Ordinarily, a domain name registered prior to the complainant’s acquisition of a trademark could not have been registered in bad faith “because the registrant could not have contemplated the complainant’s then non-existent right,” WIPO Overview paragraph 3.1. The trademark and disputed domain name in Spacebound, Inc. v. Amaben Internet Services Inc., D2011-1403 (WIPO October 3, 2011) are PRICE PLUNGE (registered June 21, 2011, application filed April 10, 2010, first use in commerce December 12, 2010) and <price-plunge.com> (registered February 24, 2011). Complainant registered <priceplunge.com> on April 5, 2010. The Respondent defaulted.

Default in answering the complaint, however, does not lead to an automatic ruling for complainant. Brent Redmond Transportation, Inc. v. SSI Express, D2008-1765 (WIPO December 30, 2008) (“Unlike in civil litigation in the United States of America, failure to file a response in a Policy proceeding does not constitute an admission of any matter pleaded in the Complaint or result in the Policy equivalent of a default judgment.”) A complainant does not prevail on its pleadings alone anymore than a respondent forfeits the domain name for failing to answer the complaint. VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000). While default may be a factor in assessing the respondent’s right or legitimate interests in the domain name and its intention in registering it, it is not by itself an admission of bad faith.

The parties in Spacebound are respectively in the U.S. and Canada. There is only circumstantial evidence that the Respondent had any knowledge of the Complainant or its trademark, but the similarity between domain name and trademark is suspicious. The combination of “price” and “plunge” is not common although the words are. The sole difference between the domain name and the trademark is the hyphenation. That a domain name registration precedes the certificate of trademark is a factor but not conclusive of good faith. The WIPO Overview has an “however” which reads:

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

The evidence in Spacebound (such as it is) consists of negatives:

[T]he Respondent does not have a clear identity, and its address is effectively a post office box. It also appears unlikely to the Panel that the Respondent can have registered a domain name so closely similar to the Complainant’s mark, but had no awareness of the Complaintant’s mark or its business. Further, as noted above, the Respondent has chosen to submit no formal response. As such, the Panel considers that it is reasonable to draw a negative inference from the Respondent’s failure to reply.

It is also a negative that the domain name does not resolve to an active website. It is thus open to the argument that “it is not possible to conceive of a circumstance in which the Respondent could legitimately use the disputed domain name.” An active website offers a clue to a respondent’s identity and the nature of its business. In Spacebound Respondent’s post office box address is a strip shopping mall. For the Panel, it appeared “unlikely … that the Respondent can have registered a domain name so closely similar to the Complainant’s mark, but had no awareness of the Complaintant’s mark or its business.”

gmlevine

“Given the human capacity for mischief in all its forms” (said one Panel) “the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to exhaustively enumerate all its varieties,” Worldcom Exchange, Inc v. Wei.com, Inc., D2004-0955 (WIPO January 5, 2005) (<wei.com>). There are three acts that are presumptively abusive, namely pointing or threatening to point the disputed domain name to a website featuring “adult content”, extorting money to return a domain name fraudulently transferred (allegedly by someone other than the respondent who obtained it in good faith) and phishing.

In Motorola Inc. v. NewGate Internet, Inc., D2000-0079 (WIPO April 20, 2000) the Respondent threatened to “use the domain to host an ‘adult sex site’.” The majority noted that “actions that create, or tend to create, violations of the law can hardly be considered to be ‘bona fide’.” In Carso S.A. de C.V. v. RusliCyber.com and Trisakti University, Mr. Ahmad Rusli, D2008-1767 (WIPO January 5, 2009) when the Complainant decided did not respond to Respondent’s communication to talk about the domain name Respondent in retaliation threatened to divert traffic to an “unpredictable destination.” The Respondent’s explanation was that the threat “was just a way another ‘method’ to attract the Complainant’s attention.”

Gryphon Internet, LLC v. thank you corp. / Jon Shakur, FA1108001405610 (Nat. Arb. Forum October 11, 2011) combines threats and fraudulent acquisition. The Respondent’s (alleged) innocent purpose was to “use [the domain name] for a web site for pets and rare animal species.” It provided no evidence of this intention. Complainant’s proof was persuasive that until August 2011 the site was a thriving business when it was attacked and stolen. In response to the proceedings the Respondent threatened to point the name to adult content.

