January 9, 2009
Suspending Proceedings for Settlement
There is no rule expressly authorizing suspension of arbitration except when a legal proceedings has been initiated [Rule 18 of the Rules of the Policy: “(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”]
Discretion to suspend proceedings for settlement purposes may be subsumed under Rule 10(a) – “(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules” – but if exercised at all panelists will closely monitor the parties’ progress.
It is not entirely clear whether both parties initially requested a suspension in Leineweber GmbH & Co. KG. v. Braxton Manufacturing Co., Inc., D2008-1057 (WIPO December 28, 2008), but “following ... repeated suspension” the Panel decided to proceed to a decision when the Complainant made a further request to “suspend this case for one year.” The Panel stated that the initial suspension for more than 3 months “should in the ordinary course of things be more than sufficient time to enable a settlement to be reached and implemented.”
Its reasoning in deciding the case rather than taking it off the calendar was two fold: first that the parties did not indicate that any settlement had been reached; and, second, that the intended purpose of the UDRP was its “expedited process.” Suspension offends the Policy. For the reasons stated in yesterday’s Note, the Complainant failed to prove that the Respondent lacked rights or legitimately interests in the domain name and the complaint was denied.
January 8, 2009
Buying and Selling Domain Names
Paragraph 4(b)(i) of the Policy makes it a violation for the respondent to acquire the disputed domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
If not “primarily” for the proscribed purpose, however, the acquisition cannot be said to interfere with a complainant’s rights. The interpretation of the prescriptive phrase “selling, renting or otherwise transferring” does not prevent the respondent from doing any of those acts as long as it demonstrates a right or legitimate interest in the domain name. A domain name is no different from any other asset a party may own and is free to sell it to the highest bidder. The determination as to who may rightfully own the disputed domain name depends on the factual circumstances rather than offering the domain name for sale, etc.
The Respondent in Leineweber GmbH & Co. KG. v. Braxton Manufacturing Co., Inc., D2008-1057 (WIPO December 28, 2008) demonstrated its right to the domain name under both ¶4(c)(i) and ¶4(c)(ii). “It was [noted the Panel] the Complainant who approached the Respondent regarding the sale of the disputed domain name. The Respondent’s reply was that it would not sell the domain name for less than USF $1 million.” A hefty price to be sure, but putting a price on the domain name does not violate the Policy. The Panel’s reference to the value of the domain name is, I think, an ironic gloss on the Complainant’s imaginative argument that the Respondent must have registered the domain name – which it did ten years earlier – “awaiting a convenient opportunity sell the domain name to the real trademark owner.” The problem with this kind of argument is that it succeeds only if the complainant offers evidence that the respondent had knowledge or was even aware of the complainant or its trademark when the respondent registered the domain name as an abbreviation of its business name. In Leineweber, no such evidence was adduced.
January 7, 2009
Inferences Drawn from Active Websites
A respondent registers a generic term as a domain name that is identical to a complainant’s trademark and insists he registered it in good faith. The generic term in Factory Mutual Insurance Company v. Valuable Web Names, D2008-1014 (WIPO August 19, 2008) is “my risk” (<myrisk.com>). The Respondent argues that a Google search reveals a multiple of domain names incorporating the generic term and that as first registrant its ownership trumps the complainant’s. The Panel summarizes the Respondent’s argument as follows:
Complainant’s marks consist of two common dictionary words that make up a common everyday phrase. On the Internet this phrase appears on more than 200,000 third-party websites “wholly unrelated to Complainant,” and Complainant has no exclusive right to it. Because the words are “generic” or the phrase is used often in everyday English, “Respondent, ipso facto, has rights and a legitimate interest” in it.
Whether the registration of a generic term that a complainant claims is identical or confusingly similar to its trademark is legitimate depends on the factual circumstances. The Policy is not prescriptive as the Respondent in Factory Mutual supposes. Thus,
The simple gist of Respondent’s defense is that anyone who is first to register has a right to an available domain name that consists of or includes a common word or phrase, regardless of trademark rights of others. That is simply not true. (Emphasis added).
See also Leineweber GmbH & Co. KG. v. Braxton Manufacturing Co., Inc., D2008-1057 (WIPO December 28, 2008) (“The Policy is not prescriptive about the nature of the rights or legitimate interests that a respondent must demonstrate to rebut a case against it. Whether a respondent has such rights or legitimate interests will depend on the facts of each case.”) In deciding Factory Mutual, the Panel noted that “[b]oth parties in their respective arguments appear to acknowledge, as is often the case in proceedings involving domain name aggregators [who are held to a higher standard], that whether Respondent has right or a legitimate interest in the disputed domain name and whether it registered that domain name in bad faith turn[s] on the same analysis.” One of the questions for which there has to be evidence is respondent’s knowledge of the complainant or its mark. However, the evidence can be deduced from the record. The Panel noted
Here, of course, Complainant’s mark was registered well before Respondent registered the disputed domain name. That fact alone does not establish bad faith. Unlike United States of America trademark law, prevailing practice under the Policy usually requires proof, even if the mark be registered, that the respondent actually knew of the complainant’s mark.
When “[e]ach party ... asserts a bright line rule in support of its position on these issues,” what does the Panel do? Ordinarily, one of the analytical tools is deconstructing the website. If the respondent denies knowledge of the complainant or its trademark the complainant must present sufficient evidence that the denial is untrue. Proof that the respondent had the complainant in mind tips the scale in the complainant’s favor. In Factory Mutual, the Panel found that although “[n]o one but Respondent knows for certain what its motivation was for acquiring the disputed domain name,” the record in this proceeding “points firmly toward actual knowledge.” This is inferred notwithstanding the Respondent’s denial
since its website identifies Complainant by name and includes a link to Complainant’s main web page. The main topic of Respondent’s website, as Respondent acknowledges, is insurance-related matters. While insurance is one subject suggested by MYRISK’s everyday meaning, it is not the only one or necessarily the most obvious or commercially exploitable one. Respondent’s election to use the phrase for Complainant’s line of business strongly suggests it was aware of Complainant’s mark.
The content of the website gave the Respondent away. It was found to have actual knowledge because it identified the Complainant as one of the suppliers of insurance products together with its competitors.
January 6, 2009
Bona Fide Offering of Goods or Services
Domain names identical or confusingly similar to trademarks can be legitimately used for a variety of business models that support a defense under ¶4(c)(i) of the Policy. Thus, 1) Vanity e-mail services, Stephen Wheatcraft v. Reison, Inc. c/o Domain Manager, FA0811001232650 (Nat. Arb. Forum December 22, 2008) (<wheatcraft.com>,); 2) Paid search advertising, Decal (Depositi Costieri Calliope) S.p.A. v. Gregory Ricks, D2008-0585 (WIPO June 11, 2008) (<decal.com>,); 3) Domain names for sale, CeWe Color AG & Co. OHG v. Shenbun Limited, D2008-0810 (WIPO July 10, 2008)(“The buying and selling of domain names is, of itself, a perfectly legitimate trading activity”); 4) Cultural activities, Velcro Industries B. V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, D2008-0864 (WIPO July 28, 2008) (<velcroart.net>); 5) Affiliate program, Authorize.Net LLC v. Cardservice High Sierra, D2008-0760 (WIPO June 30, 2008) (<authorized.net>), citing National Futures Association v. John L. Person, D2005-0690 (WIPO August 15, 2005) (<nationalfutures.com>, in which the registrant was a member of the Association). In the first two cases, the domain names are composed of trademarks that have entered a number of languages as parts of speech and become genericized. In none of the cases is there any evidence that the respondents registered the domain names with the complainants in mind; in other words, not a ¶4(c)(iii) – legitimate noncommercial – defense. As the Panel states in Velcro Industries, “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.”
