A respondent acquires no right or legitimate interest in a domain name that incorporates a trademark by registering or renewing it. Nokia Corporation v. Nokia Ringtones & Logos Hotline, D2001-1101 (WIPO October 18, 2001) (, “[Respondents] only have a right to the domain name … if Complainant had specifically granted that right.” Respondents succeed, however, where the trademark compositions they use – in noun (, ) or adjectival phrases () – truthfully convey what the names promise. A respondent’s choice of a domain name incorporating a trademark for the purpose of identifying its business rather than competing with the owner does not require the owner’s authorization. Adaptive Molecular Technologies, Inc. v. Woodward, D2000-0006 (February 28, 2000); Giddings & Lewis LLC v. McKean, D2000-1150 (WIPO March 14, 2001); Nicholas v. Magidson Fine Art, Inc., D2000-0673 (WIPO September 27, 2000) (U.S. parties).

The sale of the goods or services that are properly identified by the incorporated trademark do not as a general rule constitute bad faith under the Policy despite owner’s objection. The right or legitimate interest may arise either by contract or (in the absence of one) acquiescence. Red Bull GmbH v. Roy Kenneth Nabben, D2010-1358 (WIPO September 30, 2010); A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., D2010-0800 (WIPO August 31, 2010) () (A company “can readily protect itself by securing a clear written agreement.”). If it fails to protect itself and the respondent continues to use the disputed domain name the complainant’s recourse is to a court of law. The same Panel noted that such a “situation is a long way from the mischief which the UDRP was devised and adopted to address.”

Silence with knowledge of respondent’s registration and use of a domain name incorporating the complainant’s trademark – the more typical defense under paragraph 4(c)(i) of the Policy – is filially related to acquiescence, but acquiescence has the added factor of there being a prior commercial relationship between the parties. Longevity of use with knowledge is a good defense. The majority of the Panel notes in A. Nattermann that the registration of the Domain Name was consistent with the agreements between the parties.

Unauthorized but permissive use formulated under U.S. trademark law known as “nominative fair use” has been incorporated into UDRP jurisprudence. The theory traces its route to Oki Data Americas, Inc. v. ASD, Inc, D2001-0903 (WIPO November 6, 2001) (). Its application is discussed in General Motors LLC v. Flashcraft, Inc DBA Cad Company, D2011-2117 (WIPO January 30, 2012) (). In General Motors, the Respondent’s principal alleged that he “has been a racing car driver and active provider of parts, services, and support to those running Cadillac cars as daily drivers, competition vehicles, and show vehicles around the world.” Complainant questions the incorporation of its trademark, not the legitimacy of Respondent’s business. Note, however, that the trademark is used adjectivally. In common parlance “Cadillac” signifies value. In most nominative fair use cases the trademark is incorporated into a noun phrase as in “okidataparts.”

A defense of “nominative fair use” is available under paragraph 4(c)(iii), not 4(c)(i). Paragraph 4(c)(iii) is expressed as either/or: either “noncommercial” or “fair use.” The full provision reads:

you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The defense trumps paragraph 4(b)(iv) which reads:

by 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.

Initially, the Oki Data test applied to unauthorized resellers, but quickly expanded to other unauthorized uses such as consulting services and packaged tours. There is presently a significant body of UDRP cases approving noun and adjectival trademark phrases for used products and after market replacement parts. Although initially hesitant, the Panel in General Motors noted that in the circumstances “of this case … the Oki Data principles should be used to consider whether the Respondent has a right or legitimate interest, for two reasons”:

First, as the Respondent notes (and as any United States car owner well knows), parts and service on any brand of automobile are readily available from third parties that have and claim no affiliation with the applicable automobile maker. This is generally seen as precompetitive and an accepted practice, which lends some force to the Respondent’s contention that Internet users do not automatically associate a brand name with the automobile manufacturer.

Second, and more importantly, UDRP panels have consistently followed the Oki Data approach when dealing with unauthorized resellers in the automotive field.

The Panel in General Motors also points out in footnote 1 that there are limits to applying the Oki Data principles. “A different result might obtain … in case[s] involving an industry that is heavily regulated, such as pharmaceutical products, or one involving a distributor whose contract has been terminated by its manufacturer prior to registration of the disputed domain name.” There are free speech examples for pharmaceutical products — websites concerned with side effects qualify — but examples of domain names succeeding for nominal fair use for those goods are rare.