In cases that raise these issues Panels have consistently ruled that the complainant is entitled to relief. Although fraudulent transfer is not listed as an act of bad faith, paragraph 4(b) makes it clear that subparagraphs (i) through (iv) are nonexclusive examples of bad faith acts. The Panel in Gryphon cites Worldcom Exch. (above) in which the earlier Panel noted that the “Complainant seeks to expand the territory of bad faith, presenting a new type of abusive conduct on the part of the Respondent, one that on its face cries out for relief: the hijacking of a domain name through the manipulation of password access.” It is an example of cybersquatting, in effect, expanding to include abusive conduct.

Hijacking combined with threats strengthens a negative inference about a respondent’s intention in acquiring a domain name. Although the Respondent in Gryphon denied sending e-mails requesting money – a violation of paragraph 4(b)(i) – it admitted that it owned the address that sent the e-mail. That, and the e-mail to the Provider about adult content “clearly intended to portray that if the Respondent [did] not get his own way the business operated at the site [would] be damaged.” The language of extortion is inconsistent with a claim of innocence. Whether a respondent likely gained control or was given control of a fraudulently transferred domain name or even innocently acquired it from a hijacker it will be forfeited to the trademark holder.

Paragraph 4 (b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant the owner of the trade mark in question for valuable consideration in excess of documented out of pocket costs. The Respondent has not produced any evidence that it has paid any sum for the Domain Name and yet the Complainant has produced evidence by way of documents that the Domain Name was stolen.

Although the Respondent in Gryphon denies that it sent the e-mails to the Complainant requesting money for the Domain Name, it clearly threatened to point the domain name to adult content to cause damage to the business on the site. The Respondent admitted that it owned the e-mail address that sent the threatening e-mail. It was “clearly intended to portray that if the Respondent does not get his own way the business operated at the site will be damaged with the clear implication that the Respondent did not believe he really owned or was entitled to that business or site connected to the Domain Name.” As such the communication speaks in the language of extortion. Based on this evidence alone the Panelist was able to decide that the Respondent acquired the Domain Name and was using it in bad faith.

gmlevine

Free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name, but it is clearly subsumed in “fair use” and qualifies as a defense under paragraph 4(c)(iii) of the Policy. The defense rests on the proposition that speaking in opposition to a trademark owner was a right worthy of protection. The WIPO Final Report paragraph 172 provides that “Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations would … not be considered to be abusive.” Just as quickly as free speech was recognized as a protectable right there developed two lines of reasoning that continue to split panelists. The split is unsettling because decisions should not depend on the adventitious selection of Panels, yet that is what has happened.

In the first line of reasoning, the composition of the domain name is irrelevant. Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (<bridgestone-firestone.net>) and Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001) (<britanniabuildingsociety.org>) are examples. The second line of reasoning holds that “it is not the address of the web site that is protected by free speech principles, but rather the content of the web site,” Valero Energy Corporation v. American Distribution Systems, Inc., D2001-0581 (WIPO August 12, 2001) (<valeroenergy.com>) and Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (<cogema.org>). In Compagnie Generale the Panel held that while Respondent has a “right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant … [that] is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant's mark].” Thus, the right respondents concededly have under this line of reasoning to comment or criticize is hemmed in.  They can speak but not cloaked in the offending domain name.

If “it is not the address of the web site that is protected by free speech principles, but rather the content of the web site,” then it follows that domain names identical to the trademark would always be vulnerable to forfeiture. The Panel in Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (<eastman-chemical.com>) made an even more radical contribution by stating (perhaps inadvertently given that the domain name is identical to the trademark) that “[f]ree speech cannot be used as a defense against the use of a confusingly similar mark as a domain name.”

The Panel in Equality Charter School, Inc. v. Mona Davids / A Happy DreamHost Customer, D2011-1226 (WIPO September 2011)(<equalitycharterschool.com>) argues for a “flexible, context-based approach to fair use cases.” He “finds that no bright line may be drawn denying the existence of a non-commercial free speech right under the UDRP simply based upon whether Respondent has or has not added words (other than the gtld suffix) to Complainant’s alleged trademark.” The fact that a <trademark.com> case causes “initial confusion among Internet users” should be overlooked if the content of the website is what it purports to be.

