To this observer, the most significant decisions in 2009 disputes were those in which Panels lined up on opposite sides in construing paragraphs 4(b) and 4(b)(iv) of the Policy. Those arguing for retrospective bad faith construe the paragraphs in a matrix that includes the representation and warranty provision of the Registration Agreement, paragraph 2 of the Policy (which reiterates the representations and warranties) and Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The principal mover for the new construction explained his position in two cases City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D2009-0643 (WIPO July 3, 2009) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen eSolutions, D2009-0786 (WIPO August 19, 2009) (the “Octogen line of cases”). According to this construction, “A party can register or acquire a domain name in good faith, yet use the domain name in the future in such a way that the representations and warranties that the registrant made as of the time of registration are violated. If a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be retroactive bad faith registration.”

The Octogen line of cases has subsequently been endorsed by two or three other panelists, notably in Ville de Paris v. Salient Properties LLC, D2009-1279 (WIPO December 3, 2009) <wifiparis.com>). A three-member Panel in Denver Newspaper Agency v. Jobing.com LLC., FA0908001282148 (Nat. Arb. Forum October 16, 2009), resting its decision on Telstra and citing the Octogen line of cases, held that “registration and use” is used in the policy as a “unified concept.” The expression “unified concept” does not appear in Telstra. The Denver Panel could have exercised some judicial restraint because on the Denver record it was unnecessary to make such an exotic ruling.

The rejecters of this new construction, call it either “retrospective bad faith” or the “unified concept” focus their analysis on the language of paragraphs 4(a)(iii), 4(b) and 4(b)(iv) to demonstrate what was thought to be settled law that the complainant must allege and prove, separately, bad faith registration and bad faith use. The new construction disregards the difference between conjunctive to disjunctive; and by doing so aligns UDRP more closely with the Anticybersquatting Consumer Protection Act. Rejecter panelists simply do not buy this; or in the words of the Panel in Torus Insurance Holdings Limited v. Torus Computer Resources, D2009-1455 (WIPO January 10, 2010) it “does not seem ... to be an attractive answer.” It also is not an attractive answer to the Panel in Validas, LLC v. SMVS Consultancy Private Limited, D2009-1413 (WIPO January 20, 2010) who made it clear that if domain name law was to take a new direction it should rest on an amendment to the Policy. Validas will be discussed further in tomorrow’s Note.

Unquestionably, there are certain types of uses that are either so obvious or egregious that bad faith registration is concomitant. I mentioned two instances in Friday’s Note where respondents were obviously targeting the complainant's trademark, passing off for advertising and phishing. Telstra is justly “seminal” – the word used by the Denver Panel – in explicating another circumstance, where the respondent incorporates a famous trademark in a domain name and holds it passively. But, not all domain names withheld from active use violate a complainant's trademark rights. It depends on a number of factors. Denver did not present such a situation; the domain name was both active and competitive with the Complainant.

Central to the issue sought to be resolved in the Octogen line of cases is whether subsequent bad faith use of a domain name registered in good faith satisfies the high proof requirement for violation of paragraphs 4(a)(iii) and 4(b), particularly 4(b)(iv) of the Policy. Before Octogen, the settled law – as expressed by the Panel in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000) – was that it did not: “registration of a domain name that at conception did not breach Rule 4(a)(iii) but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii).”

February 8, 2010

Commencing a Proceeding in Violation of Certification

Complainants have to have rights in a trademark to maintain a UDRP proceeding and demonstrate the source of those rights, by registration, license or common law. They must also certify that there is merit to the claim pursuant to Rule 3(xiv) of the Rules of the Policy, which reads

Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.

At best the trademark right alleged in Zenni Optical, LLC. An Oregon LLC v. DNS Administrator / Cykon Technology Limited, D2009-1594 (WIPO January 29, 2010) was equivocal – there was some evidence of a license, but suspiciously dated – “the assertions in [the] Complaint were [not] warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” The Rule essentially expands on “the duty of candor by legal counsel incorporated in ABA Model Rules of Professional Conduct 3.3,” General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com, FA0602000651676 (Nat. Arb. Forum May 26, 2006. The Panel stated that

A party can be misleading either by making affirmatively false or incomplete statements, or by intentionally or negligently omitting material facts that would significantly change the interpretation of events by the tribunal or panel trying or arbitrating a case. All these rules have as their goal a fair and complete decision on disputed matters before the tribunal. This fair trial cannot be accomplished if a party does not follow the procedural rules in good faith, or presents information which is not complete nor accurate in its pleadings or briefs, or in the exhibits attached to pleadings.

There is a reciprocal rule for respondents at Rule 5(b)(xiii). Compare, Rule 11 of the Federal Rules of Civil Procedure.

On the issue of trademark rights in Zenni Optical, there “are obvious weaknesses.” As the Respondent pointed out and the Panel concurred “the license agreement is signed and dated in September 2002. At the same time, the agreement refers to the marks registered in 2008 and 2009. From this alone, it is self-evident that the agreement cannot, in fact, have been made in September 2002 but that, at the earliest, it must have been made after the registration of the second trademark in March 2009.” This was obviously an attempt to place the timing of the alleged right at or around the time of the registration of the domain name. It then supplemented its attempt by claiming that the mark was used in “‘experimental’ ways before the launch of the ‘www.zennioptical.com’ website and so ‘zenni’ was a searchable term.” The allegation lacks plausibility because nothing is defined and no evidence is submitted to support prior use in commerce.