Gmlevine

Assigning burdens in a UDRP proceeding is well established. For all paragraph 4(c) defenses respondent’s proof must establish “past” and “present” as opposed to “future” use of the disputed domain name. Thus, for paragraph 4(c)(i) respondent must demonstrate its “[present and past] use of” or “demonstrable [present] preparations to use” the domain name constitutes a right or legitimate interest; for paragraph 4(c)(ii) the respondent must demonstrate that it is “commonly known” by the domain name from a point in time that precedes its registration; and in paragraph 4(c)(iii) the proof is the manner in which the domain name is being used “now.” Intended future use unaccompanied by evidence of present use is not a good defense under either 4(c)(i) or 4(c)(ii) of the Policy.

For the second element complainant has an initial burden to establish a prima facie case that respondent lacks any right or legitimate interest in the disputed name and (if successful) the burden shifts to respondent that it does. A shifting of burden is a recognized procedure in the prosecution and defense of civil actions. The Respondent in Tommy Bahama Group, Inc. v. Domains by Proxy, Inc. / Aware Marketing, D2011-2127 (WIPO January 31, 2012) (represented by counsel incidentally) “aggressively denies it has the burden to prove it has established rights or legitimate interests in the domain name.” Such argument has no merit. The rule is that respondent satisfies its “going forward” burden (if at all) by establishing one of the affirmative defenses set forth in paragraph 4(c) (i-iii) of the Policy.

Where the defense is noncommercial or fair use of the disputed domain name, 4(c)(iii) (as alleged in Tommy Bahama) the respondent must demonstrate present not future use of the domain name. The Panel in Tommy Bahama notes differences in approach for criticism websites. “It is clear” (he explains) “that choosing to decide this case in accordance with principles of the United States law will tend to favor Respondent, assuming Respondent is making a legitimate noncommercial or fair use of the domain name. On this point, and because both the Complainant and the Respondent appear to reside in the United States, the Panel decides to indeed decide this case using United States trademark law.”

Commercial criticism as a general category of free speech rests on the proposition that speaking in opposition to a trademark owner is a right worthy of protection. It may be parochial to believe that other countries are less protective, but to get a bearing on this is an issue for a later note. In principle, use of a domain name “to criticize a company is prima facie fair use.” Shell International Petroleum Company Limited v. Alfred Donovan, D2005-0538 (WIPO August 8, 2005) (. U.K Complainant; U.S. Respondent). If the content qualifies, the right follows. Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) () and Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001) () are examples.

The Tommy Bahama Respondent, however, asserted legitimacy without demonstrating which is fatal to proving an interest or legitimate interest and supports bad faith. The going forward burden is not satisfied by the mere addition of “sucks.” “While the attorney for Respondent does allege that Respondent has plans to create a criticism site at “www.tommybahamasucks.com” this assertion is not evidence because attorney argument is not evidence.” If a party has a legitimate intent to create a criticism site, “then the Panel believes Respondent most likely had documentary evidence detailing the preparation of the site and could have submitted these documents as evidence in support of its allegation.” The failure to come forward with evidence “on this point tends to undermine Respondent’s assertion.” Interesting to note here that this analysis parallels the requirement under paragraph 4(c)(i) of the Policy, namely that if the website is not presently active, but contemplated use must be demonstrated.

Gmlevine

There have been a number of recent UDRP cases in which complainants’ trademarks are composed of letters or words that have currency for other users in the marketplace. Two, three and four letter strings, for example, are valuable names that could also be acronyms. Examples: <rmhp.com> and <tds.com>. The Panel in Rocky Mountain Health Maintenance Organization, Incorporated v. Domain Administrator / PortMedia, FA1112001418881 (Nat. Arb. Forum January 27, 2012) noted that the domain name was not exactly an acronym. The Respondent in Telephone and Data Systems, Inc. v. Protected Domain Services – Customer ID: NCR-813584 / Daniel Wang, D2011-0435 (WIPO May 10, 2011) pointed out that there are “numerous other United States trademark registrations for TDS for a wide variety of goods and services.” A review of the PTO database for “TDS” indicates that a more accurate description would have be a “handful” rather than “numerous” but the point is that either as a string of letters or a true acronym the Complainant cannot claim a monopoly on “tds”. A plausible explanation for holding the domain name is sufficient to rebut the Complainant’s prima facie case that he lacks rights or legitimate interests in it.

In Ansell Limited v. – / Kevin Kovar, FA1112001421538 (Nat. Arb. Forum February 1, 2012) Complainant contested the Respondent registration of “skyn” which is not an English word but sounds like one. Complainant represented in its trademark application that “skyn” was a foreign words that translates in English to “sense.” There are other “skyn” trademarks. Complainant markets condoms. Respondent purchased <skyn.com> for a prospective Internet clothing business and offered sufficient evidence of demonstrable preparations to succeed in its 4(c)(i) defense.

