they fail because the respondent is offering to sell what he legitimately owns. On the other hand, a registration that anticipates the trademark by a short interval may violate the Policy as being opportunistic [¶4(b)(ii and iv)]. Legitimacy has to be proved.
Taking the first of the affirmative defenses, respondent’s right or legitimate interest in the disputed domain name is gauged by analyzing its history and its website. Paragraph ¶4(c)(i) of the Policy reads:
[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.
This comment will focus on “demonstrable preparations to use” through a recent case entitled State of Florida Department of Management Services v. Mr. Siegfried Maier and Edelsbacher Design Group KEG, D2008-0318 (WIPO April 23, 2008) (<myfloridamagazine.com). Geographic indicators as trademarks will be considered in a later comment, but in this case MYFLORIDA and MYFLORIDA.COM are registered trademarks with the USPTO.
The respondents offered two argument. First, that they were “not infringing the Complainant’s trademarks because they have no intention of providing any services identical or similar to the services offered by the Complainant and protected by the trademark registrations.” Second, that “owning a domain name is not an infringement and that the Disputed Domain Name was registered for supporting or as yet unascertained a future business.” Neither of these arguments are persuasive against a claim for abusive registration. Argument one assumes that the registration is legitimate when the parties travel in different trade channels. Argument two assumes that a simple, unsupported allegation of future intention is sufficient to persuade the Panel that the respondent has rights or legitimate interests in the domain name.
Proof of demonstrable preparations under ¶4(c)(i) is intensely fact driven. Mere registration of a domain name is not such evidence, Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO November 11, 2000), and the Panel in The Napoleon Hill Foundation v. VivaCorp SA, FA0604000672115 (Nat. Arb. Forum May 18, 2006) stated that the Policy “specifies that the demonstrable preparations must be assessed before any notice of the dispute is given”. Passive holding or parking merely reserves the web address for future infringing use. Acceptable evidence would include a business plan, timing etc., as explained in DigiPoll Ltd. v. Raj Kumar, D2004-0939 (WIPO February 3, 2005). The Panel found that Respondent’s case
falls down because there is no evidence of what, if any, preparations he has made. There is no evidence of a business plan or partners, the proposed technology or how it would function, how the business would be financed, a timetable or, indeed, evidence of a single fact about the business other than the intention to develop it at some indeterminate time in the future.
As with evidence generally, allegations do not prove a case. They are merely a signpost to respondent's destination.
[Disputes Outside the Scope of the Policy]
The mix of cases always includes the occasional complaint that is unsuited to arbitration under the Policy. Business disputes in which the domain name is inseparable from “much larger, complex disputes between the parties, involving alleged breaches of contract, breaches of fiduciary duty, and tortious conduct” are more likely to be outside the scope of the Policy and more appropriate for plenary disposition, Jason Crouch and Virginia McNeill v. Clement Stein, D2005-1201 (WIPO January 31, 2006), citing Clinomics Biosciences, Inc. v. Simplicity Software, Inc., D2001-0823 (WIPO August 28, 2001). In such factual circumstances it would be “inappropriate to use the Policy to attempt to carve out and resolve the relatively minor, but interconnected, domain name dispute,” Id.
These warnings notwithstanding, complainants continue to test UDRP’s subject matter limitation. No doubt the lure is the relatively modest cost to maintain the proceedings. Three recent cases illustrate factual circumstances in which the domain names are inseparable from the larger, complex disputes between the parties,” Eric Haddad Koenig v. All Ltd, Selena Kovalski, D2008-0322 (WIPO June 17, 2008); Vail Valley Partnership d/b/a Vail Valley Chamber & Tourism Bureau f/k/a Vail Valley Tourism & Convention Bureau v. ecomshare c/o Office Manager, FA0803001163682 (Nat. Arb. Forum May 7, 2008) and Interactive Study Systems Inc. v. BFQ, D2008-0205 (WIPO April 2, 2008). The factual circumstances in these cases are complex with each party disputing the allegations of the other. Two of the cases involve parties known to each other and (mis)using the UDRP to settle one part of their dispute. In Eric Haddad Koenig the parties are respectively Mexican and U.S. citizens in which the Complainant alleges that it lost the domain name to a fraudulent scheme. The factual circumstances in all three cases are complex with each party disputing the allegations of the other. The kind of cases, in fact, better suited to plenary review and not amenable to determination without discovery.
The general rule is that “only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure,” ICANN Second Staff Report, Para. 4(c), dated October 25, 1999. All other disputes, “such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name – [are relegated] to the courts.” This limitation is based on the WIPO Final Report, dated April 30, 1999, Paragraphs 135, 153 and 166. They read as follows:
Paragraph 135: “In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in respect of the suggested administrative dispute-resolution procedure:
(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.
(ii) Secondly, the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights.”
Paragraph 153: “… The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.”
Paragraph 166: “The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations.”
The Second Staff Report can be found at http://www.icann.org/udrp/staff-report-24Oct99.htm; the WIPO Second Report can be found at http://www.wipo.int/amc/en/processes/process1/report/index.html.
The Policy is unsuited to resolving contract, fiduciary, tort and statutory claims. It does not apply and should not be used to “shoehorn what is essentially a business dispute between former partners,” The Thread.com, LLC v. Jeffrey S. Poploff, D2000-1470 (WIPO January 5, 2001), or where the dispute is complex and the facts disputed, Courtney Love v. Brooke Barnett, FA0703000944826 (Nat. Arb. Forum May 14, 2007), in which the majority noted that in complex cases the dispute can be examined more thoroughly by a court than a UDRP panel:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
The issues in Eric Haddad Koenig “range far beyond forgery of the purchase agreement and invoice and banking instruction.” There was also a question as to “the very existence of the principal.” While the domain name is central to the complaint, the Respondent’s contentions (even if far-fetched and fraudulent) are too factually complicated to be resolved on papers. Edward G. Linskey v. Brian Valentine, D2006-0706 (WIPO September 18, 2006). The parties in Vail Valley Partnership (both Colorado residents) and Interactive Study Systems (Florida and Texas) intersect in their businesses and principally involve contract and fiduciary disputes to which the domain names are “ancillary to and inseparable.”
Cases in which the domain name is not inseparable from other disputes, particularly involving business associates and former employees, are, with some qualifications, more likely to be within the scope of the Policy.
[Interplay of Equity and Bad Faith]
Respondents have asserted equity defenses, particuarly laches, from the earliest cases, with ambiguous success. Generally, panelists agree that “there is no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions,” Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO February 1, 2002); Hebrew University v. Alberta Hot Rods, D2002-0616 (WIPO October 7, 2002). This rejection does not mean to say that equity doctrines may not be a factor in determining a respondent's good or bad faith. They do in fact have a part to play in establishing rights and legitimate interests in the disputed domain name. The WIPO Final Report does not contain the word “equity,” although it does state in a number of sections that the proceeding has to be “consistent with fundamental concerns of fairness” (¶143). Fairness involves a balancing of interests and this may justify applying certain principles of equity, even if not in so many words. The Policy also institutionalizes fairness and Rule 15(a) provides for the application of “any rules and principles of law that [the Panel] deems applicable.”
However, even if the term “principles of law” does not subsume “principles of equity,” neither is equity disaccounted. Thus, the Panel in Beat the Bookstore, LLC v. May Enterprise, FA0510000589501 (Nat. Arb. Forum December 19, 2005) (<beatthebookstore.com>) held 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’.” The relief granted in a UDRP proceeding is not unlike a declaratory judgment in civil court.