A “flexible, context-based approach” requires examining initial interest confusion. The Panel in Equality Charter School finds that “search engines display[] descriptive content that users would see before clicking the link to be taken to Respondent’s website. The search engine descriptions of Respondent’s website picked up the critical nature of its content; users who glance at the descriptions in the search results rather than simply clicking links without reading would already be alerted to the critical nature of Respondent’s website before clicking on the link indexing the website in the search tool.” On this basis, “[t]he Panel finds that the subtitle quoted above, the other headlines and the tone of postings on the site would alert any reader upon first viewing that the website is not sponsored by Complainant, but is instead boldly critical of Complainant’s school.” Thus, although the domain name does not add terms to the complainant’s mark, no one viewing the website could have thought it was the complainant’s website.”

“If negative commentary were a touchstone of bad faith” (quoting the Panel in Equality Charter School among others) ‘then in every UDRP decision recognizing a fair use right supported by protest or criticism, the respondent registering the disputed domain name to launch the commentary would be found to have registered in bad faith.” Negative commentary may be displeasing to the complainant, but it is not grounds for silencing it.

gmlevine

Paragraph 4(a)(i) of the Policy is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts, unless it suggests the whole. Whether the domain name is “confusingly similar” to the trademark focuses on differences in the composition of the string of letters, words or numbers. Prefixes and suffixes generally do not create a distinctive name – a geographic identifier for example added to a well known trademark is no more than the well known trademark with a geographic identifier, Red Bull GmbH v. Chai, D2003-0709 (WIPO November 11, 2003) (<thairedbull.com>, short for Thailand) – but added phrases to a dominant well known trademark can create an entirely new meaning, <synagisisbadforyou.com> and <synagisisnotsafe.com>, Medimmune, Inc. v. Jason Tate, D2006-0159 (WIPO April 14, 2006). Similarly, singularizing words (discussed in an earlier Note) as in Tire Discounters, Inc. v. TireDiscounter.com, FA0604000679485 (Nat. Arb. Forum June 14, 2006) (<tirediscounter> and TIRE DISCOUNTERS); and pluralizing, Sears Brands, LLC v. Domain Asset Holdings, FA0912001298052 (Nat. Arb. Forum January 22, 2010) (NORTHWEST TERRITORY and <northwestterritories.com>) create distinctive names.

The similarity that makes a domain name confusingly similar to a trademark must be confusing to an “objective bystander,” Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010) (analysis in concurring opinion, but dissenting on the first requirement and finding that <opensociety.org> not confusingly similar to OPEN SOCIETY INSTITUTE. The threshold requirement sets a low bar but small differences as noted above “can have a major effect on the way domain names are read,” The Football Association Limited v. Websitebrokers Limited, D2001-0156 (WIPO April 5, 2001).

“BETS” and “365” combined form the trademark BETS365 (distinctive by virtue of its having been registered), but “there is nothing in the evidence which would suggest that the Complainant has any rights in respect of the element ‘365′ on its own.” In bet365 Group Limited v. Domains by Proxy, Inc. / Steve Prime, D2011-1242 (WIPO September 14, 2011) the disputed domain names are: <365bets365.com>, <365casino365.com>, <365wager365.com>, and <365poker365.com>. Any combination that includes “365” and “bets” falls on one side of the line while “365″ combined with “casino,” “wager,” and “poker” falls on the other. “A straightforward visual or aural comparison of the Complainant’s trademark with the alphanumeric strings in these Domain Names can only result in the conclusion that they look and sound quite different from the Complainant’s BET365 mark.” The Panel held that

[T]he words “casino” and “poker” are not synonyms for the word “bet” in the English language, and they do not convey the same impression. One may “bet”, or place a “bet”, without going near a casino or playing poker. The fact that those words are terms which may be used in the Complainant’s field of business does not, in the Panel’s view, make them confusingly similar to the word “bet”.