Complainants in Telephone and Data Systems and Ansell have registered trademarks. It puts them on a more secure level of protection than unregistered marks, but their burden of proving Respondents’ intentions to take advantage of Complainants’ trademarks is notched higher on rebuttal proof of multiple users in the marketplace. A third example is an alleged violation of an unregistered trademark, NSENSE. Complainant challenged the registration of <nsense.com>. The Respondent in Nsense Group v. noorinet, D2011-1888 (WIPO January 25, 2012) offered evidence that it was commonly known by the domain name:

The trademark application for a design mark N-SENSE with Korean characters filed by the Respondent’s business partner was published on March 2, 2001 in Korea, and thus the name “Nsense” has not been used solely by the Complainant. A third party, the Respondent’s business partner has run a shopping mall using the domain name <nsense.co.kr> since 2004. The Google search result hits for each of the disputed domain name and the third party’s domain name <nsense.co.kr> are much more than those of the Complainant’s relevant domain names <nsense.dk> and <nsense.net>.

A search of the Internet brings up “numerous” users of “nsense.” Even if the Complainant were able to prove its unregistered mark it would have a hard case. As it happens, it offered no substantive evidence of its historical use of the term. The Panel noted (and properly so) that “a conclusory allegation of common law or unregistered rights (even if undisputed) does not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate is required.”

Where the letters or word strings spell a well-known trademark and the domain name either does not resolve to an active website (in which case the passive holding principle applies, Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), or the website has content competitive with the complainant an inference is likely to be drawn of abusive registration. Where respondent alleges that the domain name is generic or used by many others in the marketplace but content belies good faith registration, the letters or word strings take on an identity specific to the complainant.

This is illustrated, for example, in Smith Travel Research, Inc. v. Victor An, FA0904001259999 (Nat. Arb. Forum June 15, 2009). In fact, the USPTO database lists 95 alive and dead registrations that include “str” and although there was proof that the acronym was “a very popular abbreviation and has been used by many businesses,” targeting was proved through the website content. The Panel held that “[d]espite Respondent’s protestations to the contrary … the Complainant and the Respondent both compete in the travel business.” This leads to the ineluctable conclusion that the “Respondent was clearly trying to associate its offerings with the goodwill of Complainant’s well-known mark.”

Gmlevine

The complainant certifies in commencing the UDRP proceeding,“that the information contained in th[e] Complaint is to the best of [its] knowledge complete and accurate [and] that th[e] Complaint is not being presented for any improper purpose, such as to harass [the respondent].” Paragraph 3(b)(xiv) of the Rules of the Policy. Respondent has the burden of proving that the “Complaint is … being presented for any improper purpose.” It has to establish the improper purpose affirmatively rather than negatively, that is it requires proof of an intentional act or conduct so lacking in circumspection and discretion that no other inference can be drawn except that complainant intended “to deprive a registered domain-name holder of a domain name.” However, “mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking.” WIPO Overview paragraph 4.17. The bar is high.

Some panelists demand from the respondent a greater certitude of complainant’s intention: it should be “malice aforethought.” Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000). Less demanding is “reckless disregard.” Where the “Complainant must have known it could not demonstrate bad faith registration and use” its commencement of the administrative proceedings was abusive. Mess Enterprises v. Scott Enterprises, Ltd., D2004-0964 (WIPO January 25, 2005) If, on its face a “complaint includes facts that demonstrate no likelihood of success, the respondent is entitled to a finding of Reverse Domain Name Hijacking.” Urban Logic, citing 1 Model Management, LLC. v. L.A.S. Inc., Latifa Aadess, 1 Models LLC, D2008-1173 (WIPO October 24, 2008).

In either case, the evidence should be “utterly clear,” Great American Insurance Company v. Ron Hamilton, FA109753 (Nat. Arb. Forum October 14, 2002)], but the standard is slippery. Expressed in another way: “One is reluctant to make a finding of Reverse Domain Name Hijacking except in the clearest of cases.” Libertad Servicios Financieros, S.A. de C.V. S.F.P. v. Telepathy, Inc., D2011-1635 (WIPO January10, 2012) (Concurring Panel with different view in assessing RDNH). In the not so clear cases the complainant is given the benefit of the doubt. This appears to be the view of the Presiding Panel in Libertad:

The Panel does not find that the Complainant’s arguments under a required element of the Policy, namely the Respondent’s lack of rights or legitimate interests under paragraph 4(a)(ii) of the Policy, failed by such an obvious margin such as to indicate that the Complainant must have appreciated this at the time of filing the Complaint.