To succeed on a ¶4(c)(i) defense, the respondent must demonstrate concretely and not by inference that “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name [is] in connection with a bona fide offering of goods or services.” Whether the operation of a business is bona fide depends upon a number of factors: its history, either of operation or in preparation of it, and registrant’s credibility for having a domain name allegedly confusingly similar to another’s trademark. “[U]se which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services,” Madonna Ciccione p/k/a Madonna v. Dan Parisi and “Madonna.com, D20000-0847 (WIPO October 12, 2000).
It is not the business model that upends a respondent’s contentions of legitimacy. The term “legitimate” in ¶4(c) refers “to the respondent’s entitlement to the domain name it has selected,” rather than to the legality of its business. 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). The Respondent in Abu Dhabi Future Energy Company PJSC v. John Pepin, D2008-1560 (WIPO December 22, 2008) may very well have in mind a legitimate business for <masdarcity.com> and <masdarcity.net> but its registration of those domain name evidenced “exploitative intent.”
“Masdar” is both a family name and a geographic indicator. However, the Complainant offered proof that the trademark had at the time the domains were registered aquired distinctiveness in the marketplace. While it is always possible for two persons to come up with the same name – coincidence being more probable and less suspicious when the words are generic – suspicion rises as the choice of words moves up the classification scale. In this case the Panel cited evidence that the Respondent registered the disputed domain names on the same date that Complainant made a significant media “launch” of “Masdar City.” Opportunism was also evidenced by the Respondent registering the name with a “.uk” extension the same day as a presentation in London.
As though this was not be enough, the Panel’s also concluded that the Respondent lacked credibility – he made “inaccurate representations to the Panel about various subjects, including his involvement in prior UDRP proceedings.”
January 5, 2009
Personalized Domain Name Service
Complainants objecting to domain names mimicking trademarks of their founders’ surnames have to overcome the fact that as a business moniker a surname – unless contemporaneously famous as a source of goods or services – is a generic term. If the domain name is used as a service for persons bearing the surname, there can be no actionable claim. A personalized domain name service is one of the business models accepted as a “bona fide offering of goods or services” [¶4(c)(i) of the Policy]. However, a defense is viable only if and to the extent that the respondent does not stray from the vanity model. Respondents in Ancien Restaurant Chartier v. Tucows.com Co., D2008-0272 (WIPO May 6, 2008) (<chartier.com>); Raccords et Plastiques Nicoll v. Tucows.com Co., D2008-1322 (WIPO December 2, 2008) (<nicoll.com>) and Stephen Wheatcraft v. Reison, Inc. c/o Domain Manager, FA0811001232650 (Nat. Arb. Forum December 22, 2008) (<wheatcraft.com>) proved that they were using the domains for such e-mail services.
In contrast, the Respondent in Hoerbiger Holding AG v. Texas International Property Associates, D2007-0943 (WIPO October 19, 2007) –although insisting otherwise – was using the domain name in a way that could only confuse Internet users. “Many Panels have recognized that it is not a legitimate or bona fide use to use someone’s trademark to generate advertising revenues through links to the trademark owner’s competitors.” The Panel found that it had
no reason to doubt that the term “horbiger” is a surname... [but] [c]ontrary to the Respondent’s contention ... it is not being used just for a generic search portal. As noted above, it is being used for a website according to its own banner “For resources and information on Compressor and Automation”.
Moreover – and an illustration as to how credibility is factored into a decision – “it is not correct to claim that the Sponsored Results are only triggered by computer users looking for descriptive and generic terms. The particular terms that trigger the Sponsored Results are already listed on the website at the URL to which the domain name resolves.”
At bottom, straying from the model and asserting good faith suggests pretense. The principle applied here is that a respondent has no right or legitimate interest in a domain name that diverts Internet users by pretending to be the Complainant. The “initial interest confusion” noted for December 31, 2008. Proof that the coincidence of names is a charade for targeting the complainant’s trademark and feeding on its reputation violates ¶4(b)(iv) and satisfies both elements of ¶4(a)(ii). This is made even clearer in Pernod Ricard v Tucows.com Co., D2008-0789 (WIPO August 21, 2008). The “surname/domain name in question (Ricard) [is] a very famous trademark in France and abroad.” According to the Panel it was
patently clear that the Respondent does not use the disputed domain name solely with a vanity email service. The domain name is the address of a web portal which displays a list of sponsored links to third-party websites and through which the Respondent receives revenue.... Those links, coupled with the Panel’s finding that the Respondent was aware of the Complainant and its mark when the disputed domain name was registered, point inevitably to the conclusion that the Respondent appreciated that some Internet users looking for sites associated with the Complainant would mistakenly come to the Respondent’s website.
This being the case, “it is but a short step to conclude that the Respondent must have intended that such mistakes would occur, and was to that extent seeking to profit from the trademark value of the word ‘Ricard’.”
January 2, 2009
(Next Note January 5th)
Trademark Searches
mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., D2007-1141 (WIPO November 30, 2007) (three member panel):
Although there may be no obligation that a domain name registrant conduct trade mark or search engine searches to determine whether a domain name may infringe trade mark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be wilfully blind to whether a particular domain may violate trade mark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.
December 31, 2008
Application of the principle of initial interest confusion to claims of trademark infringement is not without controversy. The issue is aired by Ron Coleman in his December 28, 2008 blog (Likelihood of Confusion®) with a link to a chapter by Jennifer E. Rothman, “Initial Interest Confusion: The Diversion of Trademark Law,” from Intellectual Property and Information Wealth, Vol. 3. Trademark and Unfair Competition,(Ed. Peter K. Yu, Praeger). I think it fair to say that Ms. Rothman is not a fan of initial interest confusion. The principle has also been denounced as well by an ICANN panelist in dissent in Aspis Liv Försäkrings AB v. Neon Network, LLC, D2008-0387 (WIPO June 2, 2008). He complained that a “small group of recent domain name cases [were improperly based] on a judicially invented legal concept that arose in the early 2000's.” In his view
Adoption of this concept is a classic case of judicial activism where a Panel or Court is attempting to adopt some new and beneficial equitable principle that it considers “fair and reasonable”, in spite of the fact there is no legal basis or practical reason for such a conclusion. Moreover, even if the principle of Initial Interest Confusion were a valid concern at the beginning of the use of the Internet, it is no longer a rational justification for inventing some equitable principle because of the extensive use of near instant result search engines like Google and Yahoo.
Many statutory principles begin life as “judicially invented legal concepts” and I take it that arguing against matriculation of “initial interest confusion” is part of the dialogue among lawyers who feel strongly about the issue and future legislators who must decide whether a principle deserves statutory status. Whatever the principle’s merit in determining cases of trademark infringement, its employment in domain name disputes is not limited to a “small group of recent domain name cases.”