“Unclean hands” was certainly a factor in CSX IA, Inc. v. Remarkable Systems, Inc., D2007-1665 (WIPO February 4, 2008). In that case, the Respondent argued that it acquired the domain name twelve years earlier allegedly in connection with negotiations with the Complainant. It had never put the domain name to active use. However, the Panel
flatly rejects as untenable the Respondent’s apparent position that one need only enter into business negotiations with another in order to legitimize the appropriation and use of the other’s trademark as a domain name.
In another case, Nike, Inc. v. Circle Group Internet, Inc., D2002-0544 (WIPO September 10, 2002) (<justdoit.net>), the Panel in a split decision expressly based its opinion on laches for waiting over 5 years in commencing the proceeding. However, the majority opinion was subsequently rejected by the district court sitting in the Northern District of Illinois. Nike, Inc. v. Circle Group Internet, Inc. (N.D. Ill. May 21, 2004).
Estoppel is similarly rejected unless there is proof of detrimental reliance. Thus, the Panel in Starbucks Corporation and Starbucks U.S. Brands Corporation v. Duncan Freeman, D2003-0262 (WIPO July 9, 2003) noted:
Even assuming for the sake of argument that the defense [of estoppel] is applicable here, Respondent has failed to demonstrate any detrimental reliance on the three-year period of delay. Moreover, given the action already taken by Complainant, it would not have been reasonable for Respondent to conclude that Complainant no longer objected to the Respondent's use and registration of the domain names.
Roux Laboratories, Inc. d/b/a Colomer USA v. Sheldeez Beauty Salon, D2005-0799 (WIPO September 30, 2005):
An unexplained and unreasonable delay by Complainant in commencing a proceeding ... is one of the necessary factors for a successful laches defense. However, this is not enough. To be successful in this defense, Respondent must also show that it relied upon Complainant’s delay to its detriment.
However, there are cases in which the Panel, although seemingly rejecting laches and estoppel, upholds the respondent’s right to the domain name. Timing in commencing a UDRP proceeding, in fact, cannot be discounted as a factor in determining bad faith, particularly on claims involving lesser known marks. The complainant has to explain why it waited so long. Thus, YIT Corporation v. Future Media Architects Inc., D2007-0588 (WIPO July 27, 2007):
[T]he longer the time between the registration of a disputed domain name and the assertion of the Complainant’s rights the harder, in general, the inference of bad faith registration becomes to sustain.
In YIT, the claims involved two domain names registered respectively 11 and 6 years prior to the filing of the complaint.
The lesson in cases that reject the complainant’s delayed complaint is that there may be a penalty for lack of vigilance in policing one’s trademark. The respondent receives equity without the Panel labeling it as such.
[Right of Trademark Owner to Recapture Domain Name after Inadvertent Lapse of Registration]
Lapses happen, and when they do the consequences range from loss to recapture. In Golden Door Licensor, L.L.C. v. Protected, WhoisGuard/Chen Bao Shui, D2008-0352 (WIPO May 13, 2008) the Complainant recaptured its domain name, but in other cases failing to timely renew a registration does not always have a happy ending. The decision in Golden Door centered on Paragraph 4(b)(ii) of the Policy, that the Respondent has registered the domain name in order to prevent the Complainant from reflecting its trademarks in the disputed domain name and has engaged in a pattern of abusive registrations.
As a general rule, the fact that a domain name expired and was not renewed “does not mean that the Respondent has any right to use a well-known trademark as its domain name when such use could cause confusion to consumers and damage to the owner of the trademark,” Donna Karan Studio v. Raymond Donn, D2001-0587 (WIPO June 27, 2001) (<dknyjeans.com>). Indeed, the “Policy does not condone such attempts to ‘catch’ a domain name after an unintentional failure to renew, when the registrant has no right or legitimate interest thereto and no intention of making a fair use of same, ” Bronx Arts Ensemble, Inc. v. Vilma Morales, e:bOOm, S.A, D2004-0493 (WIPO August 30, 2004). The principle works in favor of complainants with famous and well known trademarks, but otherwise the burden of proof is proportionately more demanding.
Decisions on lapsed registrations are driven by a number of factors. Respondent’s conduct, that it is an adjudicated serial cybersquatter, for example, supports an inference that as it has acted opportunistically in the past, its present conduct is equally in bad faith. In Golden Door this was reinforced by the content of the website which offered links to competitors. This fact leads ineluctably to another inference, which is that the Respondent must surely have had knowledge of the Complainant. (Respondent’s contention that no inference can be drawn because it does not control the content of the web page has been forcefully rejected by a number of Panels on the theory that it responsible for the acts of its agent).
That the domain name is composed of two dictionary words, GOLDEN and DOOR, also played no part in the decision, although it may conceivably have done so, as it has in other cases, if the Respondent appears and offers a plausible explanation. The Respondent gave a plausible explanation in Carbon Footprint Ltd v. Adrian Fuller, D2007-0642 (WIPO July 26, 2007) for registering <carbonfootprint.org> and the Panel concluded that it had a legitimate interest in the domain name. When this happens, the Complainant’s burden will be heavier. The Panel held that
In previous cases in which a panel ordered transfer of a domain name based upon a trafficker’s duty to undertake a reasonable investigation and found bad faith, either the domain name at issue was distinctive (and not a common word or phrase) or the respondent had been found frequently to have ignored others’ trademark rights, as evidenced by losing domain names in previous Policy proceedings.
Panels have taken one of three positions when the complainant fails inadvertently to re-register its domain name: 1) favoring the fanciful and arbitrary, and perhaps the suggestive; 2) disfavoring the generic and descriptive; and 3) rejecting excuses altogether. The second and third positions bring the most grief. “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). Although offsetting that disturbing principle is another, that “the law generally incorporates various safeguards to avoid undue forfeitures and unjust enrichments.” These equity principles can be employed where
(1) little if any investigation has been done into the history of the domain name; (2) very little time passed between lapse and the new registration; and (3) the Respondent presents goods or services on its website that are directly related, identical or confusingly similar to Complainant's goods or services, the characterization of Respondent's behavior weighs against mere business savvy and instead reflects bad faith.
On the other hand, these equity principles are not applied wholesale. There is the “finders, keepers-losers, weepers” principle, as notably set forth in Corbis Corporation v. Zest, FA0107000098441 (Nat. Arb. Forum September 2, 2001):
The Panel holds that a domain registrant who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name; a person in the position of Respondent should be more confident than a registrant who selects a previously unregistered name.
The Panel continued: “In sum, where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, we believe that ordinarily the trademark holder should be denied relief, whether the mark is a common law or registered mark, whether the mark is ‘strong’ or ‘weak’.”
Clearly, an owner’s failure to monitor its trademarks may be costly and may even result in a new type of abusiveness presently getting attention, “brandjacking.” How costly the inadvertence, depends on the circumstances of the lapse and the quality of the mark.
[Pairs of Cases: Similar Facts, Different Results]
In the comment “Punting or Admirable Restraint” I reported on a case that the Panel held was not ripe for determination under the Policy. The issue there revolved on lack of subject matter jurisdiction and brought into play panelists’ discretion in dismissing a complaint. This comment reports on a pair of cases that were ripe, but two different three-member Panels (having one member in common) came to opposite conclusions as to the parties’ rights in the disputed domain names. Drugstore.com, Inc. v. Nurhul Chee/ Robert Murry, D2008-0230 (WIPO May 9, 2008) (<drugstoretm.com>, Complaint denied over dissent); Drugstore.com, Inc. v. Kevin Andrews, D2008-0231 (W IPO May 9, 2008) (<mydrugstore1.com>, Transferred over dissent). These cases raise a concern about applying “subjective” rather than “objective” analyses of the facts to reach a conclusion and the politics of inference.
