Trademarks gather strength as they ascend the classification scale. In order, fanciful, arbitrary and suggestive are at the strong end of the scale, while descriptive and generic (if they qualify for registration) are on the weak end. The registry of trademarks includes numerous well-known dictionary words used fancifully or arbitrarily – think fruit: “apple”, “blackberry” and “orange”; or common words combined such as “micro” and “soft” and “America” and “Online.” More common words used descriptively have qualified when by their presence in the marketplace they have achieved secondary meaning. Whether domain name registrants are cybersquatting on the trademark depends on a number of factors that are discussed in Imagine Solutions, Inc. v. Encapture.com, Privacy Services / Ravindra Kumar Lahoti, D2013-0268 (WIPO April 17, 2013). In this case, the domain name, is identical to the Complainant’s trademark.

Respondent argued that “encapture” is a common word. While “en” is a familiar prefix in English, “enthrone”, “enrapture,” “entangle” etc. it does not work with “capture.” “Capture” is a common word, but not “encapture.” What would the word mean? To Respondent the prefix is a substitute for “to ”, but that would violate standard usage. “En” may mean “to put on” (“enthrone”), indicate intensification of an emotional state (“enrapture”), or cause something or someone to become more caught up in (“entangle”). The Panel notes that “Respondent has alleged that the term ENCAPTURE is generic in the sense of describing ‘to capture’. To begin with, the term ‘encapture’ is not listed in the Merriam-Webster online dictionary or in The New Shorter Oxford English Dictionary, two standard reference works. This argues against consideration as a generic term….”

Even if a word were generic the manner in which it is being used would be an important factor in determining whether the registration was abusive. There are numerous examples of domain names identical or confusingly similar to trademarks on the lower end of the scale for which the respondent has an equal right to hold and use because they are being used for their semantic meaning. In Imagine Solutions

while Respondent’s website advertising links are no longer active and accessible, the subject matter of those links [when they were active] refers to providers of goods and services that may well be competitive with those of Complainant, including “contract management software” and “computer software”, part of the class of goods for which Complainant’s trademark is registered…. Absent the trademark usage, the term “encapture” might not otherwise be associated with contract management software or computer software in general.

In other words, Complainant has created a non-word that looks as though it could be a word because it appears to have been properly formed, but in fact its validity to English speakers (as with the fruit examples) depends solely on its use in the marketplace. It works only on the symbolic, not the grammatical level. The Complainant established that the manner in which Respondent was (or had been) using the domain name disqualified it as having a right or legitimate interest in it. While that alone does not establish abusive registration it is certainly consequential in supporting a conclusion that Respondent chose the domain name to take advantage of the trademark.

Respondent argued further that it “could not have undertaken registration in bad faith because Complainant did not have rights in the ENCAPTURE trademark when he registered the disputed domain name.” This defense has merit where the domain name precedes complainant’s acquisition of the trademark, but not otherwise. Here: “Complainant has provided substantive evidence of use of the ENCAPTURE trademark [unregistered] in commerce as early as November 2005” which preceded Respondent’s purchase of the domain name. Registration is not a necessary precondition for asserting a trademark right.

Gmlevine

UDRP provides remedies on proof of abusive registration of domain names. What constitutes abuse sufficient to support a remedy is something more than having a trademark that another party is using as a domain name. Initiating a proceeding on a non-actionable claim is an abuse of the Policy. What if the complainant initially believed it had a meritorious claim, and then learned from respondent’s submission that respondent had a right or legitimate interest in the domain name? This factual situation occurred in Avaya Inc. v. Avayo Electronics, FA1302001487607 (Nat. Arb. Forum April 19, 2013) where the 3-Member Panel came up with a surprising answer that (to my knowledge) has not previously been offered and which I think marks an advance in declaring a reverse domain name hijacking.