In Wave59 Technologies Int’l Inc. v. VolumeDomains.com, FA1110001413550 (Nat. Arb. Forum November 30, 2011) the Complainant was undone by its changing offer of proof:

Complainant knew or should have known, based upon the facts known to it when it filed the Complaint in this proceeding, that it could not prove bad faith registration. Upon being called out for the obvious chronological deficiency in its case by the Response, Complainant attempted to change the facts, contradicting the evidence it had previously submitted. The Panel considers these circumstances sufficient to support a finding that the Complaint was brought in bad faith, in an attempt at reverse domain name hijacking.

The “clearest of cases” is a two punch process. The respondent has the burden of proof. Any deficiency is marked in favor of the complainant. But the complainant can undercut its own good faith by contradicting itself as Complainant did in Wave 59. A complainant’s offer of proof in support of transfer (even if it loses) must be credible. The less credible the greater the likelihood that its conduct supports respondent’s demand for RDNH as was the case with Wave59. Where the evidence appears to be equipoise, there is reason to step back from censure.

Stepping back from censure is the point emphasized by the reluctant Panel in Libertad. On the one hand this and on the other hand that: “very concerned by the apparent lack of candour on the part of the Complainant” but recognizes that “Complainant was probably entitled to be concerned at the potential confusion that might be engendered in the minds of Internet users.” So, we get a whimper rather than a bang: “complainants should always carefully weigh these considerations when deciding whether to file a complaint, as the power to make a finding of Reverse Domain Name Hijacking is always available for panels to use in appropriate cases.” This really puts a premium of the evidence offered by the respondent. It is not enough for the respondent to ask for censure, and if that is all there is complainant wins unless it totally undercuts its offer of proof.

Gmlevine

Distance is not only geographical and temporal but also measured by product or service offerings. The principle underlying temporal distance is that the respondent could not have registered the domain name in bad faith if the trademark had not then come into existence. Subsequent bad faith use (except in the view of panelists who argue for “retrospective” bad faith) is not grounds for forfeiture of the domain name under UDRP. The greater the distance of all three combined the less likely that the complainant can prevail on the bad faith element, which is the ultimate test.

Geographical distance by itself does not favor the respondent’s good faith claim, but temporal distance (acquiring the domain name prior to existence of the trademark) does. The numerous proceedings by western complainants against eastern respondents are more likely to be resolved in complainants’ favor because geographical distance is unpersuasive where the domain model is merely farming the domain name for pay per click revenue. But, add product or service distance and the respondent is a clear winner.

The reverse is that the closer in geographical and product/service distance the more persuasive complainant’s allegations that the respondent lacks rights or legitimate interests and has registered and is using the domain name in bad faith. This is illustrated in Hoboken Publications, LLC v. Hoboken411.com, LLC., FA1111001414530 (Nat. Arb. Forum January 13, 2012). The parties in this proceeding “operat[e] in the same limited Hoboken geographical area and in the same general business as Complainant.” The likelihood is greater that the respondent “must have had actual knowledge of Complainant and its HMAG mark relative to print and online services.” The inference is clear that

In seeking to own the disputed domain name, identical to Complainant’s mark, and attaching a website at the name that generates advertising revenue – the same sort of revenue sought by Complainant – Respondent surely intended to divert such revenue from Complainant (i.e., disrupt Complainant’s business) and gain commercially from the likelihood of Internet user confusion with respect to the source, sponsorship, affiliation or endorsement of Respondent’s website.

In many instances close geographical distance make denial of knowledge implausible – Layby Services Australia Pty Ltd. v. Chrisco Hampers Australia Ltd., D2009-1066 (WIPO November 3, 2009) () (Direct competitor who registered the disputed domain name one year after Complainant established its business) – while far distance supports the opposite inference, namely that more likely than not there is neither knowledge nor targeting. EURO DATA GmbH & Co. KG v. Excel Signs, D2009-0465 (WIPO May 5, 2009) (Germany and U.S.A) contesting a nondescript trademark EURO DATA (). As the distance increases actual knowledge is more likely to be found only where the trademark in issue is particularly strong and heavily advertised or promoted.

An interesting footnote on the heavily advertised or promoted is international companies with strong presences in respondents’ markets. Although there is great geographical distance in one respect (corporate headquarters), it is local in another (operating a business). La Quinta Worldwide, L.L.C v. Rudi Seiberlich, D2011-0385 (WIPO April 11, 2011) (Complainant “is the registered proprietor of many trademarks for LA QUINTA and variants of that trademark both within the United States and internationally, including in Italy where the Respondent is domiciled).

The burden of proving a violation of the Policy is lighter for suggestive and arbitrary and heavier for generic and descriptive terms current in commercial activity – HSM Argentina S.A. v. Vertical Axis, Inc, D2007-0017 (WIPO May 1, 2007) in which the Panel pointed out that eEvidence of third party use of terms identical to the trademark “mitigates against a finding that the Respondent knew specifically of the Complainant or its mark when the disputed domain name was registered.” Denying knowledge is unpersuasive where the respondent uses the domain name to advertise the same goods or services as the complainant. A case in point is ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010) (Parties in the United States and Hong Kong). The Respondent denied knowledge, but populated its website with competitive links.