The lesson, for surely there is one, is that there is no low lying fruit under the UDRP. Zenni Optical was represented by counsel who clearly was unaware of Rule 3(xiv) and evidently had no understanding of domain name jurisprudence. The Respondent requested and the Panel granted a reverse domain name hijacking ruling. “The Complainant should have known its case was fatally weak…. The significantly prior registration of the disputed domain name, in comparison to the Complainant’s trademark registrations, might have called for evidence of alternatively common law trademark rights. However, the Complainant provided no such argument or evidence.”

February 5, 2010

Passing Off, Pretending to be Complainant or Known by the Domain Name

Registrants have tried a number of ploys to avoid having the disputed domain name forfeited to the complainant, including passing themselves off as the complainant or pretending to be commonly known by the domain name. The Respondent in Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum January 13, 2003), for example, called itself “Neiman-Marcus.” The Panel in Alain-Martin Pierret d/b/a Bordeaux West v. Sierra Technology Group, LLC., FA 0505000472135 (Nat. Arb. Forum July 1, 2005) explained that “[m]ere ownership of a domain name is not sufficient to show that a respondent has been ‘commonly known by the domain name’; if it were, every domain name registrant automatically could claim protection under paragraph 4(c)(ii) of the Policy.”

The settled law is that “paragraph 4(c)(ii) requires evidence that Respondents had rights prior to and not merely following from the use of the Domain Names,” Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., D2004-0324 (WIPO June 18, 2004) (<etsworldwide.com>). Respondents contended that they adopted “ets” because it was the natural acronym of their trade name Educational Training Service. The Panel held that this contention “misses the point.” They may have been known prior to registration by their full name “Educational Training Service” but not by the acronym ETS which is a registered trademark of the Complainant.

This issue of passing off is revisited in National Westminster Bank PLC v. Nathaniel Westerly, FA0912001299106 (Nat. Arb. Forum February 2, 2010) (<natwest-inc.com>). A defaulting Mr. Westerly was caught “phishing” for personal information from the Complainant’s clients. Using the domain name for criminal purposes is tantamount to bad faith registration, Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) and Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004); both cases involved attempts to capture through fraud client information. In Capital One, the respondent was using the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients. That is, the inference from such use is that the registration was intended to target the Complainant by mimicking its trademark and composition of its landing page for the purpose of hoodwinking its clients.

February 4, 2010

Marshaling Evidence For and Against Exclusivity of Generic Terms

There is an interesting choreography between trademark holders and domain name registrants when the prize is a combination of two or three dictionary words both covet. The former must set out with specificity their historical presence in the market place – prove targeting – and the latter must emphasize the commonness of the words and their lack of knowledge of the trademark. Slickdeals, Inc. v. Chad Wright a/k/a WebQuest.com Inc., FA0910001289878 (Nat. Arb. Forum January 29, 2010) (<slickdeals.com>). The greater the geographic distance between the parties the less the respondent’s hurdle, and vice-versa. The dance is particularly intense when the trademark is registered in a national registry different from the location of the respondent and the complainant has no presence in the respondent’s market, Starmail Distributors Inc. v. Xedoc Holding SA aka domain admin, FA0911001296166 (January 27, 2010) or the trademark is unregistered and local, Trade Me Limited v. Vertical Axis Inc, D2009-0093 (WIPO April 7, 2009) (<trademe.com>).

Some arguments have nowhere to go, Alexis C. Le Hara v. Vertical Axis, Inc c/o Domain Administrator, FA0809001225832 (Nat. Arb. Forum November 26, 2008) (<sellersmarket.com>), citing Bag Boy LLC v. Chad Wright & WebQuest.com, Inc., FA 530334 (Nat. Arb. Forum September 15, 2005) (<bagboy.com>) stated:

Complainant seems to believe that only the owner of a registered trademark can use that mark within a domain name. This is of course not the case. Ownership of a trademark does not confer the exclusive right to all domain names containing the mark. And using a domain name for commercial gain is not, per se, a bad faith activity prohibited under the Policy.

The Respondent in Factory Mutual Insurance Company v. Valuable Web Names, D2008-1014 (WIPO August 19, 2008) is “my risk” (<myrisk.com>) 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).

The “primary rule in relation to domain name registrations is ‘first come, first served,’ to which the Policy provides a narrow exception,” Bradley D Mittman MD dba FRONTRUNNERS® v. Brendhan Hight, MDNH Inc., D2008-1946 (WIPO March 16, 2009) (<frontrunners.com>), that the registration is not for an illicit purpose. “The Policy was not intended to permit a party who elects to register ... a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.”

This brings us back to Slickdeals. When the music stops, the Complainant has the chair, for three reasons: first, the trademark has and had national exposure in the United States where both parties reside from prior to the registration of the domain name; second, the domain name is identical to the trademark; and third, the Respondent is using a domain name to offer links to third-party websites that offer services similar to those offered by the Complainant. It is not out of the question that <slickdeals.com> could have been used for the bona fide offering of goods or services, but the circumstantial evidence supports targeting.

February 3, 2010

Consolidation and Language of the Proceedings

The Policy authorizes either party to petition to consolidate “multiple disputes ... before ... the first Administrative Panel appointed to hear a pending dispute between the parties ... provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN” [Paragraph 4(f)]. The Complainant in Farouk Systems, Inc. v. QYM, D2009-1658 (WIPO January 19, 2010) commenced 11 separate cases; petition for consolidation granted. The procedure is the twin to a single case against multiple respondents who are shown to be alter egos of or controlled by a single domain name holder [Paragraph 3(c)].