Avaya illustrates the rare case in which Complainant has a history of commencing proceedings “against legitimate businesses” and having its complaints denied in all three. In the most recent case it is “Avaya” and “Avayo” (“[Respondent] chose the disputed domain name because it corresponds to the name of its Canadian corporation that was founded in 2005). In one of the earlier two cases, Avaya Inc. v. Moayyad Hamad, FA 1456063 (Nat. Arb. Forum Sept. 14, 2012) it is “Avaya” and “Ayava” (“[t]he Ayava name was created by combining one of the owners’ names, Aya Hamad, with the letters ‘V’ and ‘A’ (abbreviation for video and audio)”); and, in the other case, Avaya Inc. v. Sudhir Sazena, FA 1229266 (Nat. Arb. Forum Dec. 9, 2008) it is “Avaya” and “Cavaya” (“Cavaya” means “intelligence” in the Sanskrit language.”).

The most recent Avaya case that triggers this blog is important because it pronounces a view about responsibility where a respondent submits affirmative evidence that so totally undercuts a complainant’s claim that it becomes untenable. The 3-member Panel in Avaya suggests that continuing to prosecute a claim after it becomes clear there is no actionable infringement supports a finding of reverse domain name hijacking:

It is clear from the record that the Complainant knew that the Respondent is engaged in a legitimate business. When it filed the Complaint, the Complainant could plausibly have been unaware of the fact that the disputed domain name corresponds to the Respondent’s business name. However, the Complainant could not have ignored this after the Response was filed.

The appearance of an actionable claim may support commencement of a proceeding, but once the appearance is shown to be insubstantial the claim dissolves and should be withdrawn, at least that appears to be the holding:

Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent. Further, the Complainant merely asserts that the Respondent registered and used the disputed domain name in bad faith, without providing any evidence to support its assertions.

Only in the middle case did the Panel make a finding of confusing similarity, and that because the apparent transposition of “y” and “v” is generally a clue to typosquatting. The Respondent’s explanation persuades the Panel that it is operating a legitimate business.

Where the evidence establishes at a hearing that a respondent is engaged in legitimate business activity complainant becomes at risk of RDNH if it continues to press its case. A similar result comes from another 3-Member Panel in Edward Smith v. Douglas Bates, FA1302001483682 (Nat. Arb. Forum March 27, 2013) () where the domain name was registered eleven years before Complainant acquired its rights in the trademark. Here, the initiation of a proceeding is abusive. No case could ever have been made out. In declaring that Complainant was engaged in reverse domain name hijacking the Panel held that it “should have known it could not [prove its case]” Further,

the Complainant filed its trademark application shortly after it was unable to acquire the Disputed Domain Name from the Respondent on acceptable terms. The panel finds that failing in this effort, the Complainant undertook to use the Policy to acquire the Disputed Domain Name.

In doing so it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy” citing earlier authority.

These cases illustrate two streams of thinking. The first supports withdrawal of a complaint upon conclusive responsive evidence that there is no factual basis for abusive registration; the second supports finding abusive use of the proceedings where the factual circumstances cannot possibly have justified an actionable claim.

Gmlevine

Falling out of the trademark registry for failure to file a section 8 affidavit may be embarrassing but not fatal; losing a domain name for inadvertence may be fatal depending on the strength or weakness of the trademark. In the canon of defenses, however, lapse does not prejudice a complainant’s standing to challenge a domain name holder. In Department of General Services, State of Maryland v. Domain Privacy Group, FA130300 1488524 (Nat. Arb. Forum April 2, 2013) Complainant’s trademark EMARYLAND MARKETPLACE was cancelled on October 5, 2012: the cause, “changeover in State personnel.” The Maryland Department of General Services re-applied for the trademark on February 13, 2013. Respondent jumped on the expired domain name immediately upon lapse.

In response to a cease and desist letter from the Department dated October 17, 2012, Respondent took a position that failure to renew a domain name was fatal: “all ownership rights [said the Respondent] are thereby relinquished and the name is placed back into the public pool of names – which are then available for purchase by anyone choosing to pay for such ownership and all the rights which accompany same.” As the Panel rightly pointed out acquiring domain names following their non renewal is not unusual, but

a party in the position of Complainant, or indeed any other party that believes it has a right to the domain name [as a trademark owner] is still able to file a Complaint under the UDRP and such a claim is then judged on its merits. That is the process that is presently under way.