The Panel in Justice for Children v. R neetso / Robert W. O'Steen, D2004-0175 (WIPO June 4, 2004) states the panels use the phrase “initial interest confusion” in two contexts: “[1] confusion of authorship upon reading the content of a website and [2] confusion of an Internet user who is seeking the mark owner's website but is attracted to the critic’s website by its similarity (in this case, identity) with a recognized mark.” The content of the web is “irrelevant to the harm to the mark owner and to the unwary consumer. ” What is relevant is that
That harm results from the confusion caused by the initial attraction to the site by means of borrowing the complainant's mark. And that is exactly the harm the Policy was adopted to address.
“The fact that such confusion may be dispelled, and replaced by annoyance or disgust once the nature of the site is revealed, does not negate the fact of initial confusion,” Ticketmaster Corporation v. Iskra Service, D2002-0165 (WIPO April 8, 2002); Ticketmaster Corporation v. Polanski, D2002-0166 (WIPO April 8, 2002); Ticketmaster Corporation v. Dotsan, D2002-0167 (WIPO April 8, 2002).” As a corrective, the Panel in BioCryst Pharmaceuticals, Inc. v. Kumar Patel, D2005-0674 (WIPO August 4, 2005) pointed out that the term “initial interest confusion” applies where the Respondent is engaged in a commercial enterprise. The purpose of this observation is to make sure that there is no application of the principle to protected speech. The Panel stated that
this argument is in some ways similar to the test of initial interest confusion in US trademark law. However, that test as this Panel understands it requires a direct or indirect commercial element in the use of the domain name, which, based on the record, is not present in this case.
The mistake is easily corrected of course and as far as the Internet user is concerned of no particular moment, but in the meantime the respondent has earned income from the confusion between the domain name and the trademark. The inference in such cases is that the respondent’s intention was to hitch a ride on someone else’s wagon, and that is bad faith as defined under the Policy.
December 30, 2008
AIDA Cruises German Branch of societá di Crociere Mercuric S.r.L. has launched eleven domain name complaints since 2006 three of them denied. Two of the three disputed domains resolve to website for hotels, respectively D2008-1471 (WIPO December 17, 2008) (<aidaayurveda.com>, no appearance by the Respondent) and D2008-1472 (WIPO November 25, 2008) (<hotelaida.com>, Respondent appeared and defended itself). Registered as a trademark, AIDA is hardly on the fanciful end of the spectrum, but it is a significant player in its market.
The Panel deciding <aidaayurved.com> also determined sua sponte that the Complainant should have known better than to bring the proceeding and found it guilty of reverse domain name hijacking. Although there is precedent for making such a finding “even in the absence of a Response,” Goway Travel Limited v. Tourism Australia, D2006-0344 (WIPO June 6, 2006), it is nonetheless unusual under UDRP and not, as far as I can find, followed by other panelists except the one who created the precedent; or, perhaps, “false precedent” since it is the same panelist in both cases. Ordinarily, the request for reverse domain name hijacking is made by the respondent, who “must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge,” Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO October 31, 2000).
Although not precedent in any respect but an interesting footnote, the Nominet <.uk> DRS procedure provides that if the “expert” finds that the Complainant has commenced proceedings in bad faith – that is, deserving of a finding of reverse domain name hijacking – on “three separate occasions within a 2-year period” then in that event “Nominet will not accept any further complaints from that Complainant for a period of 2 years” [Rule 16(d)].
Aida Cruises may have been offensively aggressive in commencing proceedings against hotels in Spain and Sri Lanka but the finding against it appears unnecessary. A respondent no less than the complainant has to show that it is entitled to relief, otherwise the judge – who should be impartial – becomes a prosecutor. Courts generally abstain from ruling on issues not affirmatively before them. Not bad precedent for arbitrators to do likewise.
December 29, 2008
Imagining Rights; Fanciful Arguments
Owning a trademark is a good start; even better if the trademark antedated the registration of the domain name; and better still if the website to which the domain name resolves is found to be taking advantage of the complainant’s reputation for commercial gain. On the other hand, it is not so good if the complainant’s trademark post dated the registration of a domain name used by a registrant in its business who could not possibly have anticipated that another person years later would fancy the same name as a trademark. Except in the Wonderland that Alice visited, the right that an owner has to its word mark does not extend its monopoly backward in time. It may very well be that a domain name is identical to a trademark, but if the respondent was the first to register the word or word combination as a domain name – no evidence of targeting present – there is no there is no principle of law that sanctions its being transferred to a later registered trademark owner.
Elementary principles of trademark and domain name law clearly were not subjects of study for the Complainant in NETtime Solutions LLC v. NetTime Inc. c/o Chad Wagner, FA0810001230152 (Nat. Arb. Forum December 19, 2008). It based its claim on the belief that a respondent can lose its right to a domain name if “his company has been dormant for at least 10 years; that his use of the domain name has not been in connection with bona fide offering of goods and services; that the domain name has been crippled by its non-use; [and] that by ceasing to trade Respondent has extinguished his rights in the name.” The contentions are a kind of analogue of adverse possession under real property law, although reversed so that the person who wants the property can claim it if the owner does not notoriously use it.
Fanciful was the Panel’s generous view of the Complainant’s contentions.
There are, as the Panel points out, “numerous UDRP Decisions finding that the passive holding of a domain name by a Respondent, coupled with knowledge of a Complainant’s trademark, is contrary to the Policy.” The key is “coupled with knowledge.” However, even if a domain name registered in good faith were passively held its holding cannot be transmogrified into a registration of bad faith. There are cases in which a first registrant commences using the domain name in bad faith after another has acquired a trademark right; whose successor in interest to the domain name would be vulnerable to a claim of abusive registration if it continued the same use. See Note December 8th, Bad Faith Measured from Date of Acquisition. But it is not the law that a person first to register a name unowned in a trademark sense is entitled to priority once a trademark issues. Stephen Wheatcraft v. Reison, Inc. c/o Domain Manager, FA0811001232650 (Nat. Arb. Forum December 22, 2008).
December 26, 2008
(Next Note December 29th)
Burden of Proof
(Light for Proving Lack of Rights or Legitimate Interests [¶4(a)(ii))]
Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO August 21, 2003):
Since it is difficult to prove a negative (i.e. that Respondent lacks any rights or legitimate interests in the mark) – especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests – and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant’s burden of proof on this element is light.
December 24, 2008
There is applied to each parties’ respective burden a lighter finger on the scale for ¶4(a)(ii) and heavier for ¶4(a)(iii) and ¶4(c)(i-iii), but the standard of proof under the Policy is by a preponderance of the evidence typically expressed in such phrases as “more likely than not” and “balancing of probabilities.” In at least one early case, a dissenting Panel member argued for a higher standard, “clear and convincing,” Bootie Brewing Company v. Deanna D. Ward and Grabebottie Inc., D2003-0185 (WIPO May 28, 2003) which, however, has not been taken up by her fellow panelists.
However, on the issue of common law rights a higher standard appears warranted. In Chromalloy Men’s Apparel Group, Inc. v. Burch & Hatfield Formal Shops, Inc., D2000-1046 (WIPO October 20, 2000)the Panel stated that “[s]ubstantial evidence would be required to demonstrate consumer or internet user association between Complainant’s asserted mark and Complainant as a source of products or service so as to establish secondary meaning and trademark rights in favor of Complainant” [Emphasis added]. Another Panel found the “clear and convincing” standard appropriate for proving a right in an alleged unregistered trademark, Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, D2004-0108 (WIPO July 22, 2004) (“[a]s the degree of fame decreases from clearly identifiable celebrities with worldwide renown, to nationwide renown or to less well known authors [and] actors ... with limited renown in a specific field, the burden of proof on the Complainant increases and the need for clear and convincing evidence becomes paramount”) (Emphasis added ).