In either case the Panel must find an existing relationship among the respondents, Deckers Outdoor Corporation v. Karen McDougall, Frances Kirwan, Richard Abbots, Nicola Hammill, Sadika Ekemen, Stephen Gould, Christina Papadaki, Felicity Poole, Wang Changgui and [redacted], FA0908001281082 (Nat. Arb. Forum November 30, 2009) and in the absence of an existing relationship will – as the Panel did in Deckers Outdoor – dismiss the complaint against unrelated parties.

The Panel in Farouk Systems granted the Complainant’s petition on proof that “the Respondents share the same identical address, telephone number, fax number and e-mail address ... notwithstanding the use of different initials in respect of the owner’s registration details for the disputed domain names.” The Respondent did not answer and there was no counter evidence to contradict the Complainant’s proof. There was also a similarity of design and details on each of the websites to which the domain names resolved.

A complementary issue in Farouk Systems involved the language of the proceedings. All of the disputed domain names were registered with a Chinese registrar. Ordinarily, the language of the proceedings is dictated by the language of the Registration Agreement, but the Panel is authorized “to determine otherwise, having regard to the circumstances of the administrative proceeding” [Rule 11(a) of the Rules of the Policy]. The Complainant adduced the following persuasive proof that the Respondent would not be prejudiced by the proceedings being conducted in English since it

– used English to “promote and sell its unauthorised and/or counterfeit products on the Websites;
– “advertises and accepts US dollars as the currency for payment;
– states in its “Conditions of Use” that “any activities or transactions occurring on the Websites will be resolved by arbitration in the State of Victoria, Australia”;

These expressions of sale and legal recourse indicate that the intended market for the goods offered on the website was English speakers. This “suggest[s] the likely possibility that the Respondent is conversant and proficient in the English.” In view of this “it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceedings.” And, prejudice not being foreseeable the Panel adopted English to review the record and write his decision.

February 2, 2010

Pay-Per-Click Websites and Legitimacy

“Something more than the operation of a landing or PPC page is required to show lack of bona fide use,” Starmail Distributors Inc. v. Xedoc Holding SA aka domain admin, FA0911001296166 (January 27, 2010). The “something more” balances the strength of the trademark with the content of the website. The higher the classification of the trademark the more proof required from the respondent to satisfy its 4(c)(i) defense. If the respondent populates its website with links or advertising consistent with the goods or services offered by the complainant the domain name is inferentially capturing Internet users looking for the complainant; therefore it has no right or legitimate interest in the disputed domain name and likely, although not conclusively, violates paragraph 4(b)(iv) of the Policy. However, if the respondent prevails on the second branch, the Panel looks no further; the complaint is denied. This was recently seen in Sears Brands, LLC v. Domain Asset Holdings, FA0912001298052 (Nat. Arb. Forum January 22, 2010) (<northernterritories.com>) and is also the result in Starmail.

Not unusual in cases that stop at the second branch is discussion of an element generally reserved for the third branch analysis, namely the respondent’s knowledge (or lack thereof) of the complainant or its trademark. Alternatively, Panels skip the second branch and incorporate their findings under the third branch, as in Leyton & Associés (SAS), Thésée (SAS), Leyton Consulting UK and Ireland Limited, Leyton Maroc, Leyton Belgium, Leyton UK Limited v. Drela Mateusz, Elephant Orchestra, D2009-1589 (WIPO January 20, 2010) (“In the light of the Panel’s finding below ... it is not necessary for the Panel in this regard either to come to a decision.”)

It is said that knowledge is “an essential part of the bad faith analysis,” Russell Frey d/b/a edHelper v. International Services Company SA c/o Administration Dom, FA0910001288396 (Nat. Arb. Forum December 8, 2009). In Starmail, the Panel performs the “knowledge” analysis in the second branch, making it unnecessary to separately consider bad faith, while the Panel in Leyton Consulting considered the issues of bad faith registration and use separately under paragraph 4(b) of the Policy. Eliding the second and third branches in the 4(c) analysis tends to blur the proof requirements, and even though it may make no difference to the outcome, the requirements should be treated separately.

The unusual situation in Starmail is that <starmail.com> was not available to the Complainant when it commenced its business and had to represent itself on the Internet with another, less desirable domain name. The original registrant abandoned the domain name in 2006 and it was immediately picked up by the current Respondent, a holding company located in Luxembourg. The Complainant has a registered trademark for STARMAIL in the U.S. and Canada; it has no trademark registrations in Europe. The “question for the Panel to decide ... is whether Respondent’s prior use [that is use before notice of the dispute] was bona fide.” The answer depends upon the Respondent’s knowledge of an existing trademark when it acquired the domain name. In this case “the record shows that the term ‘starmail’ is widely used as part of domain names and of trade names owned by numerous third parties.” The Complainant offered no proof that it conducted business in Europe and there was evidence that the Respondent could have known or in registering the domain name was targeting the Complainant.

February 1, 2010

Common Word Trademarks Defensible By What Respondent is Offering

Respondents registering common words that spell the name of a business or charitable entity state a good defense only if they use the domain names in the generic sense of the words and are not competitors. We saw this in Fashion Career Center, LLC v. Resume Pro Writers Guild c/o Michael Hunt and Mercado, FA0912001296574 (Nat. Arb. Forum January 20, 2010), RESUME PRO (registered trademark) and <resumeprowriters>, competitors and abusive registration; and, Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010), AUSTIN AREA BIRTHING CENTER (unregistered trademark) and <austinbirthcenter.com>, competitors but not abusive registration. While both domain names are confusingly similar to the Complainants’ trademarks the first incorporates the precise wording of the trademark, while the second is descriptive of the services offered by the Respondent.