A second prong of Respondent’s argument that Complainant has no trademark because it was cancelled is equally meritless. Cancelled trademark registrations do not cancel established trademark rights, even though it may make a party vulnerable.  This is so for the reason stated by the Panel:

[I]t is now well established that under the UDRP a party can make out a claim for a common law or unregistered trademark and that is what has happened in the present case. It is not always easy to see if a common law or unregistered trademark has been made out, but in the present case the Panel has concluded that a case can be made out, mainly because the registered service marks, while they were registered, were widely used and over a considerable period of time and must have become known in the commercial community as they means by which the State of Maryland provided one of its important services, namely procurement. Moreover, it should be noted that EMARYLAND MARKETPLACE has been legislated for by name and the Panel should not lightly disregard that fact.

The third prong of Respondent’s argument addresses concern of the State of Maryland that use of the disputed domain name may “be misleading to consumers, be in violation of federal cyberpiracy law, or an infringement of the trademark held by the State of Maryland”:

Respondent in that regard argues that it intends to use the domain name for other purposes, that it is not misleading internet users, email traffic is redirected to a new State of Maryland website and that it has put a disclaimer on its website.

The Panel’s response is that while

[e]ach of these steps has its own value … the difficulty with all of them is that they do not rebut the concern, which is really that Respondent is holding a domain name that would be understood by many people to be a State instrumentality providing State services, whereas at the present it appears to be a private service offering clearly commercial services and services that the State is not permitted to offer. It should be added that the disclaimer is not of much effect because of its position on the website.

It may be true that under certain circumstances a purchaser of an expired registration is given the benefit of the doubt particularly where the parties are distant from each other and the trademark is descriptive of generic products or services. There are many examples of this in the UDRP database, but not where the evidence establishes that the trademark is anchored to services in a particular geographic location in which both parties reside. To intend to develop around an acquired domain name a “‘stealth’ start up company” directed to the same community of businesses who formerly used it immediately falls foul of paragraph 4(b)(iv) because any use “creat[es] a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” of respondent’s product or service. “Intentionality” can be inferred from intended use where the trademark is well-known at the time complainant’s registration inadvertently lapsed.

Gmlevine

Just as complainants cannot prevail on the strength of their trademarks which only proves the first requirement that it has standing to maintain the proceedings, so respondents do not forfeit their domain names on default of responding to the complaint. This message continues to be lost even to the most prestigious law firms and the wisest counselors. If nothing but suppositional allegations are offered as proof for paragraphs 4(a)(ii) or 4(a)(iii) relief will be denied. Should that verdict be applied to iconic trademarks such as AOL, as it was in AOL, Inc. v. ChengshuangLi, FA1302001483339 (Nat. Arb. Forum March 26, 2013)? The Panel made the following pronouncement: the “Complainant’s entire argument” on the issue of rights or legitimate interests is that

Respondent has no rights or legitimate interests in the infringing domain name. Respondent is not named or commonly known as AOL, nor is he licensed or authorized to use the AOL mark in this manner.

Unlucky to have had this particular panelist assigned to the case who demands support for conclusory assertions? Or, a warning by an experienced arbitrator that sufficiency requires offering evidence of factual circumstances, even where the respondent (Chinese in the AOL case) fails to appear? The onus is on the complainant to prove each requirement separately. As complainant ascends the procedural scale of requirements the evidentiary demands increase. The proof for prevailing on the second requirement is greater than the first, but easier than the third. AOL lost (a questionable call I think) because it apparently failed to offer persuasive evidence to prove its prima facie case; either that or its suppositions were unsupported with documentary evidence even though Respondent’s rights or legitimate interests were transparently thin.