Proving common law rights is a frequently discussed issue as indicated by the question and answer in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 (“relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The Panel in WebTrends Inc. v. Search Engine SEO Software Reviews, Mark Chu, D2008-1520 (WIPO December 15, 2008) (<1stplacesoft.com>) concluded that “the totality of the evidence [which was not insubstantial and included an acknowledgment by the Respondent] makes it reasonably clear that the Complainant did acquire [unregistered] rights in the FIRSTPLACE SOFTWARE mark.... [and that] on the balance of probabilities, the Complainant acquired the same rights in [the unregistered mark] as those previously held by FirstPlace Softward, Inc. itself” (Emphasis added).
December 23, 2008
Each Reqirement Demands Its Own Proof
Forearming is a virtue in litigation; it should be no less so in prosecuting or defending a UDRP proceeding. Each requirement demands its own proof. The test for identical and confusing similarity is based on comparing the second level domain <SLD> with the complainant’s trademark. It differs from that applied under trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion. Thus, “Respondent’s argument that the <verridian.com> domain name is not identical or confusingly similar to Complainant’s VERRIDIAN marks because Complainant’s trademarks are limited to international classes 35 and 42 is unavailing.” The test “should not consider extraneous factors such as the types of goods or services on which the mark is used or the contents of the website to which the domain name resolves,” Verridian Plc v. Nadine Leech, D2008-1539 (WIPO November 20, 2008). Paragraph 4(a)(i) can be satisfied by alleging a registered trademark and exhibiting the certificate of issuance. Rule 3(b)(xv) of the Rules of the Policy read: Complaint “shall” include “documentary or other evidence, including a copy of . . . any trademark or service mark registration upon which the complaint relies, . . .”
However, a finding in complainant’s favor of identity or confusing similarity between the domain name and its trademark in no way foretells success for the other two requirements. Moving successively from ¶4(a)(i) to ¶4(a)(ii) to ¶4(a)(iii) of the Policy requires grasping the fact that the complainant has to present persuasive layers of evidence for each. It is not sufficient to question the legitimacy of the respondent’s evidence; it has to be shown. “Although Respondent’s evidence is thin, Complainant has not submitted evidence that Respondent’s evidence is fraudulent or otherwise inaccurate.” “Thin,” but the Respondent in her turn showed that a company in fact existed bearing the name of the domain name thus satisfying both ¶4(c)(i) [having “a name corresponding to the domain name in connection with a bona fide offering of goods or services”] and ¶4(c)(ii) [“have been commonly known by the domain name, even if you have acquired no trademark or service mark rights”].
Verridian Plc nevertheless raised an interesting point having to do with transferees: To what extent bad faith conduct by the transferor rubs off on the transferee? The answer varies in part according to the identity of the successor registrant and whether the transfer was a bona fide arm’s length transaction. The Verridian Respondent was not a bulk registrant of domain names. Rather, the domain name was purchased for use by a company registered in South Africa but inactive except for some advertising and a single year's tax return known as “Verridian” and there was no evidence of collusion between seller and purchaser. In these circumstances – the absence of any relationship between the transacting parties being a determinitive factor – transferee's acts alone control the outcome of the case.
December 22, 2008
Common Words in Distinctive Combinations
There are two well established rules of construction, the first of which holds that domain names that wholly incorporate trademarks may be confusingly similar to such trademark for purposes of the Policy; the second holds that the addition of generic words do not eliminate the similarity between the Complainant’s marks and the domain names. Domain names composed of common words for websites in which the common words are employed in their dictionary sense – absent evidence of targeting – do not violate the Policy. No words could be more common than “jet”, “star”, “Pacific”, “Atlantic”, “arctic” and “airline.” However, specific combinations of common words such as “jet” and “star” “enjoy[] at least a certain degree of distinction,” Qantas Airways Limited v. Minh Huynh, D2008-1382 (WIPO November 13, 2008). This does not contradict another and equally persuasive rule that holds that nobody can own or monopolize generic terms or common words.
The Complainant owns trademarks for JETSTAR, JETSTAR PACIFIC and QUANTAS which the Respondent has incorporated whole into the disputed domain names, <jetstarpacific.com>, <jetstarpacificairlines.com>, <jetstaratlantic.com>, <jetstararctic.com>, <jetstarindian.com>, <pacificjetstar.com>, <vietjetstar.com>, <pacificqantas.com>, <qantaspacificairline.com>, and <qantasvietairways.com>.
Risibly, respondents' standard tactic is either or both to protest its innocense or attack the complainant. In Quantas Airways the Respondent contended that it intended to use the domain names in “a private, personal and non-commercial way ... for websites providing information on jets, telescopes, oceanography, and airliners for pupils, students, engineers and officers.” The website would (according to the Respondent) contain a disclaimer, i.e. “This web site is not commercial website – It is just my hobby and may be yours.” Protesting one’s innocense only works when there is a foundation. An intention to use does not create a right or legitimate interest in the disputed domain name or undercut a complainant’s allegation of its bad faith registration and use. Paragraph 4(c)(i) reads:
[B]efore any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Proof of demonstrable preparations is intensely fact driven. The respondent’s plans have to be described with particularity supported by evidence that they are not illusory. There must be a business plan. Vague and unsupported assertions of ‘plans to sell household goods, supplies and appliances over the Internet’” are insufficient to be considered proof of a legitimate purpose, Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum November 7, 2000). No credit is given for assertions and respondents are not given any benefit of the doubt for intentions. “Respondent’s failure to provide business plans or evidence reasonably related to preparations for legitimate use discredits any argument that it is preparing to make a bona fide use of the Domain Names,” Venetian Casino Resort LLC. v. International Services Incorporated, D2001-0678 (WIPO September 14, 2001).
December 19, 2008
Sunrise Rights, <.mobi>
Sunrise rights refers to a stipulated period during which an owner of a registered trademark may register a domain name prior to the registrar accepting registrations from the general public. In the case of <.mobi> the TLD was made available to the general public on September 26, 2006. Prior to that time and after July 11, 2005, the <.mobi> registration agreement provided a mechanism for trademark owners to challenge registrations. Previously, similar challenge mechanisms had also been implemented for <.info> and <.biz> and will be for future gTLDs.
The question, however, is not the mechanism but whether by foregoing the challenge during the sunrise period prejudices complainants' rights to a UDRP remedy. The answer is “no.” As with all gTLDs, <.mobi> registrations are subject to the UDRP. The issue has been squarely raised in a number of decisions, most recently in C. Bechstein Pianofortefabrik AG v. Melvin Besbrode, Besbrode Pianos Leeds, D2008-1528 (WIPO December 4, 2008); earlier cases include Adidas AG v. Zhifang Wu, D2007-0032 (WIPO March 21, 2007) and Mansueto Ventures, LLC v. Jonathan Witte, D2006-1479 (WIPO January 19, 2007).
The respondent’s standard argument is that the complainant had and lost its opportunity to secure the domain name during the sunrise period. In Adidas, the Respondent stated that he offered the domain name for sale “only after the priority or sunrise period for registration” had expired, implying thereby that by failing to register in every gTLD the Complainant has nothing to complain about and that he, the Respondent, was the one aggrieved. The Respondent further contended “that the Complainant should take the responsibility of securing the different domain names incorporating the ADIDAS mark and not attempt to seize them from others like the Respondent who has legitimately registered the domain name.”