In the history of UDRP cases, there have been several such pairs falling on either side of the line. An example of one other pair illustrates the point. Houghton Mifflin Company v. Unasi Management Inc., FA0504000469107 (Nat. Arb. Forum June 16, 2005) (Complaint denied); Houghton Mifflin Company v. LaPorte Holdings c/o Admin., FA0504000469115 (Nat. Arb. Forum June 17, 2005) (Transferred). In the first decision the Panel did not apply the evidentiary rule shifting the burden of persuasion to the Respondent to explain why he registered the HOUGHTON mark and in the second case the Panel applied the evidentiary rule. When these splits occur, they undercut what jurisprudences strive for, consistency. See Essay Predictability and Consistency.
In the Drugstore cases, the majority in the second case noted that the different result “may in part simply reflect a differing assessment of facts and likely motive given the examined record in each case, rather than any underlying divergence of opinion as to applicable principles under the Policy.” This is less than a helpful observation, because it introduces a concept, “likely motive,” that can hover on the line separating subjective and objective. Both majority and dissent adhere to the correct principles, but interpret the evidence differently, that is they draw differing inferences.
Reading motivation from conduct, of course, is done all the time, but there has to be sufficient evidence of conduct for the inference of bad faith to be valid. This was the dissent’s complaint in the first case:
My co-panelists made a subjective determination regarding the Respondent’s intent without any analysis of the nonexclusive, objective criteria of bad faith set forth in paragraphs 4(b)(i)-(iv) of the Policy. Once this failure was called to their attention, they simply added language that they had considered paragraphs 4(b)(i)-(iv) without conducting any evidentiary analysis.
He concluded that
I do not believe that the arbitrators in a UDRP proceeding can ignore the objective criteria of paragraphs 4(b)(i)-(iv) and substitute their subjective determination or personal motivations that a claimed mark is generic or is weak as descriptive, then proceed to find a lack of bad faith and deny relief to the Complainant.
Deciding whether the respondent has acted in good faith or not sometimes involves a judgment call. It is unclear in the Drugstore cases what the Panels had to work with, particularly in light of a comment by the dissent in the first decision that he “asked to accept the supplemental filing of Complainant and Respondent’s reply” but was overruled by the majority. The same dissenter dissents for the same reasons in Super Supplements, Inc. v. Vertical Axis, Inc., D2008-0244 (WIPO May 13, 2008).
[Parking for Revenue]
A number of decisions have been filed over the course of the last year in which respondents have argued that since links are chosen by their services they ought not be held responsible for them in the landing pages of their websites. The most recent is Bayerische Motoren Werke AG v. bmwrider llc, D2008-0610 (WIPO June 23, 2008), citing Villeroy & Boch AG v. Mario Pingerna, D2007-1912 (WIPO February 14, 2008). In itself, parking for financial gain is not a violation of the Policy and is, in fact, recognized as a bone fide offering of services particularly when, for example, the trademark alleged to be targeted is a common word. Mariah Media Inc. v. First Place® Internet Inc., D2006-1275 (WIPO December 6, 2006) (<outside.com>).
The distinction between parking legally and parking in violation of the Policy lies in the quality of the trademark. Generic terms are on the low end of protectability, which is another way of saying that to prevail the complainant has to demonstrate that the respondent acquired the domain name intentionally to target its trademark. The difficulty is illustrated by the 3-Member Panel’s holding in Mariah Media. It rejected the Complainant’s argument that “the Respondent’s removal of an ‘OUTSIDE magazine’ link from its home page, following correspondence from the Complainant, was an “admission” of bad faith” and accepted the Respondent’s contention that “it removed the link as a ‘courtesy’ to the Complainant” which it interpreted as a “rational effort to avoid a costly dispute.”
However, under other factual circumstance “liability can attach even if the domain registrant has simply ‘parked’ the domain, and [the respondent] is making no active use of it,” Smokey Mountain Knife Works v. Deon Carpenter, AF-230 (a,b) (eResolution July 3, 2000) . Liability is particularly evident when the Respondent has “registered the domain name then placed it on a parking service, which redirect[s] the user to a website advertising [goods or services competitive with Complainant,]” Cloer Elektrogeräte GmbH v. Motohisa Ohno, D2006-0026 (WIPO March 29, 2006); Villeroy & Boch, supra. Such conduct presumes actual knowledge of the complainant and its trademark, which respondents have attempted to rebut by arguing that they are not responsible for web site content and the presumption should not be the basis for a negative inference.
The non-responsibility argument has on the whole been rejected. “[T]he fact that a third party is effectively operating the website on behalf of Respondent, and making payments to the Respondent on the basis of that use, does not insulate Respondent from the conduct of its authorized agent,” Park Place Entertainment Corporation v Anything.com Ltd., D2002-0530 (WIPO September 16, 2002) (<flamingo.com>) (Majority held in favor of Complainant). Under these circumstances, knowledge of the use to which a parked domain is being put is attributed to the respondent despite denial. The reasoning for this is that he derives a benefit from parking the domain. Indeed, monetized parking and landing pages have become an increasing popular way for domain name registrants to create an income stream. Commentaries–Bona Fide Advertising.and Affiliate Programs. Similarly, Sanofi-Aventis Aventis Pharma SA, Aventis Pharma Deutchland GmbH .v. IN4 Web Services, D2005-0938 (WIPO November 24, 2005). The Panel found that the Respondent either passively condoned or was indifferent to the material posted to its domains by another party:
The very intention of that other party is to drive traffic through the websites. It would appear from the evidence that one strategy to do so may be to use a third party trademark which is similar to the domain name. The Panel believes that registrations made as part of such a scheme are made and used in bad faith for the purposes of this Policy if it is held that the domain name in point is confusingly similar to a mark in which a third-party complainant has rights.
The Panel in Diners Club International Ltd. v. O P Monga, FA0603000670049 (Nat. Arb. Forum May 22, 2006):
[A]fter agreeing to Sedo’s “parking” policy and not having “un-parked” the domain name, Respondent is using the domain name to intentionally attract, for commercial gain, Internet users to her website or other on-line location belonging to third parties, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of her web site or location or of a product or service on her web site or location.
Villeroy & Boch: The Respondent “cannot evade this responsibility by means of its contractual relationship with the Registrar. The relationship between a domain name registrant and the Registrar does not affect the rights of a complainant under the Policy,” citing Ogden Publications, Inc. v. MOTHEARTHNEWS.COM c/o Whois IDentity Shield/OGDEN PUBLICATIONS INC., Administrator, Domain, D2007-1373 (WIPO November 26, 2007).
[Penalizing the Complainant for Abusing the UDRP Procedure]
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 own business – the only penalty in a panelist’s armory is to find it guilty of reverse domain name highjacking. Rule ¶15 (e) of the Policy provides:
[I]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Although this stigmatizes the complainant and undoubtedly gives pleasure to the respondent, it carries no financial consequence. The rule has been construed to mean that the conduct that qualifies for a reverse domain name hijacking claim should be “utterly clear,” Great American Insurance Company v. Ron Hamilton, FA109753 (Nat. Arb. Forum October 14, 2002), and “the Complainant [must have] proceeded with at least a reckless disregard of the likelihood that the Respondent had rights or legitimate interest in the name,” OnePhone Holding AB v. IndiGO Networks, D2007-1576 (WIPO December 22, 2007).