Proof of a prima facie case can be reduced to a check list which takes the paragraph 4 (c) defenses and turns them around: contention 1 (not authorized) and evidence of it (which could be a declaration from a person with knowledge); contention 2 (not commonly known by) and evidence of it (which could be a copy of the Whois directory); and contention 3 (the manner in which the domain name is being used) and evidence of it (which could be a snapshot of a page). It is important to note whether the domain name is being used at all, or passively held. To allege that a respondent has no rights or legitimate interests in a domain name is conclusory, and conclusory alone is insufficient to satisfy the requirement. The Panel cites to an earlier, more successful case initiated by the same Complainant: AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006). The rule is that a

Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

Insufficiency of evidence can be thought of as a kind of silence. A record is a combination of statements and silences. There are different kinds of silence. Default is a silence; suppositional allegations are a silence. What a party omits in its submission can be equally as important as that which it includes. Omission where evidence is expected is a form of silence. Holding back facts, for example, supports an adverse inference as does any manipulation of evidence. While default is not an admission of liability and suppositional allegations are not conclusive, these strategies have consequences. Omitting what can easily be confirmed strikes at a party’s credibility. I am speaking generally now and not about the AOL case.

The fact that a complainant is well-known, famous even and iconic does not excuse insufficiency of evidence. The evidence in the latest AOL dispute is obviously available and could easily have been marshaled, but (it appears) the representative wrongly believed that he could prevail by alleging suppositions rather than demonstrable facts. This may be a harsh result but Panels will not make the complainants’ cases for them even where it is otherwise clear about respondent’s intention in registering the domain name as is the case with <webmail-aol.us>.

Gmlevine

ICANN has recently approved several rights protection mechanisms to counter cybersquatting for new gTLDs, including the Trademark Clearing House program (TMCH) which allows brand owners to submit their trademark details for entry into a centralized database and enable the rights holder, after verification, to participate in the sunrise program and Trademark Claims service across all eligible new gTLDs. The TMCH is described in a circular dated January 11, 2012. Sunrise rights refer to a stipulated period during which an owner of a registered trademark may register domain names in new generic Top Level Domains (gTLDs) prior to the registrar accepting registrations from the general public. Not all owners or trademark counsel are acquainted with the procedure to protect the corresponding domain name for new gTLDs.

The pressure to understand the procedures will become more pressing starting in the fourth quarter of 2013 when ICANN expands the familiar gTLDs to include a variety of new extensions such as .book, .traffic, .car, .bank, etc. (categories of goods and services). The expansion opens up a Pandora’s Box for established brands. Heretofore, registration agreements for new gTLDS provided a mechanism for trademark owners to challenge registrations during the sunrise period, and there is no reason to expect this to change, but waiting in ignorance of the procedures will create later uncertainty.

The TMCH will accept

3.2 The standards for inclusion in the Clearinghouse are:

3.2.1 Nationally or regionally registered word marks from all jurisdictions.
3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.
3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.
3.2.4 Other marks that constitute intellectual property.

As with the UDRP, “Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.”  Corresponding domain names refers to the Second Level Domain. Registration extends only to claimants who as complainants would have standing in maintain a proceeding.

The question is, If the trademark owner fails to challenge a registration during the sunrise period does it lose the right to have the disputed domain name cancelled or transferred after the window has closed? The emerging consensus is that it does not. The issue has been squarely raised in a number of .mobi [C. Bechstein Pianofortefabrik AG v. Melvin Besbrode, Besbrode Pianos Leeds, D2008-1528 (WIPO December 4, 2008); Adidas AG v. Zhifang Wu, D2007-0032 (WIPO March 21, 2007); and Mansueto Ventures, LLC v. Jonathan Witte, D2006-1479 (WIPO January 19, 2007).] and .xxx TLD decisions [Richard Branson v. Sean Truman, FA1201001423689 (Nat. Arb. Forum February 14, 2012); HEB Grocery Company, L.P. v. Eric Gonzales, FA111200 1421851 (Nat. Arb. Forum February 7, 2012)] and in court actions, although I am not aware of any in the United States [Coca-Cola failed to register its mark within the sunrise period in Albania and commenced an action in the Tirana District Court which rejected Coca-Cola's claim. On appeal to the Tirana Court of Appeal, judgment reversed and ordered cancellation of (November 2011). The Court held that a trademark owner does not lose its right to a corresponding domain name for failing to register the domain name within the Sunrise period. As reported by Gjergji Gjika, Drakopoulos Law Firm an appeal to the Supreme Court of Albania is pending].