In The Law Society v. S.H. INC, D2009-1520 (WIPO January 22, 2010) the Respondent registered <lawsociety.com>; the trademark registration is THE LAW SOCIETY. Taking advantage of the recognition that a complainant has created for its mark is not a bona fide offering of goods or services, but there has to be proof of targeting not simply an allegation, Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum May 25, 2004) (<target.org>, the links “relate to target practice, hunting, archery, and other sports equipment.”). Pay-per-click domain names are not prohibited under the Policy and can support a legitimate interest. But while good faith registration is not inconceivable no legitimate interest is established for a pay-per-click website offering links to information that an Internet user may expect to find on the complainant’s website. Such use violates paragraph 4(b)(iv) of the Policy and by inference was registered in bad faith.

The Respondent’s claim that it is only using generic terms – how can anyone in his right mind claim a monopoly on “law” and “society”? – is measured against the “critical question of whether the Respondent registered (and has been using) the domain name in order to profit from the claimed generic value of the expression, or whether its intention was to take advantage of the Complainant’s rights in the expression.” The Panel noted that the Respondent is “clearly not a law society.... Why else would an entity which is not a law society, and has no apparent connection with any law society, choose the disputed domain name” if it were not to attract Internet users looking for the Complainant’s website?

The decision in The Law Society also touches on an issue that respondents should pay attention to, namely that the Respondent “has elected not to provide information which was within its exclusive control, relating to the date and circumstances of its acquisition of the disputed domain name, and the circumstances in which the United Kingdom links came to be placed on the Respondent’s website.” In the absence of explanation “the Panel can only sensibly infer that the relevant intention must have been to create confusion with the Complainant’s mark, with a view to commercial gain (in the form of increased ‘pay-per-click’ or other advertising revenue).” While inferences in favor of a respondent can be drawn where there is evidence to support it, inferences against it will be drawn where it fails to make the necessary offering.

January 29, 2010

Higher Standard of Proof for Trademarks Composed of Surnames and Geographic Terms

Trademarks composed of a founder’s name, Bloomberg for example, that have significant market recognition internationally have a high level of protection regardless of the respondent’s residence, but if by coincidence the surname is also a geographic indicator the complainant’s proof of targeting – a sine qua non under the UDRP – must be concrete and persuasive. The Respondent in Leyton & Associés (SAS), Thésée (SAS), Leyton Consulting UK and Ireland Limited, Leyton Maroc, Leyton Belgium, Leyton UK Limited v. Drela Mateusz, Elephant Orchestra, D2009-1589 (WIPO January 20, 2010) registered <leyton.com>, the name of a place in the northern part of Greater London. The Complainant has offices in a number of countries but does not do business – or at least presented no evidence of business – in the Czech Republic, the Respondent’s residence.

Lack of evidence of targeting, of course, is a significant lacuna. In these circumstances, if there is to be benefit of the doubt it favors the respondent. “To sum up, there are no facts or compelling evidence in this proceeding indicating why the public should identify the term Leyton with the Complainant.” The Respondent alleged that he “acquired the domain name ... with the intention of building a website related to the Leyton area.” Though his intention is contemplated rather than actual – he presented no evidence of demonstrable preparations for a defense under paragraph 4(c)(i) – nevertheless it could not be said that the registration of the domain name was in bad faith. “It seems to this Panel at least as likely as not that the Respondent, who is doing online business in the United Kingdom, acquired the disputed domain name because of its generic meaning and not with a view to the Complainant’s possible rights, and in that sense, the benefit of the doubt on the present record must be afforded to the Respondent.”

The Panel in Leyton Consulting draws a distinction between domainers who register generic terms that are coincidentally used by third parties as trademarks and those who register terms that call into question the respondent’s good faith. The higher standard for domainers was introduced in Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006). The Panel proposed a test for the high volume registrants in the form of a set of questions. For registrants who regularly engage in the business of registering and reselling domain names, and/or using them to display advertising links, they must show that

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

However, being a “professional domainer does not automatically lead to the assumption that the disputed domain name was registered in bad faith ...; some evidence is required, and the standard tends to be somewhat higher in cases involving geographical identifiers and marks that are less distinctive.” It is true that in Mobile Communication the Respondent failed to explain its registration of <mobilcom.com>, but the principle is sound, that willful blindness to a third party’s rights in a distinctive trademark is evidence of bad faith. That is less pronounced with domain names composed of generic terms used by many businesses and monopolized by none. “After all, the registration of domain names because of their attraction as generic terms is a business model permitted under the Policy, and there is no general obligation under the Policy to conduct searches in order to find out whether a domain name might infringe third parties’ rights.”

January 28, 2010

Inattention to the Timing of Rights

Default in appearance is not an admission of any material facts under the UDRP, although letting the complainant make the record increases the likelihood that its facts will support its complaint. But even with that advantage there continue to be decisions that illustrate inattention by complainants to the timing of rights. The date of registration is significant in determining whether a respondent is guilty as charged. That a complainant has a trademark and the domain name is identical or confusingly similar to it does not by itself make a case for abusive registration. Standing is the simplest burden, yet in focusing on its own right a complainant can lose sight of the respondent’s right or legitimate interest in the disputed domain name. Jeremy Wiles v. Nadeem Qadir, FA0912001297673 (Nat. Arb. Forum January 25, 2010) is essentially a cookie cutter case but it is useful for instructional purposes.