Such reckless disregard was found in Altru Health System v. Altruism Network c/o Doug West, FA0805001195584 (Nat. Arb. Forum July 15, 2008). The Panel held that while at “first sight” it may appear as though the Complainant “had fair reasons to file the Complaint,” on second sight it did not because it made false statements about its trademark which it compounded by making “deliberately false accusations of Respondent’s commercial activities” at the website to which the domain name resolved. What finally outraged the Panel was that
Complainant’s actions were made in an attempt to convince the Panel to decide in Complainant’s favour in spite the fact that the case had obvious flaws. It is this Panels opinion that Complainant’s behaviour constitutes an abuse of the administrative proceeding.
Nevertheless, what appears sanctionable abuse to one panelist, may have an entirely different complexion to another. This was the case in General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com, FA0602000651676 (Nat. Arb. Forum May 12, 2006). The Panel found that Complainant’s or its counsel’s conduct was so egregious that it
would likely warrant sanctions and/or referral of the matter to the appropriate Bar Association for disciplinary action, were this case being handled in a federal or state court of record. Here it forms the basis for the required Finding, set out above, that Complainant has wrongfully attempted a Reverse Domain Name Hijacking by virtue of its abuse of the arbitration proceeding through its omission of material facts and its intentional or negligent misstatement of some of the most significant and material facts in its briefs and exhibits.
However, the Complainant subsequently commenced a federal action, General Media Communications, Inc. v. Crazy Troll LLC and Gene Heu, 2007 U.S. Dist. Lexis 4281 [Not for Publication] (S.D.N.Y. 2007) for relief under the ACPA and whatever in the UDRP submission that shocked the Panel, it failed utterly to impress the Magistrate Judge who entered a declaratory ruling on reverse domain name hijacking:
Obviously, if there was evidence that established – or even arguably established – all three elements of the UDRP test, GMCI could not have brought its proceeding in bad faith as the sole panelist found. There further was no basis for a finding that GMCI engaged in reverse domain name hijacking in violation of the UDRP by bringing the UDRP proceeding against Crazy Troll.
The action is presently sub judice, awaiting a determination on the issue of abusive registration.
[Personal Names, Protected as a Trademark When the Name is a Source Indicator for Goods and Services]
A complainant has no remedy under the UDRP for abusive registration of his or her personal name unless it is a source indicator for goods or services. The principle excluding aggrieved complainants from using the UDRP is set forth in the Second WIPO Report on personal names, tradenames and geographic indicators. The Report states at Paragraph 199 that “Persons who have gained eminence and respect, but who have not profited from their reputation in commerce” must find a remedy in a civil law action. The Paragraph reads in full:
It is clear that many sensitivities are offended by the unauthorized registration of personal names as domain names. It is clear also that UDRP does not provide solace for all those offended sensitivities, nor was it intended to do so, as originally designed. The result is that there are some perceived injustices. Persons 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. The UDRP is thus perceived by some as implementing an excessively materialistic conception of contribution to society.
However, for persons whose names have become distinctive as the source of goods or services, there is consolation. The UDRP has been construed from the earliest cases to include both registered and unregistered marks and a common law trademark right is subsumed in the definition of “rights.” Moreover, common law trademark rights have been recognized for both living and deceased artists, authors, athletes and entertainers. Indeed, 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.” This view notwithstanding, 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.”
Two recent cases illustrate who succeeds and why in protecting a personal name. The Panel in Gene Kelly Image Trust v. BWI Domain Manager, D2008-0342 (WIPO April 22, 2008) found that
As the disputed domain name contains the correct spelling of Gene Kelly’s name and nothing more, it is extremely likely that Internet users will be confused and believe the Respondent’s website is somehow sponsored, affiliated or endorsed by the Complainant’s trademark.
Other estates include Princess Diana, CMG Worldwide, Inc. v. Page, FA 95641 (Nat. Arb. Forum November 8, 2000); and Marlon Brando, The Estate of Marlon Brando v. thewordbank twb, FA0506000505502 (Nat. Arb. Forum August 16, 2005).
In the second case, the question was whether the complainant was known for her authorship or for her family connections. Birgit Rausing, AB Tetra Pak v. Darren Morgan, D2008-0212 (WIPO April 5, 2008). The Panel concluded that Birgit Rausing “does not appear to have become well-known because she has written books.” Rather, “[s]he was well-known before that, due in part to her membership of the well-known Rausing family.” He holds:
Any already well-known person who writes a book trades on their name, to the extent that their pre-existing fame is likely to generate sales of their book. It does not necessarily follow that every well-known person who writes a book (or any other kind of publication) obtains trademark rights in their name.
Politicians who are as well known for their public persona in the market place as authors satisfy their burden, as with Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000, D2006-0431 (WIPO June 1, 2006); Hillary Rodham Clinton v. Michele Dinoia a/k/a SZK.com, FA0502000414641 (Nat. Arb. Forum March 18, 2005) (<hillaryclinton.com>).
POST-SCRIPT
There are anomalies in deciding for and against personal names. The Panel in Roseanne Barr v. Texas International Property Associates - NA NA, FA0803001155782 (Nat. Arb. Forum May 8, 2008) (<roseannetv.com>) denied complainant’s request and denied the complaint. He was of the view that while there are “domain name opinions finding that personal names have acquired the status of common law marks [many of the] decisions are not persuasive.” Why not persuasive the Panel does not explain. The Respondent in this case is among the more prolific -- some say “habitual” -- cybersquatters currently operating on the Internet.
On the other hand, the Complainant in Julie Menin v. Peter Gleason c/o Seven Sages, LLC, FA0802001142614 (Nat. Arb. Forum April 2, 2008) persuaded the Panel that her “experience as a public servant” supported a common law right and capture of the domain names. Ditto: Ex-Governor Spitzer of New York, Eliot Spitzer v. Eliot Spitzer, FA0702000919828 (Nat. Arb. Forum March 30, 2007).
See essay, Treatment of Personal Name as Domain Names.
[A Question of Plausibility]
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. The disputable facts in determining knowledge, Did he know? And, When did he know it? 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 can be a convincing argument for good faith registration. It is well settled that the complainant carries a heavier burden when its trademark is a generic term, as illustrated, for example, in Magnetic Shield Corporation v. MuShield, FA0803001158545 (Nat. Arb. Forum April 29, 2008) (<mumetal.com>), or a common, dictionary word, of which there are numerous examples in the databases. In The Carphone Warehouse, however, the common words – which separately have minimal protection – in combination elevate the mark to a stronger category. Admitting as the Complainant’s predecessor did in Magnetic Shield that the “the term mumetal is often used as a generic term, as Kleenex is used for any facial tissue” effectively undermined the contention that the Complainant had an enforceable right to prevent others from using it as a domain name.
Although the Respondent in The Carphone Warehouse contended that it had never heard of the Complainants or their marks when it registered the Domain Names, a number of its web pages included links to the “Carphone Warehouse.” The Panel noted
If those links were present on the websites to which the three Domain Names resolved shortly after they were registered in April/May 2004, the Respondent could not credibly contend that it was unaware of the First Complainant or its CARPHONE WAREHOUSE mark when it later registered the rest of the Domain Names.
Linking to a complainant’s competitors is typically regarded as evidence of bad faith absent a plausible explanation. “The existence of the “Carphone Warehouse” links, and the Respondent’s election not to explain them in its Response, are further factors pointing to the implausibility of the Respondent’s claim that it had no knowledge of the Complainants or their marks.”
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. 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. 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.”