Gmlevine

Registrars have a contractual duty arising out of the Registrar Accreditation Agreement (RAA) to alert domain name holders that their registrations are nearing expiration. Not surprisingly some domain name holders miss the notices. The pertinent provisions of the RAA read as follows:

3.7.5 At the conclusion of the registration period, failure by or on behalf of the Registered Name Holder to consent that the registration be renewed within the time specified in a second notice or reminder shall, in the absence of extenuating circumstances, result in cancellation of the registration by the end of the auto-renew grace period (although Registrar may choose to cancel the name earlier).
***
3.7.5.4 Registrar shall provide notice to each new registrant describing the details of their deletion and auto-renewal policy including the expected time at which a non-renewed domain name would be deleted relative to the domain’s expiration date, or a date range not to exceed ten (10) days in length.

I have previously written about inadvertent failure to renew registration. Consequences of domain name cancellation can be severe and reclaiming uncertain. It depends on a number of factors, including the relative strength of the trademark, proximity of goods/services and geographic location of the parties and website content of the new domain name registrant. While registered and common law rights are equally protected against cybersquatting there naturally arises a question whether a party whose right is based on common law can satisfy all of the Policy requirements to prove abusive registration.

In Capital Matrix, Inc. v. G Repetto, D2012-2534 (WIPO March 1, 2013) the Panel held that Complainant satisfied the standing requirement, giving it (I think) the benefit of the doubt because there appeared to be no solid evidence of distinctiveness for “Capital Matrix,” but ultimately denying the complaint for lack of evidence of bad faith. Complainant is located in the United States; Respondent in Brazil. Respondent stated that in looking into the domain name she learned that it was not available for registration, but “ascertained that it was listed on the SnapNames website as ‘available soon’, i.e. it would become available within a short period of time if the owner did not renew it.” In fact,

a few days later, the disputed domain name was made available by SnapNames, but registration was not granted immediately as other users had made the same reservation. The procedure in these cases is to submit the domain name to auction. The Respondent concluded the purchase of the domain name on December 7, 2012 for the final amount of USD 925, which is a sum that is perfectly within the price range used on domain name auction websites.

For a complainant to succeed whose right is based on a generic phrase the demand for proof that respondent acquired the domain name with knowledge of its previous holder and for the purpose of taking advantage of the complainant’s good will in the marketplace is great indeed. In Capital Matrix, the Panel found the geographic factor significant:

Although the Complainant has provided some evidence of the repute of its CAPITAL MATRIX mark, the Panel notes that the evidence suggests that such repute is limited to a small part of the North American territory.

Complainant also offered proof that Respondent attempted to sell the domain name to it, but the Panel gave little weight to it because there was no evidence that Respondent acquired the non-renewed domain name for “primary purpose” of selling it to Complainant or a competitor for valuable consideration. “In light of this … the Panel is unable to find that Respondent was more likely than not aware, or had knowledge, of the Complainant at the time of registering the disputed domain name.”

Gmlevine

Respondents default in responding to complaints approximately 85% of the time so that if there are materially false allegations in the complaint and there is no response the untruths will likely not be picked up. When a respondent appears and challenges the truth of material allegations Complainant (and no less the attorney if complaint bears his certification) has an ethics problem. As the Panel states in The Procter & Gamble Company v. Marchex Sales, Inc., D2012-2179 (WIPO February 22, 2013) () in considering Respondent’s request for a finding of reverse domain name hijacking:

Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International [trademark] registration [which Complainant acquired by assignment in 2008] and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant.

I’ll return to the RDNH in a moment, because there is another lesson to take away from the decision, namely that the manner in which complainant acquires the trademark right is a critical factor. In Procter & Gamble, Complainant acquired the trademark through assignment from a company with whom it had no prior ownership interest:

The Complainant acquired the 1993 Madrid System WIPO trademark registration for SWASH from a third-party, Henkel AG & Co. (“Henkel”), in September 2008. There has never been any ownership connection between the Complainant and Henkel.