This, however, is not the law. The panelists in the cited cases agree that
Neither Respondent’s compliance with the ‘.mobi’ sunrise procedures nor Complainant’s failure to apply for <bechstein.mobi>, in and of itself, confers upon Respondent a right to use Complainant’s mark in that domain name for a business that competes with Complainant’s. There is no evidence that Complainant or anyone else challenged Respondent’s registration during the sunrise period, and even success in a Sunrise Challenge does not insulate a ‘.mobi’ domain name from a subsequent attack under the Policy.
The fact that “the Complainant did not avail itself of the ‘sunrise’ procedure for .mobi names [is irrelevant]. That failure provides no obstacle to the Complainant from exercising its rights under the UDRP,” Mansueto Ventures, supra.
December 18, 2008
Prima Facie Case for Lack of Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy is pivotal for both complainant and respondent. The former has to make a showing sufficient to shift the burden and the latter has to prove that it has rights or legitimate interests in the domain name. There is no precise formula as to what kind or how much evidence satisfies the prima facie test and the quantum and type of proof may vary depending on the relative fame of the trademark and the appearance or not of the respondent. The greater the fame or presence the less evidence necessary to shift the burden, but some evidence there must be. However, the evidential demands on the complainant are said to be light, Educational Testing Service v. Netkorea Co., D2000-0087(WIPO April 4, 2000), but how heavy “light” is depends on the panelist. The difficulty is illustrated in Skyy Spirits LLC v. Stanislaw Krzenszczynski, FA0808001220829 (Nat. Arb. Forum November 26, 2008) in which the Panel dismissed the complaint (without prejudice) because the Complainant failed to marshal the minimum showing for a prima facie case.
What did the Complainant not do that it should have done? As a general rule a “complainant must set forth evidence demonstrating that a respondent is using the disputed domain name in a way that infringes upon its rights as established in a registered trademark or through established common law rights.” However, in Skyy Spirits, the Complainant “failed to offer any evidence, such as an Internet screenshot indicating where the disputed domain name leads, that would corroborate a use or non-use.” In other words, the Panel demanded a certain kind of evidence for satisfying a prima facie showing citing among other cases Claessens Prod. Consultants BV v. Claessens Int’l Ltd., FA 238656 (Nat. Arb. Forum Apr. 23, 2004) (the complainant neglected to state how the respondent used the disputed domain name in the complaint). The Complainant ought to have submitted evidence under Policy ¶¶4(c)(i) and (iii) “in order to demonstrate that the respondent has not made a bona fide offering of goods or services, or a legitimate noncommercial or fair use, respectively.”
There are, of course, panelists with a different understanding of the proof necessary to satisfy the prima facie test. The light burden standard is explained by the relative difficulty of having to prove a negative, in that the information necessary to establish that the respondent does not have rights or legitimate interests in the disputed domain name is “uniquely within [its] ... knowledge and control, ” G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
Presumably, the deficiency the Panel noted in Skyy Spirits will be cured when the Complainant files a new complaint as it is invited to do. What is curious in such a decision is that except for adding an “s” the domain name incorporates in its entirety the Complainant’s trademark <skyyvodkas.com> which was registered many years prior to the registration of the domain name. In such a factual circumstance, a complainant's denial of having any business relationship with the respondent would seem to warrant shifting the burden. See for example, as a representative of its type Allen Stanford v. Krishna Mohunial, individual, D2008-1188 (WIPO September 25, 2008) (Complainant made a prima facie case by contending without contradiction that he never authorized Respondent to use his name and that Respondent has never been known as “Allen Stanford” individually or in his business).
The Skyy test is unsatisfactory, however, not only because it contradicts the “light” standard but it confuses the proof necessary to satisfy ¶4(a)(ii) with that for ¶¶4(b)/3(a)(iii) of the Policy. In Allen Stanford and many other cases complainants pass the ¶4(a)(ii) test by contending without contradiction that they did not authorize respondents to use their name for a commercial website. It makes sense at that point to open the gate for proof of abusive registration under ¶4(b) of the Policy. A complainant can only pass the ¶4(b) and thus the ¶4(a)(iii) tests by proving that the respondent has engaged in abusive registration.
The Panel’s inflexibility in Skyy and like cases seems more a matter of elevating form over substance than balancing rights, particular since denying the complaint without prejudice to renewing it appears to suggest that but for that deficiency the Complainant was entitled to its remedy. The lesson for complainants, however – since they are stuck with the panelist chosen by the Center – is to follow scripture; do more.
December 17, 2008
Competing Rights or Interests in the Domain Name
On disputes between employers and employees, principals and agents, partners and business associates, the WIPO Overview has nothing to say and although there are panelists who question whether complaints involving these disputants belong in a UDRP proceeding the consensus is that they do (or most likely) for employer/employee, maybe for principal/agent and most likely not for partners/business associates. The respondents in these groupings are not, as is typically the case, strangers to each other, hence there are generally allegations of breaches of contract and fiduciary duty. However, one group of disputants should not be confused with another as is the case in Correct Craft, Inc. v. SouthEast Correct Craft, FA0810001231091 (Nat. Arb. Forum December 15, 2008). Although the parties had been business associates connected by family ties originating with their grandfather the Panel in building the case against jurisdiction cited Latent Tech. Group, Inc. v. Fritchi, FA 95285 (Nat. Arb. Forum September 1, 2000) for the proposition that “disputes between employers and employees are outside the scope of the Policy and should be decided in a court of law.” On not dissimilar facts the Panel in Cricket Technologies, LLC v. Martin a/k/a Cricket Technologies LLC, FA 311353 (Nat. Arb. Forum September 27, 2004) held that when an employee registers the domain name within the scope of employment, his act of registering it in his individual name and contact information was evidence that he registered and used the domain name in bad faith.
It is not necessary to argue here the point that there is a distinction between an employee and a business associate – the line perhaps blurring occasionally but not in Correct Craft – and that it is important to correctly characterize disputants and recognize distinctions among them in reaching a fair decision. In fact, the Panel had other, more apt precedents to dismiss the complaint which she cited that were (as she stated) “closer to the current dispute.” It is these other precedents that should be highlighted particularly in cases where the parties' relationship is easily recognized.
When it comes to business associates and partners, the rule is that the dispute is outside the scope of the UDRP for the reason given by the Panel in Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001): “shoehorn[ing] what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy.”
In order to have jurisdiction, the dispute must necessarily be limited to issues that support a conclusion of abusive registration as that term is defined in the UDRP. Disputes that raise non-trademark issues in which the predominant claims may concern other intellectual property and interpretation of contract rights are questions more properly for a trial court. In Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005), also cited by the Panel in Correct Craft, the parties reached a verbal agreement that the respondent would become the Complainant’s Australian distributor of sporting goods. When the relationship broke down the respondent refused to transfer the relevant domain name to the complainant before it paid compensatory claims. The dispute raised “serious contractual issues” that could well involve “findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses.” Furthermore, “[s]o far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.”
What distinguishes an employee’s refusal to turn over the domain name to its former employer frequently carries an odor of withholding it for ransom. There is generally more to claims asserted by former business partners and associates who are attempting to sort out their respective contract rights.