The missing ingredient in The Carphone Warehouse and Magnetic Shield, the first by a respondent and the second by a complainant, is a failure to recognize, whether defending or prosecuting a cause, that it is facts persuasively presented that wins cases. Bad facts that have to be admitted can only be effectively deployed when the evidence supports a finding that in registering the domain name the registrant intended to target the complainant’s trademark. This is easier for the complainant when the respondent is in the pay-per-click landing page business, which was not the case in Magnetic Shield but was in The Carphone Warehouse and mVisible Technologies cases.
[Plenary Adjudication After An Adverse Decision]
The UDRP does not provide for an administrative appeal from an adverse order. Rather, recourse must be a de novo law suit under national law which, in the case of the United States would be a claim under the Lanham Act, infringement of a registered mark (§1114) and false designation of origin (§1125(a)), Federal Trademark Dilution Act “FTDA” (15 U.S.C. §1125(c)) and the Anticybersquatting Consumer Protection Act (“ACPA”) (15 U.S.C. §1125(d)). In this respect, the Policy is unlike some country code domain resolution policies which provide for an appeal and which appeal must be undertaken – an exhaustion of remedies rule – before further recourse to national court.
If the respondent is the contesting party he must act within 10 days to take advantage of the automatic stay of transfer [Paragraph 4(k) of the Policy] and if he acts he has a choice of venues stemming from the complainant’s agreement to “submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction,” Rule 3(b)(xiii). The term “mutual jurisdiction” is defined to mean
a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider. (Paragraph 1 of the Rules).
In essence, by submitting to a “mutual jurisdiction” – which the complainant must do to take advantage of the UDRP – he gives the respondent the advantage of adjudicating the dispute under its own national law. In one of the formative cases, the Panel stated that this “additional forum is provided not by operation of law, but by contract between Complainant and the Center, and Respondent is a third-party beneficiary of that contract,” Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO March 14, 2000).
A decision dismissing a UDRP complaint is without prejudice, although pursuing further a claim for trademark infringement or abusive registration may put the complainant in the unenviable position if it cannot obtain jurisdiction in its home court of having to prosecute an action in a foreign one.
Only a small number of ICANN decisions have been challenged in U.S. Federal courts, sometimes affirming and other times rejecting the Panel’s reasoning. This can be seen in two federal cases, both of which are currently subjudice, Panel in General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com, FA0602000651676 (Nat. Arb. Forum May 12, 2006) and Deutsche Lufthansa AG v. Future Media Architects, Inc., FA0802001153492 (Nat. Arb. Forum April 17, 2008). There is no statutory mechanism in the United Kingdom comparable to the ACPA, but a lawsuit recently determined in a U.K. court by the losing respondent in Allos Therapeutics, Inc. v. Kumar Patel, D2007-0521 (WIPO June 11, 2007 ) “affirmed” the Panel’s holding that the Plaintiff registered and was using the domain name in bad faith. The court decision in Allos was brought to my attention by Jeremy Phillips in his IPKat blog.
The Panel in General Media Communications denied the complaint (<penthouseboutique.com>) but granted the Respondent’s application for a finding of reverse domain name hijacking. The Complainant challenged the entire order in the Southern District of New York (Index No. 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 have not yet been decided.
In Deutsche Lufthansa, the Respondent timely filed a complaint in the Southern District of New York April 2008 (Index No. 06 CIV 4051) to prevent losing its domain name <lh.com>). A Comment will be forthcoming on this case when there is any decision to report.The Complainant challenged the entire order in the Southern District of New York 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 have not yet been decided.
Since the “jury’s still out” on the recent ACPA cases, I will confine this Comment to Patel’s defense in the WIPO decision and his prosecution of a U.K. action. Patel argued in the UDRP case that his registration of the domain name was privileged because he intended to use it as a criticism and comment site. However, the WIPO Panel found that the stated intention alone could not lead to a finding that the Respondent had a legitimate interest in the disputed domain name. (A similar finding was made in another of Respondent’s cases, Gilead Sciences, Inc. v. Kumar Patel, D2005-0831 (WIPO November 17, 2005). In order to succeed in stating an affirmative defense under any of the ¶4(c) elements, the alleged criticism site must either be “developed or active” before the dispute arose. The disclaimer displayed on the website did not, on its own, legitimize the web site for a non-commercial or fair use of Complainant’s trademark (see the similar case of Abbott Laboratories v. Kumar Patel, (FA 1740337 Nat. Arb. Forum, August 15, 2006).
Patel had also been an unsuccessful plaintiff in a prior court challenge in the U.K. as well as respondent in a number of other WIPO and Nat. Arb. Forum cases. In making his case in the plenary action, Patel argued again that he intended the domain name to be used as a criticism site. The landing page, however, stated only that it will be used “in time” as “the focal point for people to share their bad experiences” in relation to the Complainant’s services or products. Plaintiff offered no concrete evidence of his stated intention. Judge Proudman patiently reviewed Plaintiff’s theories of action, including causes that the ICANN order infringed his right to freedom of expression under Article 8 of the European Convention on Human Rights, defamation, malicious falsehood and wrongful threats to sue for trade mark infringement. On the merits, Sonia Proudman QC observed that freedom of expression “is not an unqualified right, and must be balanced against the rights of others, such as the rights of a minority not to suffer abuse or, as in this case, the rights of a trade mark owner freely to enjoy its own rights and property.” She concluded that
[Mr. Patel] cannot accept that he is the aggressor, not the victim. He is not debarred from making legitimate criticisms of pharmaceutical companies nor from setting up proper criticism websites from which he and others might do so. Instead, he had chosen to usurp names and logos contrary to the UDRP policy.
The court dismissed the Plaintiff's ction in its entirety as being without merit.
Privacy (Proxy) services have become a standard offer in registering domain names and subscribing to one is not an indication of bad faith. However, they “may also have unsatisfactory or even illegitimate uses, such as to delay UDRP proceedings (Gaylord Entertainment Company v. Nevis Domains LLC, D2006-0523 (WIPO September 6, 2006) or to facilitate cyberflight (HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007).
The immediate procedural issue is identifying the proper Respondent. There are one of three possibilities. First, when the registrar does not unduly delay disclosing the registrant's name, the Respondent is the registrant. If there is delay, the respondents can be both the proxy service and the registrant. If the service fails to identify the registrant then the respondent will be the service alone. See Registrar Violations of Contractual Obligations.
[MORE TO COME]
[Registrar Violations of Contractual Obligations]
In a letter dated April 16, 2008, WIPO calls ICANN’s attention to “certain registrar-related practices ... having a potentially adverse effect on the function of the ICANN-mandated Uniform Domain Name Dispute Resolution Policy.” While only a handful of registrars is implicated, the letter is a wake up call against complacency. Some of the practices identified by WIPO are inconsistent with and others are in violation of the ICANN Registrar Accreditation Agreement (RAA). The RAA is “[o]ne of the key contracts in the DNS network concern[ing] the obligations of registrars.” It establishes, among other things, procedures for responding to notices of domain name disputes. Delay or worse can only undermine the operation of the dispute resolution regime. A copy of the letter is available at <http://www.wipo.int/export/sites/www/amc/en/docs/icann160408.pdf>.
The practices includes failures to 1) respond timely to WIPO Center requests for verification of registrants’ names and other pertinent information, 2) provide incorrect or unclear information, 3) timely lock disputed domain names, 4) permit changes in registrant identity, 5) implement decisions. WIPO cites several cases for each practice and records its dismay at what it sees as a degeneration in compliance with the RAA. In the most recent case, The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, D2008-0156 (WIPO May 20, 2008), the registrar permitted a change in registrant identity after the complaint was filed. The Panel stated that it “suggests that the Respondent has sought to frustrate these proceedings.” It also suggests collusion with the wayward registrar.