While Respondent acquired the domain name in 2004 Complainant “furnishes no evidence that it sold products under its SWASH trademark prior to 2009.” Although the trademark was in existence in 2004 and hypothetically Henkel (the assignor) may (then) have had an actionable claim against Respondent, Complainant (assignee) in 2008 does not. There is a parallel here: a complainant can no more rely for priority on its assignor’s date of ownership than can a respondent rely on the good faith acquisition and holding of a domain name by a prior domain name holder. The bad faith complainant must prove is bad faith to it, not to the prior trademark owner. Ironically, as the Panel pointed out Proctor & Gamble was itself “engaged in cybersquatting because it claims to have registered its domain name in 2007 before it had obtained the 1993 WIPO trademark registration from Henkel, a non-affiliated party, in 2008.”

Timing of respective acquisitions of domain name and trademark are critical, but not always dispositive of RDNH. Panels do not “usually issue such a finding in a case where a complainant has prevailed with respect to two … of the three elements required under the Policy.” But, this is not the usual case because of the disconnect between what Complainant is alleging and the true facts:

It is impossible to believe that the Complainant, who employs ultra-sophisticated marketing methods, was not aware that the disputed domain name, <swash.com>, had been registered and used by other entities for some years when the Complainant introduced its SWASH product line in 2009.

And, then there is the issue with counsel. “To have filed the Complaint at this relatively late date – more than eleven years after the registration of the disputed domain name and several years after its acquisition by the Respondent –seems a grotesquely unfair attempt to wrest ownership of the disputed domain name from the owner.” It is not as though “Complainant and its legal counsel [were] strangers to the UDRP process.” The grotesqueness is multiplied by the untrue allegations of income:

The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000.

Such misrepresentation is not simply a credibility problem. False certification corrupts and abuses the process separate and apart from (and in addition to) its act against respondent in attempting to wrest away the domain name:

In all of the circumstances present here, the Panel finds that the Complainant has abused the process in an attempt at reverse domain name hijacking in contravention of the UDRP Rules at paragraph 15(e). The Panel majority also finds the Complainant has attempted reverse domain name hijacking because it must have known that the Respondent did not know of (nor had any reason to be aware of) any relevant trade mark rights in the SWASH name when the Respondent registered the disputed domain name in 2004.

The Panel’s final observation is that “[t]his Complaint fell very far short of what the Panel was entitled to expect from a Complainant [and counsel] of this stature.” If this matter had been removed to federal court the ethics issues would have played a role in the award of damages for reverse domain name hijacking.

Gmlevine

Both the Anticybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Resolution Policy, paragraph 4(c)(i-iii) (UDRP) prescribe safe harbor defenses, but the ACPA provides a defense not expressly found in the UDRP: bad faith “shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.”15 U.S.C. §1125(d)(1)(B)(ii). The question is, How is the statute to be construed, narrowly or forgivingly? A good review of the answer, narrowly, can be found in Web-Adviso v. Trump, 11-cv-1413 (EDNY, February 28, 2013).

The ACPA imposes civil liability on a person who, “without regard to the goods or services” on a person

The burden of proving fair use and legality is measured against the bad faith factors set forth in §1125(d)(1)(A)(i). Domain name holder cannot satisfy the burden by simply alleging its belief. The test is an objective one. Statutory factors five through nine focus on the circumstances for assessing bad faith. The court found that the uncontested proof under Factors V and VIII were conclusive on the issue of bad faith.

Implicit in Factor VIII is registration of a generic or descriptive term without knowledge of third-party rights. One of domain name holder’s defenses in Web-Adviso is that “trump” is a dictionary word, which if used semantically could support its claim, but not otherwise. In holding that the domain name holder’s “argument is meritless” the court points out that real estate developer and operator Trump is using the word in a trademark sense and Web-Adviso is not.  In any event, the trademark is “distinctive … within the meaning of” the Lanham Act:

The TRUMP mark is arbitrary in [the context in which it is used] because it is derived from Defendant’s last name, not from any colloquial use relating to card games or getting the better of somebody…. Thus, its generic meaning in unrelated settings does not undermine its strength or validity here.