It is not unusual for complainants of unregistered and later registered marks to locate their right prior to the domain name registration. Claiming a preexisting right, however, is only as good as the evidence that supports it. An owner of an unregistered mark has the heavy burden of marshaling evidence sufficient to prove that its mark was recognized by the consuming public as an indicator of its goods or services when the domain name was registered. This is equally true of registered marks that presently have great market penetration, but did not when the domain name was registered. Discussed in Note for January 22nd, eDreams, Inc. v. CK Ventures Inc., D2009-1508 (WIPO January 8, 2010).

Inattentiveness can be fatal to a claim. Except under unusual circumstances, later acquired trademark rights do not support a claim for relief. In Jeremy Wiles, the Complainant offered ample evidence of numerous clients and market activity sufficient to support its contention that its trademark CREATIVE LAB had acquired secondary meaning. However, it began its business four years after the Respondent registered the domain name and made no attempt to prove a prior existence. The Panel held that even “assuming that Complainant had enough evidence to support a finding that [it] had acquired common law rights in the CREATIVE LAB mark through a finding of secondary meaning, [its] rights would date back only as far as 2004.”

If a complainant is going to allege bad faith it must, first of all, place its trademark right prior to the respondent’s registration of the domain name and offer sufficient evidence that the domain name was registered with the trademark in mind. In Jeremy Wiles, the Complainant is in Florida and the Respondent in Bangladesh. Even if the Complainant had offered evidence to support an earlier common law trademark, geographic distance would not have supported actual knowledge. To leave a lacuna in the record, as did the Complainant in Jeremy Wiles, is tantamount to admitting that there is no evidence of bad faith registration and therefore a meritless case.

January 27, 2010

Spelling and Misspelling Variances to Trademarks

Varying the trademark in some minor way, or typosquatting as it is called generally involves misplacement or dropping of letters, adding or deleting the plural form, or inserting or removing dashes between words. But not all variances support a finding of bad faith even though the domain name may be confusingly similar to the complainant’s trademark and appear to the complainant to be a case of typosquatting. In Sears Brands, LLC v. Domain Asset Holdings, FA0912001298052 (Nat. Arb. Forum January 22, 2010) the minor variation substitutes for a “y” an “ies”, NORTHWEST TERRITORY and <northwestterritories.com>. Is this adventitious or infringing? It does not quite fit the typosquatting model because the variation spells out a recognizable location different from the trademark. Sears Brands’s trademark might at one time have been the title of a catalog advertising clothing and equipment for camping trips.

NORTHWEST TERRITORY is similar to other geographic trademarks associated with clothing in that it does not conjure any specific location. It could refer to anyplace and anywhere. In contrast, the domain name refers to a specific location: the “elements contained in the contentious domain name are common terms as they relate to a region of Canada whose official name is the ‘Northwest Territories’.”

Nevertheless, the domain name incorporates the trademark and is confusingly similar to it. Rights and legitimate interests and bad faith generally turn on either the timing of the registration or the active use of the website. Geographic domain names used as visitor websites are clear examples of legitimate interests when respondents actually use them in their generic sense. The Wonderful Copenhagen Foundation v. Nya Destination Stockholm Hotell & Teaterpaket AB, D2007-0296 (WIPO May 29, 2007) (<visit-copenhagen.com>). It can be less clear where the respondent uses the domain name as a link farm that allows Internet users to find goods or services similar to those offered by the complainant. “Complainant asserts that numerous links on Respondent’s website are directly related to goods associated to Complainant’s NORTHWEST TERRITORY Mark, as they relate to camping gears.” In “certain circumstances, such findings could greatly diminish Respondent’s claim of legitimate interests in a domain name, even in the presence of common terms.”

However, the respondent’s argument is strengthened where its website links are consistent with the domain name. The Respondent’s registration of <northwestterritories.com> could be abusive, unless absolved by the content of the website. There is no absolution where from the content it is clear that the domain name was chosen to piggyback on the complainant’s trademark. Greater Houston Convention & Visitors Bureau v. Jan Barta, FA0905001263850 (Nat. Arb. Forum June 29, 2009).

The Northwest Territories are a “vast area of wilderness where outdoor activities are a predominant feature.” The fact that there are links to camping equipment and related clothing is therefore not inconsistent with an Internet user’s expectations for the website. Consistency supports the respondent’s contention that it has a legitimate interest in the domain name and registered it in good faith; that is, that the variation is coincidental and not a case of typosquatting.

January 26, 2010

Predicate for Bad Faith, Competing Services Incorporating the Trademark

The Policy has built in protections for competitors whose Internet shingles bear a similarity to descriptive trademarks, but protection does not extend to competitors who incorporate the complainant's trademark. Many trademarks composed of common words while descriptive can also be distinctive. The Complainant in Fashion Career Center, LLC v. Resume Pro Writers Guild c/o Michael Hunt and Mercado, FA0912001296574 (Nat. Arb. Forum January 20, 2010) owns RESUME PRO. The disputed domain name is <resumeprowriters>. Where the dominant part of the domain name is the complainant’s trademark adding a generic term – here “writers” – does not make it distinctive. To “become distinctive as an indication of a single source [it must] not [be] simply viewed by the public as a description applicable to the goods or services from various sources,” Lincolns of Distinction Car Club, Inc. v. Joseph Detomaso, FA 538014 (Nat. Arb. Forum September 24, 2005).