All of the practices are disturbing; some particularly so. When the registrar fails to respond promptly to the Provider’s request for verification it leaves the Center with having to proceed on the basis of the WhoIs database. The WIPO letter explains that the
consequences for proceeding without the registrar’s confirmation s to the locking and status of the disputed domain name may be that – and the Center has had examples of such situations – a disputed domain name is improperly deleted during the proceeding, or transferred to another registrant, and/or re-registered with another registrar.
The registrar in Danware Data A/S v. Texas International Property Associates, D2007-0945 (WIPO October 10, 2007) failed to respond; a different registrar in Lime Wire LLC v. MM (Mike Morgan), D2007-0620 (WIPO August 20, 2007) allowed the registration to go to another registrar.
In addition to the uncertainty of having to chase after the real registrant, a situation one Panel describes as a “Russian-doll scenario[],” TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, D2006-1620 (WIPO March 7, 2007), there is the unanticipated delay in deciding the cases, which is a bonus for the respondent and a burden for the complainant.
[Registration of Domain Names For Use as Commentary and Criticism]
Paragraph 172 of the WIPO Final Report reads: “Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations would ... not be considered to be abusive.” Enforcement of this principle, however, is not without qualification. Comment and criticism carried on web sites with domain names that are confusingly similar to a complainant’s trademark are more generally respected than those carried on web sites with domain name that are identical to complainant’s trademark, although there are exceptions. The exception is expressed in such cases as Hollenbeck Youth Center, Inc. v. Stephen Rowland, D2004-0032 (WIPO April 14, 2004) in which the Panel focuses on “transparency.” For him, “[t]ransparency starts with choosing a domain name which reflects the protest as opposed to a domain name which implies an affiliation to the trademark holder.” The fair use/non-commercial defense is provided in the Policy at ¶4(c)(iii):
[Y]ou 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.
A number of decisions illustrating the point of departure in ruling on identical and confusingly similar domain names were filed in the latter months of 2007 and early months of 2008. The latest entry is Southern California Regional Rail Authority v. Robert Arkow, D2008-0430 (WIPO May 12, 2008). The Complainant has a registered trademark for METROLINK. The Respondent registered <metrolinkrider.com> and <metrolinksucks.com>. The Complainant contends, finally, that both Domain Names were registered “primarily to disrupt” its business. However, the Panel noted that there was “no evidence in the record demonstrating how the handful of diverse comments posted on the Respondent’s website have interfered with the Complainant’s business.” Indeed, “[f]rom the record and a perusal of the Respondent’s website, it appears rather that the Domain Names were registered for precisely the reason stated by the Respondent – to provide a forum for airing comments about the Complainant’s transit service.” In order for a complainant to prevail, “something more than criticism is required to establish illegitimacy and bad-faith for purposes of the Policy.”
This statement of what a complainant must do to breach the respondent’s “noncommercial or fair use” defense echoes the failing of proof generally in criticism and commentary cases. The Policy is not designed to insulate trademark holders from contrary and critical views if they are legitimately expressed without intention for commercial gain, even if the critical views are unfair, overstated, or outright lies, and even if they are posted at <trademark.TLD > websites. “Courts have rejected the notion that trademark rights may eclipse First Amendment protection,” Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, D2000-0858 (WIPO December 4, 2000) (Not-for-profit organization in opposition to Complainant); Bridgestone/Firestone, Inc. v. Jack Myers, D2000-0190 (WIPO July 9, 2000) (pure criticism).
An appropriate test is to examine the content of the website to determine whether the respondent's offering is pure commentary and criticism and whether it is directed to the complainant or its goods/services which is legitimate as opposed to delivering a political message which would only be legitimate if it concerns the trademark owner.
Recent cases cases on the <trademark.com> paradigm include 1066 Housing Association Ltd. v. Mr. D. Morgan, D2007-1461 (January 18, 2008) (<1066ha.com> [Housing Authority is abbreviated; Respondent appeared, Transferred); Council for Refractive Surgery Quality Assurance, a nonprofit California corporation (USAEyes) v. Brent Hanson, FA0712001118174 (Nat. Arb. Forum February 7, 2008 (<usaeyes.info>; Respondent appeared, Transferred. A recent case on the <variationoftrademark.com> paradigm is Chelsea and Westminster Hospital NHS Foundation Trust v. Frank Redmond, D2007-1379 (WIPO November 14, 2007) (<chelwest.com>; Respondent appeared, Complaint denied).
Some panelists are of the view that free speech is more rigorously protected under U.S. law. However; this view is at best provincial. The Panel in Fundación Calvin Ayre Foundation v. Erik Deutsch, D2007-1947 (WIPO February 25, 2008) (<calvinayrefoundation.org>; Respondent appeared, Transferred) points out that the “principle of freedom of expression is enshrined, for example in article 10 of the European Convention on Human Rights and article 19 of the Universal Declaration of Human Rights”).
[Respecting the Record – Construing Rule 12 of the Policy]
A complaint in a UDRP proceeding is a procedure that combines a pleading with a motion for summary judgment. Whatever evidence a party has in support for or defense of the claim for abusive registration must be presented with the pleadings or risk losing the ability to supplement the record. Evidence withheld to gain a tactical advantage (because it supports the adversary) or for other reasons (failed to think of its value) can be costly. Parties do not have the right to submit further statements or documents, although there is a variance in this respect between the supplemental rules of WIPO and the National Arbitration Forum, the latter allowing for what in essence is a reply and sur-reply.
However, Rule 12 of the Rules of the Policy reads: “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” The decision to issue a procedural order is discretionary with the panelist, which was done in Fasthosts Internet Ltd v. Jamie Scott, Smudge It Solutions Ltd., D2008-0841 (WIPO July 24, 2008), but, with a confession:
Lastly, it is worth noting that it is questionable whether it was appropriate for the Panel to have issued the procedural order that it did in this case. It is for a complainant to prove its case and it is not for a panel to do so on a complainant’s behalf. Notwithstanding this, the Panel decided in this case to issue an order providing the Complainant with an opportunity to address a number of gaps in its case. It did so having noted that the Complainant was not legally represented, may not have been legally advised and because the gaps in question were ones that it seemed the Complainant might have been able to fill. However, so far as the issue of bad faith registration was concerned, the Complainant chose not to avail itself of that additional opportunity.
The procedural order was also discussed in Leonard Hardy v. Amrit Resort, D2008-0698 (WIPO July 21, 2008), a decision by a 3-Member Panel denying the complaint. In this case, the Panel, finding a paucity of evidence that the trademark was well known internationally as the Complainant alleged, “ordered the Complainant to furnish evidence specifically concerning the use of the mark online or in Nepal at the time the Domain Name was registered, giving the Complainant an opportunity to make a fuller record.” The Panel received the further statement, but alas
In this case ... the “evidence furnished by the Complainant in response to that order does not cite any advertising or sales in Nepal. The supplemental evidence does show that the Complainant began to advertise its products online with the unregistered COLONIX mark in early 2002, in English, Polish, and Hungarian, on three herbal health websites, including the Complainant’s own. There is no evidence indicating the level of international advertising and sales or showing the number of website visitors at that time, either globally or regionally.