The disputed domain names include “trump” plus a geographical designation: “abudhabi”, “beijing,” “india,” and “mumbai.” Trump holds various domain names that he uses to promote his “brand.” His “main website” for The Trump Organization is located at trump.com, but he also holds domain names with the word “trump” followed by a geographic location, which promote “TRUMP-branded” real estate projects in the location indicated by the domain name. The “only

reason that can be gleaned from the record why the Domain Names have any value is because they use the TRUMP mark and easily could be confused with Defendant’s legitimate websites.”

Although the Second Circuit has not construed the limits of the “reasonable belief” defense other circuits have. The Ninth Circuit cautioned that “courts should ‘make use of this “reasonable belief” defense very sparingly and only in the most unusual cases’.” Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1203 (9^th Cir. 2009) quoting Audi AG v. D’Amato, 469 F.3d 534, 549 (6th Cir. 2006)). To allow the defense on any but the most rigorous proof “would ‘undermine the rest of the statute’ because ‘[a]ll but the most blatant cybersquatters will be able to put forth at least some lawful motives for their behavior’.” Id. (quoting Virtual Works, Inc. v. Volkswagen of Am., Inc., (4th Cir. 2001) (alterations in original)).

There is no logical equation between thinking a belief is reasonable and it being reasonable to believe that the use of the domain name is fair and legal.

Gmlevine

The 3-member Panel in Cheezburger, Inc. v. WeKnowMemes LLC (c/o Dynadot Privacy), D2012-2452 (WIPO February 19, 2013) considered confusing similarity between KNOW YOUR MEME and <weknowthemes.com> “a close question … [b]ut the overall impression is sufficiently similar, especially for the Domain Name used for a competing website, that the Panel concludes the first Policy element has been satisfied.” While this met the test for standing, it was insufficient in light of Respondent’s rebuttal evidence that before notice it had established a web based service. It is a complainant’s burden to demonstrate that respondent chose the domain name with the intention of taking advantage of the trademark.

Where a domain name is a phrase composed of dictionary words that is “not identical or overwhelmingly similar” to the trademark, only “sufficiently similar” to pass the standing test “it is [not] inconceivable that the Respondent chose the Domain Name for its generic or descriptive value.” In the Panel’s words:

a website with content relevant to its generic or descriptive sense can represent a legitimate interest, so long as there is no persuasive evidence that the Domain Name was actually selected for its trademark rather than generic or descriptive value.

The competition described in Cheezberger is for traffic to the websites which offer selections of memes. The parties are not competitors in the sense ordinarily understood of offering services to clients. Nothing is being sold; content is simply an excuse for attracting traffic. The websites are a form of static entertainment. There can be no monopoly on loading a website with a certain category of content. Indeed, given the nature of the content the competition is no different from expected between competing dictionary publishers. Each party presents its own material, and some of it perchance is similar. The Panel notes that

The Complainant relies heavily on alleged copyright violations to demonstrate that the Respondent sought to exploit the Complainant’s efforts and reputation. A handful of copied images or videos, with accompanying text, among hundreds or thousands that appeared on the Respondent’s website, is not persuasive evidence of an intent to disrupt the Complainant’s business or target the Complainant’s mark, especially given the nature of both the Respondent’s and the Complainant’s “meme” websites.

Whether Complainant’s allegation of bad faith can be persuasive depends on the evidence it marshals to demonstrate its plausibility. In Cheezburger, Respondent submitted a declaration in which he admitted awareness of the Complainant’s website, “but he plausibly claims that he chose the Domain Name for its undeniable generic or descriptive value, and he made relevant use of it from the outset.” It is not enough simply to identify within the content category generic similarities. Although it is

conceivable that such a step [registering an LLC] might have been taken in bad faith, in anticipation of a trademark or domain name dispute, but the Panel is not persuaded that this was the Respondent’s motivation.