One of the questions (although not asked by all panelists) is whether there is “a risk that Internet users may actually believe there [is] a real connection between the domain name and the complainant and/or its goods and services.” WIPO Overview 2.0, paragraph 1.2. The lower the risk, the less likelihood that the total composition of a domain name will be confusingly similar. The fault line can be seen in Open Society Institute where the majority found <opensociety.org> confusingly similar to the trademark (only to conclude that the Complainant failed to prove abusive registration) and the dissent on that issue found only similarity that would not be confusing to the “objective bystander.”

Panels that subscribe to the “risk” analysis on the standing issue (and that includes bet365) are essentially lifting the paragraph 4(a)(i) bar higher. That is why the Panel in bet365 and even more so the Panel in The Football Association make a point of analyzing the differences at the phonetic and syntactic levels:

Given that the Football Association has a protectible trading reputation in “The F A”, a second question arises. Is <thefa.com> identical with or confusingly similar to “The F A”? In such a comparison one disregards the addition of the TLD. Even so, the two marks are not identical and the issue becomes one of confusing similarity. While the practice of omitting spaces between words is characteristic of “domainspeak”, the addition of only a consonant and a vowel to the definite article in English makes for a special case. “Thefa” seems inherently a fabricated word. The combination which is the Complainant’s abbreviated name has to be picked out from it by deliberate mental effort. Not for nothing, in my view, is the Complainant’s own official domain in the form <the-fa.org>. The hyphen makes a crucial difference.

Even if confusing similarity is found between domain names and trademarks, giving the benefit of doubt to the complainant on the opening gambit, there is likely to be no “likelihood of confusion” which is a trademark term incorporated in paragraph 4(b)(iv) of the Policy.

gmlevine

That a domain name is identical or confusingly similar to a complainant’s trademark is only part of the evidentiary journey. When that fact is coupled with proof that the respondent lacks any right or legitimate interest in the domain name it strengthens the trademark owner’s claim. Taking advantage of the trademark’s reputation to attract Internet traffic strengthens further but is still insufficient for abusive registration until it can be deduced that the respondent registered the domain name for the purpose it is being used. This involves showing only one answer to the question “Why did the respondent register the domain name in the first place?”

Let us take a step back. The term “legitimate interest” in paragraphs 4(a)(ii) and 4(c) of the Policy refers to the respondent’s entitlement to its choice of domain name, rather than the legality of its business. A business may be lawful, but its use of the domain name mala fides. Replacing inkjet cartridges is lawful but the “use of these … disputed domain names as the initial contact points and web page banners deprives that business of the character of being bona fide,” Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, D2000-0878 (WIPO September 21, 2000) (<canonink.com>, <canoninkjet.net>. If legality of business were the standard, then “any cybersquatter that conducted a lawful business could always find refuge,” The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., D2005-1318 (WIPO February 22, 2006). A respondent may very well have in mind a legitimate business in the future but it must demonstrate that in registering the domain name when it did it had no “exploitative intent,” at that time, Abu Dhabi Future Energy Company PJSC v. John Pepin, D2008-1560 (WIPO December 22, 2008) (masdarcity.com> and <masdarcity.net>). All these cases illustrate bad faith use contemporaneous with registration.

Of course, successful rebuttal ends the proceedings. But, in commencing the proceedings, many trademark owners want to believe that lawful business excludes acquiring domain names on speculation of future value or monetizing them with link farms. That is not the case, although either the respondent in its rebuttal to the prima facie case or the complainant in establishing the bad faith elements must address the issue of knowledge or awareness. A respondent without knowledge cannot be said to have the alleged intention. The Panel in ScribeWrite, LLC v. Buydomains.com / Inventory Management, FA1107001398963 (Nat. Arb. Forum September 6, 2011) held that reselling domain names was a lawful commercial activity, citing Micron Technology, Inc. v. Null International Research Center, D2001-0608 (WIPO June 20, 2001). The Respondents’ legitimate interests in both these case are bolstered by the kinds of names they acquired. In Micron, the Respondent’s inventory included names similar to the disputed domain name, <crucialtechnology.com>: <populartechnology.com>, <thirdgenwireless.com>, <biotechrevolution.com>, <seniorhealthissues.com> and <bravenewbiotech.com>.