The argument that “common and generic terms” cannot be found confusingly similar to a complainant’s trademark only applies to those cases in which the domain name may be similar to the trademark but not confusing, as for example Napoleon Hill Foundation v. pmweb, FA0907001275894 (Nat. Arb. Forum September 28, 2009) THINK AND GROW RICH and <flipandgrowrich.com>. “Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law,” David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007).

The Respondent in Fashion Career offered two other arguments. First, that offering resume writing services is a complete defense under paragraph 4(c)(i) of the Policy. However, the “problem with this argument is, of course, that the Disputed Domains are confusingly similar to Complainant’s Mark. As other Panels have repeatedly held, a respondent’s use of a disputed domain name to offer competing services on the resolving website is not a bona fide offering of goods or services” citing Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).

Respondent’s second argument points to its registration name. However, despite “the mere fact of its registration of resumeprowriters.com under the name RESUME PRO WRITERS GUILD, Respondent has failed to offer any evidence that it is commonly known by the Disputed Domains.” Paragraph 4(c)(ii) is construed to mean that the respondent was known by that name prior to the registration. “Tellingly, Respondent never even stated or claimed that it is or has been commonly known by that name. It offered no evidence of what the name RESUME PRO WRITERS GUILD is or represents.... If the Respondent were in fact using or were commonly known by this name ... records would be readily available, but no such evidence was offered.” Decisions are made upon a record; lack of evidence is fatal to the party with the burden of supporting its contention.

January 25, 2010

Descriptive Phrase, Confusing Similarity Between Trademark and Domain Name

Confusion appears twice in the Policy: “confusing similarity” in paragraph 4(a)(i) and “likelihood of confusion” in paragraph 4(b)(iv). A domain name may be similar and confusing from the standpoint of an ordinary observer, but that is only relevant for standing. However, the higher probability that there is a likelihood of confusion may never be reached because when the respondent is found to have a right or legitimate interest in the domain name it follows that it registered the domain name in good faith. This can come about because the trademark and domain name are both descriptive of the parties’ services. Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010) in which both parties are in the same business.

There is no prohibition against registering a domain name that describes the Respondent’s business, even if the similarity in identifying itself is confusing. This was seen also in Kim Laube & Company Inc. v. RareNames, WebReg, FA0910001291282 (Nat. Arb. Forum December 22, 2009) (<natureschoice.com> and <natures-choice.com>), despite NATURE’S CHOICE being a registered trademark. To “become distinctive as an indication of a single source [it must] not [be] simply viewed by the public as a description applicable to the goods or services from various sources,” Lincolns of Distinction Car Club, Inc. v. Joseph Detomaso, FA 538014 (Nat. Arb. Forum September 24, 2005).

The Complainant in Austin Area Birthing argued that it had an unregistered trademark in AUSTIN AREA BIRTHING CENTER and that the Respondent’s <austinbirthcenter.com> was piggybacking on its reputation. However, “[a]s the Respondent correctly asserts, the disputed domain names contain descriptive terms regarding its midwifery and birth center services in the Austin geographical area. These are perfectly legitimate business activities. Consequently, the Panel finds that the Respondent and the registrant of the second domain name are using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).” It is not uncommon that multiple purveyors of goods and services choose a descriptive phrase – generally not even registrable as a trademark – to represent themselves to the public.

However, the Policy was not intended to give to the first in the marketplace the power to prevent competitors from describing their services in language similar to the complainant’s trademark. “It must not be forgotten that domain name registration is basically a ‘first come, first served’ process and that the purpose of the Policy is not to adjudicate between parties who have some legitimate interest in using a particular domain name.” A frequently cited federal case, Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) holds that “[s]imilarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”

In Austin Area Birthing, the Respondent submitted sufficient evidence to prove that she had a meritorious defense under paragraph 4(c)(i) of the Policy. In so far as creating a full record, it is the obverse of the facts in Fashion Career Center, LLC v. Resume Pro Writers Guild c/o Michael Hunt and Mercado, FA0912001296574 (Nat. Arb. Forum January 20, 2010) which will be discussed in tomorrow’s Note.

January 22, 2010

Market Presence of Trademark at the Time of Domain Registration

Companies that are oaks today were acorns yesterday. A complainant’s market presence today can be a determining factor for a favorable finding on its prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. However, the same evidence is insufficient to prove respondent’s bad faith registration. eDreams, Inc. v. CK Ventures Inc., D2009-1508 (WIPO January 8, 2010). The respondent, on the other hand, focuses on continuity of good faith use of the disputed domain name. The future is only relevant to the extent that there is proof of “demonstrable preparations” and that relies on what the respondent has done not what it proposes to do. That is why in determining whether a respondent’s evidence is sufficient to rebut the prima facie evidence, “the Panel is entitled to prefer a specific allegation in the Complaint to a generalized denial in the response,” Id.

Paragraph 4(a)(iii) of the Policy operates from a different perspective. Now, the complainant must demonstrate that it was also an oak of yesterday. If it was merely an acorn it has a greater burden to prove that the respondent both had knowledge of its existence and that it registered the domain name with the complainant in mind. This is the principal teaching in eDreams. The Panel was unanimous in denying the complaint. The dissent found that there was no confusing similarity between EDREAMS and <edrams.com> and that the Respondent proved that it used the domain name for a bona fide offering of good or services. The majority focused attention on the issue of bad faith registration.