Judgment for the Respondent in Cheezberger ultimately rests on paragraph 4(c)(i) of the Policy. There was “evidence in the record of ‘demonstrable preparations’ to establish a company by the same name before notice of the dispute.” Moreover, “before notice” the Respondent“had been operating a successful website under the name it sought for the company for nearly half a year by that time, and the name is relevant for the company’s online activities.”

Gmlevine

For a complainant to succeed in recapturing a lapsed domain name it must both anticipate and overcome respondent’s rebuttal that it has rights or legitimate interests in the domain name. To fail on the prima facie case is to fail utterly because failure ends the case. Geographic proximity may make a difference in the assessment as does the relative strength or weakness of the trademark, but these factors are not alone sufficient against a respondent’s persuasive explanation for choosing the lapsed domain name. This is true even where parties presently compete if there are intervening circumstances favoring respondent. An example of complainant’s challenge, how difficult it can be, is illustrated in PFIP, LLC v. Blast Fitness Group, LLC / Thomas Moran, FA1204001440897 (Nat. Arb. Forum June 3, 2012) (<blastfitness.com>). Not only had Complainant or its predecessor allowed the domain name to lapse, but it had also failed to renew its trademark registration for BLAST FITNESS. A double abandonment. The record shows that

Complainant’s predecessor operated fitness centers under … BLAST FITNESS and held a trademark registration for the mark. It transferred its interest to Complainant. Complainant ceased to operate as BLAST FITNESS and began operating as Planet Fitness. The trademark was cancelled. A third party registered the disputed domain name. Respondent purchased the domain name and began operating as BLAST FITNESS. After Respondent purchased the domain name and began use, Complainant’s predecessor transferred its interests in BLAST FITNESS to Complainant. Complainant then registered BLAST FITNESS with the USPTO.

To overcome proof of abandonment there must be some proof that it was not intentional. Letting a trademark lapse is correctable, but a double abandonment of trademark and business name is only correctable in part. “Although complainant had previously registered the Domain Name … <midlandheart.co.uk>, it had allowed these registrations to lapse, and there is no evidence that respondent knew that complainant intended to re-register them.” Midland Heart Limited v. Uton Black, D2009-0076 (WIPO March 30, 2009). Respondent in PFIP had no reason to believe that Complainant would reassert its former business name.

Where a respondent registers a domain name and establishes a business competitive with complainant’s on proof that the complainant both abandoned the trademark and changed its business name it successfully establishes a right and legitimate interest under paragraph 4(c)(i) of the Policy. In such a case complainant is in a position no different from a party who acquires a trademark subsequent to the registration of the same term as a domain name. Reestablishment of an abandoned trademark gives a trademark owner no right of primacy to the corresponding domain name.

It is useful to compare the PFIP facts with the record in another case that held for complainant. In AgreeYa Solutions, Inc. v. Domain Privacy Group, FA1301001479037 (Nat. Arb. Forum February 18, 2013) Respondent registered <agreeya.com> within days of its lapse. There was no abandonment of the trademark, and AGREEYA is relatively strong. Complainant’s proof that Respondent lacked rights or legitimate interests was of two kinds. First, Respondents began offering hyperlinks to other businesses’ websites and advertising services similar to or in competition with Complainant’s offered services of staffing solutions and software solutions. Second,

Complainant also asserts that its prior ownership of the disputed domain name evidences Respondent’s lack of rights and legitimate interests. Prior panels have held that a respondent’s registration of a domain name previously held by a complainant indicates a lack of rights and legitimate interests. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name.”). Based on the similar timing of Respondent’s registration of the disputed domain name shortly after the lapse of Complainant’s prior registration, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

In contrast to PFIP Respondent’s legitimacy in AgreeYa was mortally undercut by its conduct: “Within several days after Respondent’s purchase, Respondent entered into negotiations with Complainant for the sale of the domain name, for an amount between $300,000 and $500,000.” The offer violated paragraph 4(b)(i) of the Policy and is conclusive of abusive registration of the domain name.

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