In ScribeWrite the disputed domain name was identical to the trademark, but it specializes in the word “webmaster” which presumably identifies what it offers. Its inventory of names included <advancedwebmaster.com>; <jobwebmaster.com>; <juniorwebmaster.com>; <specialwebmaster.com>; <professionalwebmaster.com>; and <worldclasswebmaster.com>. It helps that the domain names in all these examples are common strings of words and affixes. It also helps, although it is by no means conclusive that, as with ScribeWrite, the disputed domain name was registered prior to the registration of the trademark.

gmlevine

Panels early recognized that complainant could likely not marshal conclusive proof that respondent lacked rights or legitimate interests in the domain name because the evidence was under the respondent’s custody and control. The solution agreed upon within a few months of the inception of the UDRP proceedings was to lower the proof bar and shift to the respondent a burden of going forward. This allowed the complainant to succeed in proving a prima facie case, but not in offering one. Once a prima facie case is offered it is subject to rebuttal, which requires respondent to establish its right or legitimate interest if it can by proving a paragraph 4(c) defense. The low bar for the complainant does not mean “no” bar. It cannot simply allege that the respondent lacks rights or legitimate interests and expect to satisfy its burden of proof. Respondent default does not lead to an automatic ruling in favor of the complainant. In this regard, the Policy is unlike an action in civil court where default is an admission of liability.

What a complainant must do is illustrated in many case by what the complainant has failed to do. A good example is Regents of the University of Michigan v. Elite Options Inc., FA1107001400516 (Nat. Arb. Forum September 1, 2011) involving two domain names, <surveyresearchcenter.com> and <surveyclaim.com>. The Panel concluded that the Complainant had a common law trademark in SURVEY RESEARCH CENTER, but none in SURVEY CLAIM. The case proceeded to the second requirement only for the trademark in which the Complainant had a right. Although the Complainant provided extensive evidence of the website resolving from the domain name the Panel held that “this use cannot be imputed to Respondent’s domain name.” To succeed the evidence must be what the Respondent is doing with the domain name it claims is infringing its trademark.

It should be de rigueur – like reading off a check list – to offer in evidence the most obvious proof of use. Internalize the requirement. Show the Panel what the respondent is doing and how that use relates to the Policy. “In this case, [the Regents of the University of Michigan] has not provided any screen shots of the website resolving from the domain name.” Offering screen shots is persuasive in showing where the disputed domain name leads because it corroborates a use or non-use of the domain name. See, Skyy Spirits LLC v. Stanislaw Krzenszczynski, FA0808001220829 (Nat. Arb. Forum November 26, 2008). Regents of the University of Michigan “also failed to make arguments in its Complaint as to Respondent’s use of the disputed domain name and how that use relates to the Policy.”

Failure to follow the formula for making the prima facie case is fatal. In addition to the miscues in Regents of the University of Michigan other examples include failure to “bring evidence of Respondents use of the disputed domain name in a way that infringes upon Complainant’s rights,” Nike, Inc. v. nikerotterdam, FA0804001180664 (Nat. Arb. Forum August 19, 2008) (<nikerotterdam>). When the complainant fails to marshal evidence it fails, even for famous brands. At the very least – rising in difficulty from common words and generic terms even if registered as trademarks – the complainant must be preemptive in presenting its prima facie case; that is, persuade the Panel that respondent cannot satisfy any defense under any subparagraph of paragraph 4(c) of the Policy. This will undoubtedly include deconstructing the respondent’s website and tracing its history from one of the services that provide this kind of information, the Internet Archive’s Wayback Machine or DomainTools.

gmlevine

When it comes to fan sites there are two views, the tolerant and the intolerant. The intolerant is illustrated in Tom Welling v. Kenneth Gold, FA1106001393893 (Nat. Arb. Forum July 29, 2011): “Here, the Respondent has used the Complainant’s name without any adornment in a domain name which gives rise to a website. It does not matter that the website is a ‘fan site’. The Panel need not enquire whether the Respondent’s motivation is commercial or noncommercial, nor whether he does or does not receive monetary compensation.” The tolerant is illustrated in Ms. Stefani Germanotta v. oranges arecool XD, FA1108001403808 (Nat. Arb. Forum September 21, 2011). It would be interesting to investigate the respective panelists for national temperament on this issue. The single member Panel for Tom Welling is from New Zealand; the three-member Panel for Stefani Germanotta are Americans.