December 16, 2008
Factual Circumstances Favoring Respondents
In considering some recent decisions perspectively, what they can tell us about complainants when looked at as companions in a group, reveals the several ways that complainants fail to make a case for abusive registration and correlatively the factual circumstances favoring respondent. Although a significant proportion of proceedings are decided without any respondent participation this does not guarantee a complainant relief under the UDRP unless the complainant marshals sufficient proof that it is entitled to the requested remedy. The burden or onus is on the complainant throughout the proceedings. Whether it be lighter for Paragraphs 4(a)(i) and 4(a)(ii) and heavier for Paragraph 4(a)(iii), it is surprising the diversity of deficiencies that support dismissal or denial of complaints. Remember, the respondent keeps the domain name if the complainant is unable to prove bad faith in the conjunctive, registration and use. Proving one or the other does not support a finding of abusive registration under the UDRP. The factual circumstances either existing or self created include, “When”
1) the complainant does not have a trademark, a problem generally associated with personal names and trade names, Margaret C. Whitman v. Domains For Sale, D2008-1534 (WIPO December 1, 2008) ("Merely having a 'famous name' is not sufficient to establish common law trademark or service mark rights in the name); B C Furtney v. Afterthought Productions, FA0809001226494 (Nat. Arb. Forum November 17, 2008) (domain name lost for failure to renew registration).
2) the complainant fails to offer evidence supporting its contentions, Games Workshop Limited v. Admin, Domain, D2008-1321 (WIPO November 27, 2008) – “[o]ne would have thought that some very basic online investigation ought to have provided some supporting evidence for the Complainant’s contentions.”
3) the domain name was registered prior to the accrual of the complainant’s trademark right [Paragraph 4(a)(i) of the Policy “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name,” Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO March 30, 2001); Abuela Company LLC v. ARISU TECH, FA0808001222449 (Nat. Arb. Forum October 21, 2008) – “a respondent could not have registered or used its disputed domain name in bad faith when it registered the disputed domain name before the time that the complainant’s rights in the mark commenced”].
4) the complainant alleges common law rights but fails to prove that the mark has acquired “secondary meaning” in the marketplace, NAOP LLC v. Name Administration Inc. (BVI), FA0808001220825 (Nat. Arb. Forum October 7, 2008).
5) the complainant is found to have registered marks, but the trademark application contains admissions against interest, such as disclaiming the terms of the disputed domain name, Ideation Unlimited, Inc. v. Dan Myers, D2008-1441 (WIPO November 12, 2008).
6) the trademark is composed of generic terms or common words phrases; no evidence of knowledge or that domain name is being used to take advantage of the complainant’s reputation but used “because of its attraction as [a] dictionary word[], and not because of [its] value as [a] trade mark[],” Land Mark Group v. Digi Media.com, FA0406000285459 (Nat. Arb. Forum August 6, 2004) (<landmarks.com>) ; or, a neologism common in the industry, Super-Krete International, Inc. v. Concrete Solutions, Inc., D2008-1333 (WIPO October 14, 2008) (<supercrete.com>).
In each of the above factual circumstances the complainant’s failure to marshal evidence is also a sign that he misapprehends the fundamentals of domain name jurisprudence.
December 15, 2008
Timing of Domain Name Acquisition and Inactivity
Inactivity by itself is not an indication of bad faith registration or use. Passively holding a domain name becomes a violation of the Policy when in combination with other circumstances it crosses a line on the continuum. The line is easily – perhaps instantly – recognized when the domain name is identical or confusingly similar to a famous or well known trademark and less when the trademark is composed of generic or descriptive terms. A violation does not require proof of a positive action: “[I]n certain circumstances, [passive holding can] constitute a domain name being used in bad faith,” Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The Panel identified five circumstances that would support such a finding, of which the fifth reads: “Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” This being said, “[t]here is nothing in the Policy that suggests a registrant may be divested of a domain name simply because he failed to use it actively online,” National Football League v. Thomas Trainer, D2006-1440 (WIPO December 29, 2006) (<nflnetwork.com>).
Evidence of use is always examined first, then assuming alignment of circumstances it can be inferred that the domain name was also registered in bad faith. The alignment of circumstances that support a finding in the complainant’s favor of ¶4(a)(iii) of the Policy is illustrated in OpBiz, LLC d/b/a Planet Hollywood Resort & Casino v. Steven Davis, FA0810001229112 (Nat. Arb. Forum December 8, 2008). The burden under ¶4(a)(ii), which is comparatively light and may be no more than asserting that the respondent has not been granted permission, is to make a sufficient showing that the respondent has no rights or legitimate interests in the domain name. The Panel in OpBiz concluded that it had neither. It found that the respondent had been holding the domain names passively for two years and that this “long period of inactivity demonstrates ... that Respondent has made no bona fide offering of goods or services with the disputed domain names pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
In concluding that the Complainant had also satisfied its burden under ¶4(a)(iii) the Panel found two factors particularly compelling: “(1) that Respondent has failed to make any active use of the disputed domain names for over two years, and (2) that Respondent has not provided any evidence of demonstrable plans to use either of the disputed domain names. This conclusion, however compelling it may sound, is on the border line of sufficient evidence for bad faith, which may explain why the Panel gave an even more compelling reason to order the domain name transferred. Furthermore, said the Panel
[it] also takes note of the date upon which the domain names were registered—January 2006. This was the same month that construction began on the first of the three towers to be part of the PH Towers by Westgate, a partnership between Planet Hollywood Resort & Casino and Westgate Resorts. Previous panels have considered the timing when a disputed domain name was registered to indicate opportunistic bad faith. Once again, without any further information in the record, the Panel considers this to be additional evidence of Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii).
The Telstra rule in essence mirrors the factors applied to a respondent's positive action. Both not using a domain name as well as populating the website to which it resolves – when the circumstances are shown to exist – are opportunistic. Timing is a critical factor in this assessment. The Panel in OpBiz cites two cases to support this view: : Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that Respondent has to refute and which he has failed to do”); Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change.”)
December 12, 2008
A complainant can be guided only so far, but if its ears are switched off it is ineducable. There are certainly some cases in which noted deficiencies are corrected or supplied through a Procedural Order pursuant to Rule 12 of the Rules of the Policy – “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties” – but it is not the Panel’s task to make the complainant’s case for him. The problem is painfully highlighted in Games Workshop Limited v. Admin, Domain, D2008-1321 (WIPO November 27, 2008) in which the Panel “confesses to some slight disquiet about the result” because the “Complainant’s trade mark, FORGEWORLD, is an unusual word combination and the registration of the Domain Name followed the Complainant’s earliest trade mark application in 1998 by only a few months.” Lamentably,
[o]ne would have thought that some very basic online investigation ought to have provided some supporting evidence for the Complainant’s contentions.
The result, of course, could have been different if the Complainant had listened to the Center. The relevant portion of the correspondence reads as follows:
Dear Sir,
Reference is made to the Complaint filed by you regarding the domain name <forgeworld.com> under the Uniform Domain Name Dispute Resolution Policy (UDRP).
*** The Complaint filed does not appear to make the assertions required under the UDRP, in particular in relation to the trademark criterium. Unless the Complaint is amended to include such assertions, the Center is not in a position to take action regarding the Complaint filed.With respect to the legal grounds, our Index of WIPO UDRP Panel Decisions is available at http://www.wipo.int/amc/en/domains/search/legalindex.jsp The WIPO Overview of WIPO Panel Views on Selected UDRP Questions can be consulted at http://www.wipo.int/amc/en/domains/search/overview/.