While there are certainly cases that hold that registering a domain name with “reckless disregard” of the existence of a trademark “even if the registrant did not have actual knowledge of the mark,” citing Grisoft, s.r.o. v. Original Web Ventures Inc., D2006-1381 (WIPO March 5, 2007) (however, a strong dissent that puts this proposition in perspective), “this inference can only be drawn where it is shown that the mark was widely used when the Domain Name was registered.” However, “[w]here the mark was not widely used at the date of the registration, it cannot be inferred that the registrant’s intended use of a corresponding domain name would give rise to a serious risk of confusion or diversion of Internet users through such links, and hence that the registration was effected with a reckless disregard for this risk.”

The Complainant in eDreams offered no evidence from which a conclusion could be drawn that EDREAMS was any more than an acorn when the Respondent registered <edrams.com>. “There is no evidence that the Complainant’s EDREAMS mark was sufficiently widely used when the Domain Name was registered in 2003, so that automatically generated links would relate to the field in which this mark was used and would divert Internet users to the Complainant’s competitors.”

One can see eDreams as a cautionary tale for complainants generally with a similar history. In order to prevail the trademark “would need to have a strong reputation at that date to outweigh the fact that the Domain Name is not identical to this mark and is identical to a term which is widely used [in the computer industry] to refer to a completely different product. Such evidence as there is, namely the web pages recorded in 2005 and exhibited by the Respondent, supports the view that the reputation of the Complainant’s mark was not strong enough to result in automatically generated links to the Complainant’s competitors when the Domain Name was registered.”

January 21, 2010

Trademark Infringement Outside Scope of the Policy

Just as with current use of trademarks existing in different classes, a trademark holder and a domain name registrant can co-exist in cyberspace using identical or confusingly similar terms. Whether the respondent in a UDRP proceeding is an infringer in a trademark sense is outside the scope of the Policy. The Panel is limited to determining only whether the respondent is guilty of abusive registration of the domain name. The distinction is explored in Advanced Reading Solutions LLC d/b/a Urok Learning Institute v. Vrvv Inc., D2009-1418 (WIPO January 4, 2010). Although the Complainant’s trademark is composed of an unusual combination of letters, “urok” – “you are okay” or “you rock” – it is its badge or symbol in the marketplace; on the Complainant’s trademark application it notes that the English translation of UROK is “charm.” The term is also incorporated into the two disputed domain names, <urok.com> and <urokapparel.com>. Unusual though “urok” is there is another holder listed on the USPTO database in Class 16.

The Respondent in Advanced Reading is a second generation owner. It acquired <urok.com> by purchase from a third party in 2004. It subsequently obtained registration of a stylized version of UROK on the USPTO Principal Register in 2005, but lost it after a successful cancellation proceeding as infringing on the Complainant’s trademark in Class 25 (Clothing). Nevertheless, the Respondent has been “sell[ing] worldwide, through its websites accessible through both of the disputed domain names, rock and roll T-shirts, hoodies, and bell-bottomed jeans which bears its UROK mark” since 2004 (a paragraph 4(c)(i) defense).

There is no issue that the dominant term in <urok.com> is identical to the Complainant’s trademark and that the addition of “apparel” is confusingly similar to it. The question is whether Respondent’s continuous use of the domain names registered prior to the Complainant acquiring registration but after its application for the trademark establishes a right or legitimate interest in the domain names. Although the Respondent was aware of the Complainant in 2005 through the cancellation proceedings, it “first received notice of the present dispute [concerning the registration of domain names] when it received a copy of the Complaint” in 2009. The WIPO Final Report (paragraph 172) and UDRP do not condemn innocent or good faith registration where the respondent can show “through business plans, correspondence, reports, or other forms of evidence, that it had a bona fide intention to use the name in good faith.” This concept is built into the UDRP at paragraph 4(c)(i). In Advanced Reading, the Respondent was one better than “a bona fide intention” to use the disputed domain name; it operated a verifiable business.

Unless there is evidence that at the time of registration a respondent has actual knowledge of the complainant’s trademark and registered the domain name to piggyback on its reputation it cannot be said to contravene the complainant's rights. Although not commented on in the decision, the Complainant’s trademark history includes notices from the USPTO of abandonment of application in 2003 and 2004 before reviving the application in 2005. The USPTO accepted the Statement of Use in 2006. If there is an open question on trademark infringement, however, “it is not the function of this Panel to comment on any such issue.”

January 20, 2010

Transfer Between Commonly Controlled and Related Persons

A transferee cannot argue that it is untainted by its transferor’s male fide conduct during its ownership and use of a disputed domain name. The rule is that a respondent’s good faith is measured from its own not its predecessor’s acquisition of the domain name. Unless the evidence demonstrates otherwise, a transferee inherits only its predecessor’s bad and not its good faith. This is true as much for unrelated transferees as those related to the original registrant. However, for transfers between commonly controlled persons the Panel must also consider proof of a legitimate business purpose in transferring the disputed domain name. Schweizerische Bundesbahnen SBB v. Gerrie Villon, D2009-1426 (WIPO January 11, 2010) (<sbb.com>). This defense only works for a respondent who clearly sets out and proves the history of the domain name and its continuing use in its business.