In Tom Welling, the Respondent captures the actor’s name, <tomwelling.com>; in Stefani Germanotta, the Respondent captures the persona of the singer, Lady Gaga, <ladygaga.org>. Panelists who subscribe to the intolerant view focus on impersonation – “any use which gives rise to a right or legitimate interest must be fair and impersonation is not fair.” The tolerant view takes into account the reality of both the website as well as the enthusiasms of fandom: “Respondent notes that upon reaching her website consumers immediately read ‘Your best #1 online fan resource of Lady Gaga,’ and ‘Welcome to your #01 unofficial Lady Gaga fansite’.”

One of the benefits of notoriety for entertainers is commercial success and adoration; but it comes with a burden. “The Complainant cannot have fame without fans and fans cannot have fan sites without referring to the objects of their adoration.” Domain names that resolve to fan sites are protected under paragraph 4(c)(iii) of the Policy for their noncommercial or fair use of the complainant’s trademark. This is found to be the case with <ladygaga.org>. However, the holding of a domain name sanctioned under paragraph 4(c)(iii) does not so much recognize a “right” as it does a “legitimate interest.”

The distinction between a right and a legitimate interest is important, and in Stefani Germanotta it is expressly noted. A domain name holder with a legal right, someone (for example) who has a right concurrent with the trademark holder, has all the rights of a property owner. (This last observation comes with some qualifications too extensive to discuss in a short Note). A holder with a legitimate interest holds legitimately only so far as it is making a “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.” Thus, for the moment “Respondent’s fan site does meet Complainant’s definition of nominative fair use by its identification of Complainant’s music and related goods and services.” However,

[i]f the Respondent were to change her use in the future in a manner that indicated an intent to profit, such as by selling items, offering any commerce, or offering or accepting the sale of the disputed domain name such facts might justify a refiling and, depending on the circumstances, could lead a Panel to a different outcome than the one reached by this Panel in the present matter.

In other words, if use changes to undercut a defense under paragraph 4(c)(iii) the complainant has an actionable claim to arbitrate anew the question of rights in a second proceeding. There is no res judicata effect under UDRP or the Anticybersquatting Consumer Protection Act where the subsequent proceeding or action is for subsequent conduct. The reason is noted in Storey v. Cello Holdings, 347 F.3d 370 (2nd Cir. 2003): “Because Cello’s ACPA cause of action is predicated on conduct that post-dated the First Action, we hold that res judicata does not bar the Instant Action.”

gmlevine

Panels have long put to rest the argument that re-registration (or renewal of) is equivalent to registration, although there continue to be panelists holding that view. It is illustrated in Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) (“Based upon the record in this proceeding… [the] Panel deems Respondent’s 2009 renewal of the disputed domain name to be the date on which to measure whether the disputed domain name was registered and used in bad faith.”). One rationale for rejecting the argument is consistency. The Panel in PAA Laboratories GmbH v. Printing Arts America, D2004-0338 (WIPO July 13, 2004), although sympathetic to the re-registration as registration view explained that “[i]n making its finding, the Panel wishes to clarify that its decision under this element is based on the need for consistency and comity in domain name dispute ‘jurisprudence’.” But for “the persuasive force of the cited decisions, this Panel would have expressed the view that paragraph 2 of the Policy demonstrates that references to ‘registration’ in the Policy were probably intended to be references to registration or renewal of registration.”

In 2003, the Third Circuit Court of Appeals held in Schmidheiny v. Weber, 319 F.3d 581, 66 U.S.P.Q.2d 1062 (2003) that it did “not consider the ‘creation date’ of a domain name to control whether a registration is subject to the Anti-cybersquatting Act, and we believe that the plain meaning of the word ‘registration’ is not limited to ‘creation registration’.” UDRP Panels reached a contrary view as early as 2000. Renewal (they said) was not the equivalent of a registration, but was treated by the registrar rather “as a ministerial function,” Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), D2001-0782 (August 14, 2001). The Panel cites a number of cases and the WIPO Final Report in support of the proposition that there was never an intention “to extend the definition of abusive registration ‘to include domain names originally registered in good faith’.” As the rule has come down the earliest expression of it was made by the Panel in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000), namely that “registration of a domain name that at conception did not breach Rule 4(a)(iii) but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii).” See also WIPO Overview, paragraph 3.7 on this issue.