Use speaks for itself. So, the Panel in ChemRite transferred the domain name to Complainant. If no other inference can be drawn except that the respondent is taking advantage of the complainant’s trademark, respondent loses. Hoboken Publications wins for the same reasons.

Gmlevine

The test for establishing confusing similarity is relatively modest. Low though the bar is set, however, it is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts. “The concept of ‘confusingly similar’ lies at the very heart of all trademark conflicts, where the test is whether the names are phonetically, visually or conceptually similar.” Advance Magazine Publishers v. MSA, Inc. & Moniker Privacy Servs., D2007-1743 (WIPO Feb. 28, 2008). In assessing domain names under the first element of the Policy panelists apply rules familiar to trademark infringement. Put another way, Todito.com, S.A. de C.V. v. Affordable Webhosting, Inc., D2004-0688 (Nat. Arb. Forum Oct. 11, 2004):

when determining whether . . . similarity may give rise to situations of confusion or false association, it is necessary to consider not only the degree of similarity of the terms in the strict sense but also the degree of distinctiveness of the mark given that, obviously, the greater the distinctiveness or originality of the registered mark, the greater the risk of confusion.

A good summary of views is set out in salesforce.com, inc. v. Domain Admin / Internet Venture Holdings, Inc. (ivh.com), FA111100 1416951 (Nat. Arb. Forum January 5, 2012). Letters and words added to or subtracted from the trademark are evidence of confusing similarity if the similarity of a part suggests the whole, but not confusingly similar if the whole contains its own meaning and the domain name is used consistently with it. Letters and words added to or subtracted from the trademark are evidence of confusing similarity if the similarity of a part suggests the whole.

Thus, the mere addition of a letter, or the creation of similar word, can create a domain name that is confusingly similar to a mark. Either the variation is phonetically identical to the mark or it renders the domain name indistinguishable from it. To illustrate the first example, substituting a “k” for the letter “c” does not change the pronunciation of the word, as in ECOLAB and . Ecolab USA Inc. v. Tomasz Kluz / Ekolab s.c. Tomasz I Aleksandra Kluz, FA 1386906 (June 3, 2011). The second example is WIRED and <wwwwired.com> where “wired” is the dominant element of the mark. Advance. In Ecrush, Inc. v. Cox, Davis & Simpson, LLC, D2004-0552 (WIPO Sept. 11, 2004) (ESPIN THE BOTTLE and) the Respondent changeda single letter, “i” for “e.” The Panel found that the “one-letter change is not a misspelling of Complainant’s mark that results in an otherwise nonsensical word or phrase; on the contrary, the Disputed Domain Name and Respondent’s other domain names are everyday phrases incorporating the name of the parlor game.”

“These cases” (the Panel in salesforce.com explains)

are in contrast to the present case. First, the word “forces” has an apparent relationship to the military, thus having no evident connection to any business activity of the Complainant. Second, as to SFORCE and FORCE.COM there is no phonetic or visual similarity between the domain name and Complainant’s marks. Although the word “forces” is arguably visually similar to Complainant’s FORCE mark, the lack of distinctiveness to the mark, and the demonstrably different meaning of the words, results in a lack of any confusing similarity between the two.

The dissenter in Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010) – who is the sole panelist in salesforce.com – proposed that the similarity must be confusing to an “objective bystander.” Applying that standard he rejected <opensociety.org> as being confusingly similar to OPEN SOCIETY INSTITUTE). However, the “objective bystander” standard carries a burden of subjectivity. For this reason, Panels generally tend to give complainant the benefit of the doubt on this element. In salesforce.com the objective bystander (as fictively breathed into life by the Panel) is called upon to make an assessment whether is confusingly similar to FORCE. Framed by the Panel in Advance, the question is whether the “alphanumeric string comprising the challenged domain name is identical to Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name is ‘confusingly similar’ to the mark.” The domain name trademark FORCE

Whatever similarity in part between trademark and domain name does not prove confusing similarity to the whole.

Gmlevine

Unless personal names have achieved trademark status they are not protected under the UDRP. Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names In the Internet Domain Name System, dated September 3, 2001 which states: “the application of the UDRP to the protection of personal names [is authorized only] when they constitute trademarks,” Paragraph 179. Excluded are living persons whose reputations are earned out of the spotlight of commerce even though active in the figurative scrum of their businesses or professions. This rule applies however extraordinary the individual’s contribution is to business, science, politics, the professions and the academy. The WIPO Report states that it may result in an “injustice” and is undoubtedly an unhappy limitation: “many sensitivities [will be] offended by the unauthorized registration of personal names as domain names” and the “result is that there are some perceived injustices.” Report paragraph 199.