We also refer you to http://www.wipo.int/amc/en/domains/gtld/udrp/index.html where you can find the Uniform Domain Name Dispute Resolution Policy, Rules, and WIPO Supplemental Rules.
***Sincerely,
WIPO Arbitration and Mediation Center.
The first letter was followed by a second called a Complaint Deficiency Notification drawing the Complainant’s attention inter alia to the fact that “the Complaint does not describe the grounds on which it is made as required by the Rules, paragraph 3(b)(ix)”. It also highlighted the absence in the Complaint of any information on the Complainant’s trade marks. The Panel notes that the Complainant cured the latter defect, but it failed rectify the other deficiencies. Ergo, the “Complainant was in the Panel’s view given more than ample opportunity to file an appropriately detailed complaint, but failed to do so. In those circumstances it cannot be surprised at the result.”
December 11, 2008
Populating Web Pages; the “Not Me” Defense
The “Not Me” defense alleges that the respondent is not responsible for populating advertising on the web page to which the domain name resolves; that it was done by agreement with the registrar who controlled the content. Recent decisions building on earlier forays indicate a consensus on the issue of responsibility: “the fact that a third party is effectively operating the website on behalf of Respondent, and making payments to the Respondent on the basis of that use, does not insulate Respondent from the conduct of its authorized agent,” Park Place Entertainment Corporation v Anything.com Ltd., D2002-0530 (WIPO September 16, 2002) (<flamingo.com>). A defense based on the theory that the respondent is not responsible for web site content and should not be held accountable has been rejected by both WIPO and Nat. Arb. Forum panelists.
The principle is generally applied to large volume registrants, but it is equally applicable – the occasion warranting – for any respondent farming for PPC revenue. Responsibility was passingly discussed in yesterday’s Note and see for example Factory Mutual Insurance Company v. Valuable Web Names, D2008-1014 (WIPO August 19, 2008) <myrisk.com>); Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006). In Mobile Communication the Panel expected the respondent must show that
[1. It has 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.
The requirement is conjuntive; satisfying factor [2] is not enough. It therefore comes as a surprise to read decisions so obviously lacking in judicial reasoning and knowledge of domain name law that it is best to ignore them as an anomaly except for the fact that poorly reasoned as they are they nevertheless offer an occasion to make a point. The Panel in Enterprise Rent-A-Car Company v. Enterprise Group c/o Kadomtsev, Dmitry, FA0810001229429 (Nat. Arb. Forum December 9, 2008) rejected the Complainant's ¶4(a)(i) that <enterpriseholding.com> was identical or confusingly similar to ENTERPRISE, but extended his analysis into registration and use in bad faith as though to justify the decision. Even assuming that the Complainant did not meet the jurisdictional requirement, unfortunately the Panel based his decision of good faith on the following factual statements:
Complainant asserts that Respondent has used the website hosted under the disputed domain name to display pay-per-click advertisings from Complainant itself and Complainant’s competitors.
Respondent, however, has been able to prove that he was not responsible for the content of the website.The disputed domain name registration agreement allows the domain name Registrar, Network Solutions, Inc., to place an Under Construction Page displaying promotions and advertisements for, and links to, Network Solutions’ website ... third-party websites, third-party product and service offerings, and/or Internet search engines....
On such a thin and inadequate reed (my comment), the Panel “concludes that Respondent was not responsible for the website’s content and, therefore, can not be considered as having used the domain name in bad faith.” “Enterprise” is certainly a common word, but the advertising on the website included the Complainant itself and competitors; not used in its disctionary meaning. The net result of the Panel's reasoning were it to be applied generally would render the Policy toothless by enabling respondents to benefit from the complainant’s reputation until caught and then, as happened in Enterprise Rent-A-Car, be exonerated of bad faith by the Panel for “apologizing [and taking] the necessary steps to change the website’s content.” Such a finding is particularly gross where the parties are residents in the same country and the respondent exposed to a complainant's national advertising.
Parties have a right, as stated in an early case, Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001) (<lifemagazine.com>): the “majority believes potential users of the UDRP are entitled to some degree of predictability.” It explained that if “a principle enunciated in a decision is well-reasoned and repeatedly adopted by other panels, the majority believes that absent compelling reasons which require a determination otherwise, that the rule established should be respected.” Verdicts “should consist of more than, ‘It depends what panelist you draw’.” In Enterprise Rent-A-Car, the Provider did not select a scholar from its list of panelists.
December 10, 2008
Rethinking “Conventional Wisdom”
“There are circumstances” states the 3-Member Panel in Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI) D2008-1216 (WIPO November 10, 2008) “where an unwavering adherence to conventional wisdom may unduly and unnecessarily frustrate the fundamental purposes of the Policy.” This case exemplifies the pronounced shift – noted particularly in the last year or two – in thinking about the responsibility of registrants of “large swaths of domain names through the use of automated programs with no apparent attention paid in any particular case to whether the domain name being registered may be identical or confusingly similar to another’s trademark.” The Panel correctly notes that “this case require[s it] to traverse largely uncharted waters in resolving issues of bad faith registration and use under the third element of the Policy.” It is not the first to articulate the responsibility of such registrants, see Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006), but three-member Panela are a further endorsement of the principle laid down in the earlier cases that willful blindness of another's rights will not be tolerated.
The Complainant is the registered trademark owner of CHILLIBEANS; the Respondent contends that it is in the business of registering and farming common words. The Complainant's arbitrary use of the mark is different from the descriptive meaning; it markets sunglasses and related products. Although the Respondent claims not to have been aware of the Complainants’ rights in the mark, “there is no indication in the record that the Respondent explored the possibility of third-party rights in any way before registering the disputed domain name, notwithstanding the implicit requirement of paragraph 2 of the Policy.” Paragraph 2, of the Policy reads:
By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that ... (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose.... It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. (emphasis added).
The Respondent’s website was populated by an “advertising retrieval software seemingly incapable of distinguishing between different meanings attached to the domain name” which at some point introduced sunglasses. “[C]learly, as the record reflects, the domain name by the time of its registration by the Respondent had acquired a separate value related to a trademark in addition to its commonly understood or descriptive meaning, even if the Complainants’ mark did not at that time enjoy widespread recognition outside of Brazil.” These infringing advertising links were removed by the Respondent only after the Complaint had been filed, but the Respondent invited the Panel to inspect historical pages on <archive.org>.
It has been noted in earlier cases that domain owners have the ability through PHP scripting programs resident on their servers to limit what will be disclosed on the historical record. This led the Panel to observe that “upon visiting the Internet Archive at the Respondent’s urging, it was confronted with indications that the Respondent has possibly employed robot.txt, thus preventing the public generally, and this Panel, from reviewing the history of the use of the disputed domain name” and for this reason was unwilling to accept the Respondent’s claim that the appearance of “glasses” was “recent and brief.”
The rationale for the principle enunciated in Balglow Finance is to staunch what “today has become increasingly commonplace.” While it was appropriate at one time to apply conventional wisdom to what once might have been considered an unconventional use of a domain name it no longer is because applying conventional wisdom now “would in effect render paragraph 2 of the Policy a nullity.” See Should High Volume Registrants Be Held to a Higher Standard of Diligence? (LexisNexis Trademark Blog).