Another Circuit has now entered the conversation. The Ninth disagrees with the Third Circuit’s holding in Schmidheiny. The Court has held in GOPETS Ltd. v. Hise, Digital Overture, Inc., 08-56114 (9th Cir. September 22, 2011) that “re-registration [by which it means renewal of registration] is not a ‘registration’ within the meaning of § 1125(d)(1).” Interestingly, as part of its decision, the Ninth Circuit took a further step in defining domain names as property when it announced that “[n]othing in the text or structure of the statute indicates that Congress intended that rights in domain names should be inalienable.” The general rule is that a property owner may sell all of the rights he holds in property, whether “the alienation is by gift, inheritance, sale, or other form of transfer.”

The Third Circuit’s decision in Schmidheiny (which incidentally reversed the district court’s holding) assumed that “the defendant’s initial registration of schmidheiny.com was not covered by § 8131(1)(A) because it had been made before the passage of ACPA.” The Ninth Circuit concluded that this assumption was erroneous. The better view is that “§1125(d)(1)—and, by extension, § 8131(1)(A)—apply to registrations made before the passage of ACPA.”

Holding that a renewal of registration is ministerial and not a “registration” does not conclude the parties’ rights. Remember that the ACPS model is either/or registration in bad faith or use in bad faith, disjunctive rather than conjunctive as under the UDRP. Use in bad faith whether from the inception or later exposes the respondent to forfeiture. However, in GOPETS even though there was a transfer to the individual holder’s corporate entity (not a successor holder) there was no proof of bad faith use for <gopets.com> and no basis for giving the domain name to the complainant. “Transfer” to a related entity which the 9th Circuit appears to allow has lethal consequences under UDRP, an issue that I leave for discussion at a later time.

gmlevine

It is often pointed out that small differences matter when analyzing whether a disputed domain name is confusingly similar to a mark. This discernment is traceable to a 9th Circuit Court of Appeals case, Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (2002) (“Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”). The same conclusion can be extended to the second element of the Policy. Trademarks composed of descriptive strings as easily describe a complainant’s business as they do a respondent offering similar services. The addition or subtraction of a plural in a similar string can be an acceptable difference. The question is whether or not the “small difference” is targeting the complainant’s trademark.

While a small difference is insufficient to avoid the domain name being confusingly similar to the trademark, it is sufficient to establish a right or legitimate interest in it as long as the domain name describes the respondent’s business. In ecarecenter, O.D., P.A. v. Eye Care Associates, ODPA, FA1107001398961 (Nat. Arb. Forum August 30, 2011) the Respondent added the plural “s” to the domain name, <eyecarecenters.com> and EYE CARE CENTER. Both parties are in the eye care business. The same result can be seen by subtracting the plural suffix seen in another case from last year, where the domain name was in the singular and the trademark plural, Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010) (WEBVISIONS and <webvision.com>). In both instances there is confusing similarity but no evidence of bad faith.

Pluralizing or singularizing descriptive strings is more likely to be legitimate as in Tire Discounters, Inc. v. TireDiscounter.com, FA0604000679485 (Nat. Arb. Forum June 14, 2006) where the Respondent registered its domain name in the singular, TIRE DISCOUNTERS and <tirediscounter>; and pluralizing, Sears Brands, LLC v. Domain Asset Holdings, FA0912001298052 (Nat. Arb. Forum January 22, 2010) (NORTHWEST TERRITORY and <northwestterritories.com>. On the other hand adding or dropping consonants and vowels is more likely to be typosquatting, as in Apple Inc. v. Andrew Sievright, Domain Source, D2010-1916 (WIPO December 8, 2010) (omitting final “e” from trademark, <appl.com>). Further examples include substituting adjacent keys on the qwerty keyboard, an ‘f’ for ‘g’ and ‘i’ or ‘p’ for ‘o’; an ‘x’ instead of a ‘c’; a ‘q’ instead of a ‘w’, of which there are numerous examples. More distant qwerty keys, “c” and “t” have not been found infringing.