In contrast, the Lanham Act provides a remedy for cyberpiracy of personal names that do not qualify for trademark protection, formerly codified at 15 U.S.C. 1129, now 15 U.S.C. 8131 (Cyberpiracy protections for individuals). Explaining the necessity for the provision, Senator Hatch, noted

As with trademark cybersquatting, cybersquatting of personal names poses similar threats to consumers and e-commerce in that it causes confusion as to the source or sponsorship of goods or services, including confusion as to the sponsorship or affiliation of websites bearing individuals’ names. In addition, more and more people are being harmed by people who register other people[’]s names and hold them out for sale for huge sums or money or use them for various nefarious purposes.

There has been a couple of reported cases and several unreported. In one of the reported case the court granted an injunction, Schmidheiny v. Weber, 319 F.3d 581, 66 U.S.P.Q.2d 1062 (3d Cir. 2003), and in the other it denied it, Carl v. BernardJCarl.com, 662 F. Supp. 2d 487 (E.D. Va. 2009), aff’d 409 F. App’x 628, 630 (4th Cir. 2010) (per curium) (unpublished). In Schmidheiny, the court based its conclusion on a consideration of factors including the defendants’ past similar behavior, the short time-lapse between registration and offer for sale, and the placement of the domain names “for auction at a price that had no reasonable connection to its value to anyone other than the plaintiff.” 319 F.3d at 628.

In one of the unreported case from the Middle District of Florida, Salle v. Meadows, 6:07-cv-1089-Orl-31 (August 6, 2007) the court granted a preliminary injunction against defendant who admitted purchasing the domain name and attempting to sell it to the plaintiff for $9500. He claimed he was merely attempting to recover money plaintiff owed him. The court rejected this “defense”: “cyber-extortion is not a permissible way of recovering a debt” and ordered the domain name transferred.

The latest of these cases, unreported from New York has just recently been filed, Paul Bogoni v. Vicdania Gomez, 11 Civ. 08093 (S.D.N.Y. December 28, 2011) the court has also granted an injunction. The court found that “defendant purchased [two domain names] – multiple versions of the plaintiff’s real name – for less than twenty dollars in total, and, within several days, posted an offer to sell the Domain Names for $1,000,000 each.” The court concluded that plaintiff stated a claim under § 8131(A) and proceeded to examine whether defendant’s defense under § 8131(B) “remove[d] her from the reach of the ACPA.”

Section 8131(B) requires defendant to prove absence of bad faith. This she was unable to do. The Section reads:

A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially or confusingly similar thereto, shall not be liable under the paragraph if such name is used in, affiliated with, or related to a work of authorship protected under Title 17, including a work made for hire, as defined in section 101 of Title 17, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by contract between the registrant and the named person.

The defendant concocted a set of facts that made it appear as though there was a copyright issue. The court concluded is was a sham, that the registration violated the statute and granted a preliminary injunction enjoining defendant from continuous use of the domain names.

Gmlevine

Complainants of trademarks on the lower end of the classification scale have a greater burden to prove bad faith registration even where respondent is in the domain name business and there is proof of temporary infringing use of the domain name. “The number of other persons or entities holding identical if non-competing marks and the number of other users with rights in [a] name are clear evidence of the limited ownership claims of the Complainant.” Electronic Arts Inc. v. Abstract Holdings International LTD / Sherene Blackett, FA1111001415905 (Nat. Arb. Forum January 4, 2012) disputing over <ssx.com>. The Respondent in this case is a high volume registrant. It acquired the disputed domain name as part of a portfolio of three and four letter generic names from a prior holder.

High volume registrants have an enhanced duty of care, but it does not impose an impossible burden of investigating every domain name for possible infringement of a third party’s trademark rights. Where Panels have rejected respondent’s good faith allegations it generally involves trademarks well-known in the market place. For registrants who regularly engage in the business of registering and reselling domain names, and/or using them to display advertising links they must be able to show that

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

Where there is no evidence of bad faith registration the Policy does not penalize a respondent for changing use of the domain name after notice that it contains infringing content. Inadvertent transgressors typically involving domain names composed of generic or descriptive words and combinations used in their commonplace sense are treated more kindly than respondents advertently taking advantage of the complainant or its trademark. Enhanced investigation of domain names identical or confusingly similar to trademarks can be traced to Mobile Communication Service Inc. v. WebReg, RN., D2005-1304 (WIPO February 24, 2006) contending for. The Panel in that case held that MOBILCOM (an unregistered trademark) was not a dictionary word or a generic or descriptive phrase. He concluded that where

a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.