Interestingly, not all panelists are so liberal in issuing procedural orders. For example, the 3-Member Panel in Helen of Troy Limited v. Mailadmin, Ltd. and Vitali Fed, D2005-0371 (WIPO July 15, 2005) dismissed the complaint because it could not “tell from the record submitted if Complainant has any legitimate claim to these registrations or not” and it opted not to request further evidence through a procedural order. In contrast, the Panel in DigiPoll Ltd. v. Raj Kmar, D2004-0939 (WIPO February 3, 2005) asked and the Complainant responded by clarifying its position with documentary proof sufficient to win transfer of the domain name.
In construing Rule 12, there are specifically two areas of factual research that panelists are authorized to take on their own initiative, inspecting the respondent’s website and researching the public record. These are discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Paragraph 4.5 reads:
Consensus view: A panel may visit the internet site linked to the disputed domain name, order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. If the panel feels that it requires further information to make a decision in a proceeding then it can issue a panel order to the parties.
Inspecting the respondent’s website is typically necessary in fair use and free speech cases to examine its content whether it is what it is purported to be. Researching the public record is typically associated with corroborating allegations of trademark right, for example, accessing the PTO database.
If unsolicited supplemental submissions are received, they have been accepted in limited circumstances, for example 1) when offered to present pertinent new evidence not reasonably available until after the party’s initial submission, Top Driver, Inc. v. Benefits Benefits, D2002-0972 (WIPO January 7, 2003); 2) to bring new and highly relevant legal authority not previously available to the attention of the panel, Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO April 13, 2000); and 3) to rebut arguments of the opposing party that could not reasonably have been anticipated, Interactive Study Systems Inc. v. BFQ, D2008-0205 (WIPO April 2, 2008). Unacceptable are supplemental submissions that simply reargue the same issues that have already been made, World Wrestling Federation Entertainment, Inc. V. Ringwide Collectibles, D2000-1306 (WIPO January 24, 2001).
[Respondent’s Right to a Domain Name In Which It Also Has a Trademark Right]
Except where a registrant is the first to register and has a legitimate claim to the disputed domain name, it is settled that registration of the domain alone confers no right or legitimate interest in it. However, the respondent can establish its legitimacy by satisfying any of the three affirmative defenses set forth in ¶4(c)(i-iii) of the Policy. This includes respondent showing that it owns a trademark obtained for legitimate commercial activities of its own and not opportunistically in violation of another’s rights. Concurrent ownership of trademarks may not occur in great number in UDRP cases, but Panels have treated them as being within the scope of the Policy. Evidence of a concurrent legitimate trademark bridges the first two defenses, that is 1) prior to notice the respondent used or is making demonstrable efforts to use the domain name in connection with a bone fide business; and 2) the respondent is commonly known by the domain name.
Determination of a respondent’s rights involves delving into its motivation and weighing its conduct in obtaining a trademark. Two recent cases illustrate the issue. Uponor Oyj and Uponor Innovation AB v. Iman G. Mohammadi, Network Supporters Co. Ltd., D2008-0209 (WIPO May 6, 2008) (Swedish Complainant, Iranian Respondent) and Sandvik Intellectual Property AB v. Harbhajan Singh/State Engineering Corporation, D2008-0608 (WIPO June 5, 2008) (Swedish Complainant, Indian Respondent). In both, the foreign trademarks were found to be legitimate which resulted in the complaints being denied. The right contended for can also be from acquired distinctiveness, as in Operation Homefront v. Illinois Office of Lt. Governor, D2007-1037 (WIPO October 1, 2007) (<operationhomefront.org>). The Complaint was denied because the Respondent proved that it owned a common law trademark antedating the filing date of the Complainant’s registration.
Respondents’ right, of course, rest on the legitimacy of the trademark registration and this, in turn, may involve delving into the registrant’s motivation in applying for the trademark. Absent indicia of bad faith, “if a respondent proves that it has a registered trade mark, it also demonstrates a legitimate interest in the domain name, and a complaint would therefore fail,” Ribbel International Limited v. Ribbel Medizintechnik GmbH, D2005-1183 (WIPO January 16, 2006) (Indian Complainant, German Respondent). It may also be that “[t]wo independent parties may hold trademark rights in different national jurisdictions and each may, on that basis, be able to demonstrate rights or legitimate interests under the Policy in the same domain name,” Lexicon Marketing Operating Luxembourg, S.A.R.L v. Facundo de Giorgio, D2006-0730 (WIPO September 15, 2006) (<computacionsinbarreras.com>) (U.S. and Argentina). This would also be true for United States parties, each of whom hold a legitimate trademark, albeit in different classes of goods or services.
However, not all interests are legitimate and sometimes the right is bogus, as was the case with The Union des Associations Européennes de Football v The European Unique Resources Organization 2000 B.V., D2000-0230 (WIPO July 5, 2000) (<euro2000.com>) (However, the complaint failed on res judicata grounds). Sometimes the right the respondent claims is bogus, as the Panel found in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and Madonna.com, D2000-0847 (WIPO October. 12, 2000). To establish that a trademark was registered legitimately, the respondent must demonstrate that its registration in the different jurisdiction was made in good faith, The Panel in Madonna Ciccone concluded that the Respondent attempted to establish a right “through the expedient of securing a trademark registration in Tunisia.” However, a right cannot be legitimized by subterfuge. If it could “then the ICANN procedure would be rendered virtually useless.” The Panel continued:
[to] establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.
The Madonna holding received further clarification by the Panel in BECA Inc. v. CanAm Health Source, Inc., D2004-0298 (WIPO July 23, 2004). He advanced the Ciccone analysis by calling for examination of the “chronology of events” and “knowledge and intention of the Respondent at the time the disputed domain name is registered.” It abstracted the following guidance from Ciccone:
(i) When considering the question of “rights or legitimate interests” under paragraph 4(a)(ii), a panel can, in an appropriate case, question the legitimacy of a trademark relied upon by a respondent. The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. In a case where, in the opinion of the panel, a trademark has not been sought or obtained for a legitimate or bona fide purpose, but merely in order to bolster a domain name registration, the trademark can be disregarded.
(ii) The chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the respondent’s domain name registration. A trademark application made subsequent to notice of a dispute or the domain name registration may indicate a lack of legitimate interest.
(iii) The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
(iv) The connection, or lack of it, between the respondent and the jurisdiction in which it is seeking a trademark registration may indicate whether the trademark application or registration is “legitimate.”
The determination in BECA Inc. is not a declaration that the Tunisia registration is illegitimate, but a finding that Madonna’s right cannot be trumped by a subsequent, opportunistic registration. In contrast, the Panel in Lexicon Marketing found that Respondent (a trademark registrant in Argentina) was using the domain name in connection with a bona fide business in Argentina. Although its use of the domain name to solicit business in the United States was in bad faith, the Panel nevertheless held that could not find that the registration was in bad faith and denied the complaint. The inference is that the trademark registration was not opportunistic as was the respondent’s in Madonna.
However, when the evidence shows that the respondent obtained a trademark “to shield a domain name from an unfavorable UDRP result ... a Panel should not be bound by an immutable rule that would, if followed blind[ly], work an inequity on one of the parties or pervert the objectives of the Policy,” Goldman, Sachs & Co. v. Lis Wevers c/o Goldman Advertising Services BV, FA0610000812109 (Nat. Arb. Forum November 22, 2006) (<goldmansex.com>). The Panels in Uponor Oyj and Sandvik Intellectual Property concluded that the Respondents’ Iranian and Indian trademark registrations were made in good faith and “provide[d] the Respondent[s’] principals with a legitimate interest in the Domain Name.”