Selecting a descriptive string as a signifier identifies the holder’s line of services without necessarily anchoring it to a particular party. Eye centers are fungible, as are “birthing” and “wellness” centers, Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010). The Panel in ecarecenter explains that “[o]ne who selects descriptive terms as their mark or brand may put sufficient time and money behind those terms to elevate them to a level of distinctiveness under the doctrine of secondary meaning, but that recognition and commensurate registration cannot take the words out of the common vernacular.” Also, the “words may continue to be used by all to convey their standard meaning.”

gmlevine

Surnames may qualify as trademarks, but to the extent they are common (and provided that there is no intent to take advantage of the complainant or its trademark) they share with trademark owners the right to use them in domain names. Ordinarily, surnames are treated no differently than generic words. (Surnames qua surnames are not registrable as trademarks, §1052(e)(4) of the Trademark Act). Merely competing for space and attention with a trademark holder to use one’s own name for one’s own Internet presence does not rise to an infringement. A respondent has a right to a “domain name [that] reflects [his] initials [and his] … first and middle name, combined with [his] entire last name,” Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO July 20, 2001) (<armani.com>). In Modefine the Respondent is an individual with his own website and obviously not competing with the fashion house “Georgio Armani.” He is not a domainer, but domainer companies are not excluded from holding common surnames for offering services other than websites although websites are the prevalent use for domain names.

Non website uses qualifying as bona fide offerings under paragraph 4(c)(i) of the Policy include e-mail, FTP and hosting services. In Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, D2000-0161 (WIPO May 12, 2000) (<zero.com>, the Panel stated that “[w]e do not accept that the Complainant’s contention that registration of a domain name which is only to be used for [e-mail and file transfer operations] is in some way improper and constitutes bad faith”). The proposition is also expressed in a number of early cases that established the principle, Coltec North Carolina Inc. v. United Business Machines, Inc., D2001-0577 (WIPO June 6, 2001); Government of Canada v. David Bedford a.k.a. DomainBaron.com, D2001-0470 (WIPO June 30, 2001); and Innotek, Inc. v. Sierra Innotek, D2002-0072 (WIPO April 22, 2002) (3-member Panel) (“FTP and Email are legitimate commercial uses and the lack of a formal website page does not detract from these real and viable commercial uses.”). The first two cases granted the complaint; in Innotek the complaint was denied. The Panel in Government of Canada held that “Domain names may be acquired simply for the purpose for using them as an e-mail address or as other Internet uses such as ftp–however, this last point is on the topic of the legitimate use that a purchaser may ultimately make of a domain name.” Note the proviso that it depends on the use that a respondent makes of the domain name.

None of these cases involved surnames, but the principle is accepted by consensus that a name identical or confusingly similar to a trademark can be used legitimately for services other than websites. The most recent example of an e-mail service is Marden Group B.V. v. Tucows.com.co, D2011-1061 (WIPO August 24, 2011) (<marden.com>). The Respondent who has been challenged in a number of UDRP complaints (generally unsuccessfully) by holders of surname trademarks appears to be the premier company offering surname services. It was also recently successful in a civil lawsuit in Ontario on a procedural question that established that domain names are personal property, Tucows.Com Co. V. Lojas Renner S.A., 2011 ONCA 548 (Court of Appeal for Ontario) (defendant owns the trademark RENNER registered in Argentina), discussed in my Note of August 17, 2011.

The Marden Panel stated that it “accepts that the provision of such personalised email, blogging and webhosting services in connection with a domain name would provide a respondent with a legitimate interest in that domain name if this is its sole usage.” The proviso “if this is its sole usage” (as noted above also in the Government of Canada) is important because ordinarily content gives a lie to the respondent’s alleged good faith intent. Although the Marden Complainant alleged that prior to the filing of the complaint Respondent used the domain name to generate pay-per-click revenue, it was short on evidence that the links had any relation to the goods or services Complainant offered. A complainant establishes bad faith use by showing that a domainer respondent is diverting Internet users to a website offering links to goods or services competing with it, but not otherwise. A finding of bad faith use would only result if the links were “in a connection to goods or services competitive with those of the rights holder or … based on trade mark value” otherwise the existence of links per se would not “override the legitimate interest already established.”

gmlevine