This is in contrast to high volume registrants such as the respondent in Electronic Arts who is “in the business of buying and selling generic domain names.”SSX is composed of generic letters. “Complainant clearly does not have an exclusive monopoly” on letters that can equally and legitimately be employed by other parties in unrelated fields. Although it is not a defense that respondent’s hosting company was responsible for placing content of a website, nevertheless where hyperlinks are quickly removed it is some evidence of its intentions. “Respondent alleges that the resolving website was only supposed to contain generic hyperlinks and not competing hyperlinks.” The Panel accepted this explanation. “Generic hyperlinks” is the broadest generic meaning that an ordinary dictionary word is capable of carrying. Tomsten Inc. v. Registrant [7281], FA 925448 (Nat. Arb. Forum April 20, 2007). For made up words like “mobilcom” there can be no legitimate use by another party in an unrelated field. For “ssx” the opposite is true.

Dissents in a number of cases have argued for greater diligence. The dissent in BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. Future Media Architects, Inc., D2006-0534 (WIPO July 28, 2006) for example suggested that registrants who use their vast accumulations to exploit a business opportunity have “a greater duty … to verify that the use of a domain name … is legitimate.” In that case the parties were contending for. But, the consensus view is that bulk registrants may legitimately hold generic domain names absent clear and convincing evidence that their use demonstrates knowledge and targeting of the trademark.

Unintentional hyperlinking quickly removed upon receipt of notice reinforces a respondent’s assertion of good faith registration. By “[m]odifying such a website also may attenuate the harm to a complainant whose trademark or commercial interests are allegedly compromised by the website prior to remediation.” American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Nat. Arb. Forum July 27, 2010)(). The Panel’s point is that respondents (in the inadvertent class) should not be discouraged from “this positive behavior…. [T]he fact of a website’s remediation should not create an evidentiary inference adverse to the respondent.”

Gmlevine

Lego is one of those trademarks instantly recognizable in the marketplace. The number of UDRP proceedings against Lego infringers runs into the dozens (I’m probably underestimating). Here is a baker’s dozen decided in December 2011: <legodiscounter.com>, <legoninjagofiretemple.com>, <legoverhuur.com>, <legoland florida.com>, <legolandorlando.com>, <legosoft.com>, <legowatches.org>, <lego-fan.net>, <legomen.com>, <legostarwarsgames.org>, <legoharrypotterquidditch match.net>, <legoarmory.com>, <legocitycorner.com>. How can a respondent escape losing a “lego” domain name? The issue in the first instance is how the domain is being used and the purpose for which it was registered. There has to be a match. Even with famous trademarks, complainant can be defeated if the purpose for the domain name is “legitimate noncommmercial” and its use fair under paragraph 4(c)(iii) of the Policy. Complainant was unsuccessful for <legoworkshop.com> in LEGO Juris A/S v. Domain Administrator, Matthew Griffith, D2011-1263 (WIPO October 1, 2011). Why?

The Panel in Velcro Industries B. V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, D2008-0864 (WIPO July 28, 2008) explained that “it would take an exceptional case to succeed where there was no malicious or exploitative intent directed at the complainant [or its trademark] at time of registration of the domain name.” The Respondent in Velcro was a creative “velcro” artist. In Lego v. Griffith, the Respondent stated that he

registered [the domain name] on behalf of his 15 year old 10th grade son who has been a LEGO enthusiast since he was 3 years old. His intent was to create a website that showed off the creations that he (the son) has built over the years in “both photographs and occasional video while also showing steps to build his creations”.

It was “part of a high school project” and that his son has

chosen this to be his project as it allows his passion for the product, the creativity of building using the product and the programming technology required to create and maintain the site to flourish while helping other kids to build creations that they might not be able to dream up on their own and to share building ideas”.

A 4(c)(iii) defense is credible if the use matches the assertion of noncommercial or fair. In a 2008 case Respondent argued that his registration of <narnia.mobi> was a birthday present for his son who was a fan of the Narnia books, C.S. Lewis (PTE.) Ltd. v. Richard Saville-Smith, D2008-0821 (WIPO July 21, 2008). His sole intent of using the domain name for a child’s e-mail address and with no commercial motivation establishes rights or legitimate interests under the Policy. But, his use (or, rather nonuse) of the domain name gave him away:

the Panel cannot envision any plausible, good faith basis upon which the Respondent could have concluded that he was free to appropriate the Complainant’s distinctive and widely known NARNIA mark for use as a personal email address.