COMMENT
Erik Zilinek [ezilinek@namemedia.com] writes:
I, too, found the Balglow Finance decision interesting and, in particular, the statement by the Panel that,
***[a]lthough the Respondent does not so acknowledge, it is evident from the record that even a cursory search of the OHIM trademark database prior to the Respondent’s registration of the disputed domain name would have disclosed the existence of two Community trademark registrations for CHILLI BEANS. And a cursory search of the USPTO trademark database would have disclosed the existence of a pending application to register the CHILLI BEANS mark..
Although previous Panels have not routinely required large volume registrants to perform “exhaustive” (i.e., extraterritorial) searches for corresponding trademarks, the Panel here implicitly raises the ‘reverse knock-out search’ bar to where Respondents must not only search the OHIM database, but also that Respondents (or large volume registrants) are on constructive notice of pending USPTO trademark registrations.
That’s a pretty tough row to hoe.
December 9, 2008
Parodists take note! Not all panelists think alike on the subject and it brings up once again the luck of whom one draws. As a counterpoise to the decision on the domain name <hairywinston.com> (Note November 3rd) there is Union Square Partnership, Inc., Union Square Partnership District Management Association, Inc. v. unionsquarepartnership.com Private Registrant and unionsquarepartnership.org Private Registrant, D2008-1234 (WIPO October 22, 2008).
The Panel in Union Square notes that the question of “[w]hether a criticism site constitutes ‘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,’ Policy, paragraph 4(c)(iii), continues to divide panels.” He makes no bones about which side he comes down on. The tussle is exemplified in Joseph Dello Russo M.D. v. Michelle Guillaumi, D2006-1627 (WIPO April 27, 2007) in which the majority hews to View 1 with respect to <dellorusso.info> [abusive registration of domain name when it contains no indication of its being a criticism site] and the dissent to View 2. A summary of the Views are set forth in the WIPO Overview at Paragraph 2.4.
In Union Square the Respondent registered <unionsquarepartnership.com> for a website presumably devoted to parodying the Complainant, although the Panel disclaims ability to decide whether it is or not:
Given the limited nature of Policy proceedings this Panel is incapable of judging whether the site’s content is true parody, just as he is usually incapable in a criticism site case of determining whether the site’s content is libelous, obscene, or pornographic (as is often alleged in such cases).
But, in any event, whether it is “true parody” or not, the Panel’s view is that the “erstwhile parodist intentionally imitates the look and feel of the mark owner’s site and provides text apparently related to Complainant’s programs and content ... [and] the diverted Internet user’s confusion extends beyond initial interest.” He notes that “one of the reasons given by panels that deem criticism sites legitimate is the unlikelihood of confusion or the correction of any initial interest confusion immediately after reaching the criticism site.” In fact, in Harry Winston “the difference between the disputed domain name (‘hairywinston’ for a dog product boutique) and the complainant’s famous mark (‘harrywinston’ for jewelry) was part of the parody, and thus alerted Internet users at the outset that the site was not affiliated with the mark owner.”
Nevertheless, the Panel “adheres to his view that a critic may not consistently with the Policy appropriate her target’s mark verbatim and holds that its rationale applies with at least equal force to a parody (or claimed parody) ... [E]ven if proven to be parody under United States trademark law, [it] is not legitimate under paragraph 4(a)(ii) of the Policy.” As a coda, the Panel notes that this view – notably not shared by others – “abridges or stifles Respondent’s free speech rights not one whit. Respondent may criticize, complain, parody, or otherwise express her views about Complainant or anyone else, on the Internet or in any other medium she chooses – but not from Complainant’s soapbox, billboard, or broadcast frequency.”
December 8, 2008
Bad Faith, Measured From Date of Acquisition
A subsequent acquirer of a domain name is regarded as a new registrant and as such is answerable to a complainant from the date of his acquisition. No defense is available based on his predecessor’s good faith registration although he can inherit his predecessor’s bad faith use. Conversely, for in these matters there is a balance, a complainant's rights are measured either from the date a trademark registration issues or earlier if it can prove its acquired distinctiveness from prior use in commerce. Proof or lack of acquired distinctiveness can determine whether the complainant is an eligible “complainant.” The Respondent in News-Journal Corporation v. Amatzia Benartzi, D2008-1294 (WIPO October 16, 2008) acquired <mytopia.com> in the same time frame as Complainant’s alleged first use in commerce from a predecessor who purchased it many years prior to Complainant’s service mark registration of MYTOPIA CAFÉ on the principal register.
The question in such circumstances is “whether a registrant of a mark can use the relation back aspect of [15 U.S.C. § 1057 (constructive notice for priority)] ... to establish common law rights in the mark vis-à-vis a domain name whose registration and use predates the first use of the mark by some nine years, where the domain name at issue was transferred to Respondent after first use of the Complainant’s mark, but before the issuance of the registration.” The general rule is that“the transfer of a domain name to a third party amounts to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name,” HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007).
As applied to News-Journal the Panel's concern was whether the Complainant had the requisite trade mark rights to satisfy ¶4(a)(i) of the Policy and concluded that it did not because “at least where common law rights are relied upon, this would also entail showing that the domain name at issue was registered and in use prior to the establishment of those common law trademark rights.” The Complainant was unable to make the requisite showing.
Panelists have a choice of stopping analysis at this point or continuing it through bad faith, which some prefer even if the trademark right postdates the registration of the domain name. For those in the first camp, it is irrelevant that the domain name is in fact identical or confusingly similar to a complainant’s registered trademark because if the complainant is unable to prove that its right antedated the respondent’s registration of the domain name the jurisdictional failure makes it ineligible to mainain the proceedings. In News-Journal, however, the Panel cautious to assure that it was not stopping its analysis prematurely or that it not be thought that the Complainant had any chance of prevailing, added in the form of a coda – a conclusion actually foretold in his “factual background” – that “Complainant would in any event have failed under bad faith, as the Panel is not persuaded in the circumstances that Respondent acquire (or sought to acquire) the domain name with Complainant’s possible trademark rights specifically in mind.” The “factual background” reads:
The original registrant transferred the domain name at issue to respondent on January 24, 2008. This is two days after Complainant filed its trademark application and some seven months before the registration issued.... However, as the transaction was brokered through Escrow.com, the offer to purchase had to have been made prior to Complainant’s filing of its application for a service mark. Respondent paid in excess of USD 35,000 for the domain name at issue.
Also in News-Journal there was no evidence that the Respondent’s predecessor had used the domain name in bad faith – in fact it could not have done since the Complainant’s right had not yet come into existence during the predecessor's ownership – so that the totality of the evidence supported the Respondent’s assertion that is acquired the domain name “for use in conjunction with [its] gaming web site.”
December 5, 2008
UDRP vs. Nominet UK Dispute Resolution Policy
The decision in Mark Bowering v. Wholesale Supplement Group, D2008-1467 (WIPO November 21, 2008) (<monstersupplementstore.com>) highlights the complainant’s burden under the UDRP where the disputed domain name is composed of “industry specific generic words or terms.” The Complainant was also the Complainant in a Nominet DRS proceeding against the same Respondent (DRS 4823 December 2007) in which it was awarded transfer of <monstersupplementstore.co.uk>, thus the decisions read together also point to some differences in the ADR model as well as shared principles in the two jurisprudences. In