Punting, Removed -- Published LexisNexis Trademark Blog
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WHAT IS THE UNIFORM DOMAIN NAME RESOLUTION POLICY AND WHAT IS ITS PROVENANCE ?
The Uniform Domain Name Resolution Policy (“UDRP” or the “Policy”) is a special purpose alternative dispute resolution regime implemented by the Internet Corporation of Assigned Names and Numbers (“ICANN”) in October 1999. It is based on studies undertaken by experts under the auspices of the World Intellectual Property Organization (“WIPO”) which published a Final Report earlier in the same year addressing the collision of two systems, the trademark system and the domain name system. The experts found that there was an urgent need to protect “the orderly functioning of the market through the avoidance of confusion and deception” (WIPO Final Report at ¶11). The Final Report recommended a regime that would balance rights between trademark owners and registrants of domain names based on procedural and legal principles widely accepted around the world.
One complaint was filed in the implementation year and decided on default in January 2000. Since its inauguration, ICANN panelists from WIPO and the National Arbitration Forum have filed over 25,000 decisions. Each of the Providers maintains a databank of decisions, WIPO here and Nat. Arb. Forum here. WIPO more so than Nat. Arb. Forum has organized its databank in creative ways to facilitate research [see Index of WIPO UDRP Panel Decisions]. Nat. Arb. Forum is less research friendly, but publishes a monthly newsletter, here. WIPO publishes statistics for a number of categories of information; Nat. Arb. Forum does not.WIPO also publishes an Overview of WIPO Panel Views On Selected UDRP Questions. Interestingly, although WIPO disclaims precedent in favor of consensusin in its Overview, panelists routinely reinforce governing principles by citing authority from UDRP and decisions from cases decided in national courts and many of them use the term "precedent". For common law jurisdictions, precedent is an ancient procedure and the absence of historical citation can undermine the authoritativeness of a decision. Parties naturally want to know why they have won or lost. Others, and prospective parties, want to learn what it takes to prevail or avoid losing in such a proceeding.
Domain name law is a developing jurisprudence. To U.S. federal judges the UDRP process is "adjudication lite," which it may be. But it performs well the task of balancing disputants' rights to keep possession of domain names. The appointees who serve as experts on ICANN panels and drive the jurisprudence are drawn from an international bench of lawyers, scholars and retired jurists. Their decisions draw on well established legal principles the sources for which are set out in Rule 15(a) of the Policy: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” The final clause -- "and principles of law that it deems applicable" -- opens the jurisprudence to construction. So, for example, where “both the Complainants and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes ... the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States,” KeyCorp and City of Seattle v. i-designsolutions.com, Inc., D2005-0104 (WIPO April 14, 2005) citing Tribeca Film Center, Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO April 10, 2001) that cites EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., D2000-0047 (WIPO March 24, 2000). In the case of the statutory principle of constructive notice, if applied at all, it is limited to parties resident in the United States. The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, D2003-0305 (WIPO June 18, 2003) (“constructive knowledge” exists in principle under United States trademark law and is valid, especially in the situation when the Complainant and the Registrant of the disputed domain name are located in the United States).
The great benefit of the UDRP is its international reach. It operates across national borders without territorial restriction. See, Invoking Jurisdiction. If the complainant qualifies as a trademark owner in any jurisdiction in the world and has a marketing presence in the respondent's jurisdiction or proves that it or its mark was known to the respondent (actually or was at least aware of it) at the time it registered the domain name, then it is entitled to a remedy under the Policy. If there is jurisdiction -- proof that the complainant has a trade or service mark in which it claims a right [¶4(a)(i)] -- the proceeding will be decided efficiently, quickly and relatively inexpensively in the form of a declaratory order to the Registrar. If the complainant cannot prove that it has a trademark or that it or its trademark was known to the respondent at the time it registered the domain name, then the complaint must be denied. The theory underlying this conclusion is that a registrant cannot be said to have acted in bad faith when, at the time of registration, it had no knowledge or awareness of the complainant or its trademark, but the respondent's alleged lack of knowledge and unawareness cannot be "wilful blindness." Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum November 7, 2000). The defense must be creditworthy. Circumstances supporting lack of knowledge include classification of the mark (fanciful, arbitrary, suggestive, descriptive, and generic), geographic distance, and respondent’s business.
The UDRP model of bad faith is substantially different from the Anticybersquatting Consumer Protection Act and some country code ADR policies by requiring either/or proof rather than conjunctive bad faith. See, Proving Bad Faith and Complainant Must Prove Bad Faith in the Conjunctive
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THE ARCHITECTURE OF THE UDRP: A QUICK PRIMER
The architecture of the Policy could not be more simple. There are three requirements each having a number of elements that can be satisfied on an either-or basis. The analysis of the evidence is not entirely linear; it shifts back and forth. It starts with the complainant’s proof of its own right and disproof of any right or legitimate interest of the respondent; shifts to the respondent’s proof of defenses, if any; then, back to the complainant’s proof of the respondent’s bad faith.
1. – the domain name is A) either identical or confusingly similar to a trademark B) in which the complainant claims a right [¶4(a)(i)];
IF THE COMPLAINANT FAILS TO SATISFY THE JURISDICTIONAL REQUIREMENT OF EITHER ELEMENT, THE COMPLAINT MUST BE DISMISSED FOR LACK OF SUBJECT MATTER JURISDICTION.
2. – the respondent has either A) a right or B) a legitimate interest in the domain name [¶4(a)(ii)] ;
IF THE RESPONDENT REBUTS THE COMPLAINANT’S PRIMA FACIE CASE BY PROVING THAT IT DOES HAVE A RIGHT OR A LEGITIMATE INTEREST IN THE DOMAIN NAME, THE COMPLAINT MUST BE DISMISSED.
3. – the respondent rebuts complainant’s prima facie case by proving one or more of three affirmative defenses [¶4(c)(i-iii)]. The affirmative defenses are:
i. “[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.”
ii. “[Y]ou (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.”
iii. “[Y]ou 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.”
IF THE COMPLAINANT MAKES AN UNREBUTTED PRIMA FACIE SHOWING THAT THE RESPONDENT HAS NEITHER A RIGHT NOR A LEGITIMATE INTEREST, THE ANALYSIS PROCEEDS TO THE NEXT REQUIREMENTS.
4. – the complainant must prove that the respondent BOTH A) registered and B) is using the domain in bad faith [¶4(a)(iii)].
– to satisfy the bad faith requirement of ¶4(a)(iii), the complainant has to prove one or more of four elements [¶4(b)(i-iv)]. The elements of bad faith are:
i. “[C]ircumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
ii. “[Y]ou have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.”
iii. “[Y]ou have registered the domain name primarily for the purpose of disrupting the business of a competitor.”
iv. “[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.”
IF THE COMPLAINANT IS ONLY ABLE TO PROVE USE IN BAD FAITH, THE COMPLAINT MUST BE DISMISSED.
IF THE COMPLAINANT SUCCEEDS ON ALL THREE REQUIREMENTS THE PANEL IS EMPOWERED TO ORDER THE DISPUTED DOMAIN NAME EITHER CANCELLED OR TRANSFERRED TO THE COMPLAINANT.
Brahma Kumaris World Spiritual Organization v. John Allan, FA0709001075486 (Nat. Arb. Forum November 19, 2007) (<brahmakumaris.infro>), Respondent appeared; Complaint dismissed).
Policy ¶4(b)(iii) - The concept of “misleadingly diverting consumers” which arises in the context of disrupting a complainant's business refers to the kind of confusion found in trademark infringement case