Contrastingly, in the Lego case there was a matching of allegations with use of the website. The Panel “is confirmed in its view that the Respondent has shown that the circumstances specified in paragraph 4(a)(ii) exist. He continues,

In many circumstances, bad faith registration in the face of such knowledge can be readily inferred. However, the record here would suggest that, notwithstanding such knowledge the Respondent and his son did not intend to cause any confusion or diversion of custom and did not, indeed, believe this to be likely, given the nature of their intended website. While the facts of each case will differ, in the present case the Panel accepts that this is sufficient to dispel the inference of bad faith registration that might otherwise arise.

The language of 4(c)(iii) “makes it clear that the operator of a noncommercial fan site can take advantage of this provision unless the operator, with an intent for commercial gain, is misleadingly diverting consumers or tarnishing the mark.” Estate of Francis Newton Souza v. ZWYX.org Ltd, D2007-0221 (WIPO June 18, 2007).

Gmlevine

There have been a number of cases lately in which complainant has either failed to prove a prima facie case or been unable to overcome respondent’s evidence of its right or legitimate interest in the disputed domain name. Respondent’s use of the domain name is a critical factor, but so too is the trademark. Longevity and recognition in the marketplace cannot trump a respondent’s right or legitimate interest unless it fails to offer affirmative evidence of its choice.

A respondent’s loss of its trademark for failure to file a declaration of use between the 5th and 6th years of registration is not fatal to either its right or legitimate interest in a domain name. Stonz Wear, Inc. v. Framez l-Wear, D2011-1764 (WIPO December 8, 2011). There is no rule that a respondent must own a trademark; indeed, it is more generally true that a respondent is not nor ever was a trademark holder, but that its right or legitimately interest arises either by its use of the domain name [paragraphs 4(c)(i) and (iii)] or through the coincidence of its business or personal name with the domain name [paragraph 4(c)(ii)]. Complainant’s prima facie burden on the second element is only satisfied by alleging that it has not given permission for respondent to register the domain name and that the respondent is not “commonly known” by the domain name. To allege one without the other does not satisfy the burden. In Stonz, the Respondent operated a business years prior to the Complainant acquiring its trademark.

In The California Milk Processor Board v. Center Ring Productions, LLC., D2011-1689 (WIPO December 1, 2011) (see last week’s post for another California Milk dismissal) the Respondent is a corporation owned by Mr. John Milke (pronounced with two syllables). Complainant challenged the registration of. GOT MILK? is “extremely well known in the United States.” Nevertheless, the Panel found it “difficult to conceive of a better means of establishing that one is ‘commonly known’ by a word than by showing that the word is his family name. Mr. Milke has been commonly known by that word all his life.” It does not explain the choice of prefix, but here the Panel disregarded “got” as a ” mere” prefix, implying that it undercut Respondent’s legitimate interest. In the Panel’s “assessment [it did not] take the Respondent outside the safe harbor of paragraph 4(c)(ii).” The missing ingredient for the Complainant is evidence of commercial use such that it could be argued that the prefix was not just “mere” but a subterfuge for taking advantage of the trademark. Had it been otherwise “there might be an argument that there needed to be proof that Mr. Milke had been commonly known by the entire phrase” but “Respondent’s use of his surname as the dominant feature of a non-commercial website keeps him within paragraph 4(a)(ii)’s safe harbor.”

A coda in California Milk on reverse domain name hijacking is interesting in pouncing on the Complainant for not recognizing that Respondent’s surname undercut the assertion that he lacked rights or legitimate interests in the domain name. The coda in full reads:

After more than a decade of precedent in UDRP proceedings, this Panel believes that “any complainant, and even more so any professional representative of a complainant, should be at least minimally versed in the Policy, the Rules, their scope, and their limits. It is no excuse that a party or its representative is unfamiliar with clear Policy precedent, much less the clear language of the Policy and the Rules themselves”…. So he finds it troubling that the Complainant, represented by counsel, so casually elides an express Policy provision, paragraph 4(c)(ii). In the Panel’s opinion this Complaint would not pass muster under Rule 11 of the United States Federal Rules of Civil Procedure, which treats counsel’s signature on a pleading as his certification, “formed after an inquiry reasonable in the circumstances “that the claims, defenses, and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law . . .” Similarly it is inconsistent with the Complainant’s (or its representative’s) certification, required by paragraph 3(b)(xiv) of the Rules, that “that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, . . .”

This having been said, and although the Panel found that “the Complaint ‘was brought primarily to harass the domain-name holder,’ Rules, paragraph 15(e),” he elected not to enter an order for reverse domain name hijacking. Instead, he chose to “admonish[] the Complainant’s counsel that in future cases he should do his homework before filing.”

Gmlevine