Whether related or not a successor respondent is not entitled to capitalize on a complainant’s reputation in the marketplace on the theory that an earlier respondent (perhaps itself in another guise) registered the domain name in good faith when or even if at the time of registration no such trademark existed. In ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., D2009-0785 (WIPO August 5, 2009), for example, the only conclusion that could be drawn from the evidence was that the original registrant transferred the domain name to an entity in which he had an interest for the purpose of taking advantage of the complainant’s trademark. Although there are instances in which respondents have been unfairly deprived of their domain names, as a general rule registrants whose rights accrue from an internal transfer made for a legitimate business purpose do not lose rights accrued by their related predecessors.

The Panel noted that “the Complainant’s only potentially plausible argument for establishing lack of rights or legitimate interests on the part of Respondent is that the formal identity of the registrant of the disputed domain name was changed in March 2008 from Small Black Box, Ltd. to Gerrie Villon.” The theory for this argument is that “when the formal identity of the registrant changed all rights and legitimate interests in the disputed domain name that might have accrued on behalf of the transferor were extinguished, and that Respondent should now be treated as a ‘disinterested’ registrant of the disputed domain name seeking to take unfair advantage of Complainant.” The theory is applicable to an ehotel type of case, but not to the factual circumstances in the Schweizerische Bundesbahnen record.

In Schweizerische Bundesbahnen the Panel drew a lesson from the ownership of trademarks. It held that “[b]usiness enterprises commonly assign and transfer trademarks among commonly controlled entities for a variety of reasons.” And when they do, “the assignees and transferees of those marks do not generally abandon prior rights and interests that have accrued in those marks.” There is no reason to treat domain names differently. “In the absence of some exceptional circumstance, there is no reason to conclude that transfers of domain names between commonly-controlled entities extinguishes pre-existing rights or legitimate interests in those domain names.”

January 19, 2010

Disturbing the Careful Balance Between Trademark Owners and Domain Name Registrants

The Panel in Torus Insurance Holdings Limited v. Torus Computer Resources, D2009-1455 (WIPO January 10, 2010) is the first panelist to offer a detailed critique of the “retrospective bad faith” line of cases first announced in City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D2009-0643 (WIPO July 3, 2009) (complaint denied) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009) (transfer granted). See previous Notes for January 6, 2010 and December 22, 2009: if “retroactive bad faith” were to take hold – if it is not a dead end – it represents an entirely new direction for evaluating abusive registration. It means that the respondent either sticks to its original purpose for registering the domain name or is called to account if changing content is seen to cross the line to infringing the complainant’s trademark rights. “The issue which those cases raise is one of considerable substantive importance, so the Panel believes it is appropriate for the Panel to explain those doubts in this decision, even if this case falls to be decided on grounds which do not call for the application of the Octogen approach.”

At the moment, “retroactive bad faith registration” is a construction in search of acolytes. Both the WIPO Final Report and ICANN insist that the complainant prove bad faith in the conjunctive. This is a different model than the Anticybersquatting Consumer Protection Act and Country Code Policies. The WIPO Final Report recommended that “the domain name has been registered and is used in bad faith” (Paragraph 171[1][iii]). The UDRP makes a subtle change. It inserts “being” between “is” and “used.” Bad faith use can be found if the domain name is being used in violation of the Policy at any time after registration, but bad faith registration is different; it is localized in time. It is an intentional act that takes place at a particular moment in past time. Given the “legislative” intent, “this Panel doubts that the framers of the Policy could have intended that proof of bad faith use of the kind described at paragraph 4(b)(iv) of the Policy should always be deemed sufficient proof, on its own, that the disputed domain name has also been registered (possibly many years earlier) in bad faith.” “It rather seems to this Panel that such evidence of bad faith use would need to be found to co-exist with bad faith intent regarding the act of registration in order to satisfy the requirement of paragraph 4(a)(iii) of the Policy.”

While “the [e]volution of panel thinking in response to new developments in the domain name system is no doubt something which should be encouraged” it must be anchored to a persuasive interpretation of the Policy. The point of disagreement in “retrospective bad faith registration” is that it transforms that which was legitimate “when it occurred” to being a breach of the respondent’s warranty, thereby justifying a finding of male fide registration regardless whether it was bona fide at the time of registration. “If that registrant, some years later, decides to put the domain name to an additional use which falls within paragraph 4(b)(iv) of the Policy, the Octogen and Ville de Paris line of cases would appear to require a finding of bad faith registration, in circumstances where the domain name was manifestly not registered in bad faith.” To the Torus Insurance Panel, this “does not seem ... to be an attractive answer.”

January 15, 2010

Distributor Rights, Registering Variants of Complainant’s Trademarks

A distributor’s right or legitimate interest in a domain name depends upon the circumstances under which it acquired the domain name. In a number of early cases the complainant’s distributor agreement was silent on the issue of domain names. It makes it difficult to find “a violation of the Policy when there is no specific prohibition in a dealer’s registration of domain names incorporating the mark of the products it is allowed to sell,” Hexagon Metrology AB, and Hexagon Metrology, Inc. v. The Morgan Company / H.Morgan, D2009-1319 (WIPO January 6, 2010) self-citing Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, D2002-0936 (WIPO December 16, 2002). In Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, D2004-0426 (WIPO August 5, 2004) the Panel found that the “evidence shows that when Respondent registered the domain names and began initial use, there was no contractual prohibition on Respondent’s conduct.... That fact has not been contradicted by Complainant. Thus, there is no violation of a contract or published guidelines to support a finding of bad faith [registration].”

Either by silence or express authorization a respondent has sufficient interest in the domain name to avoid its forfeiture to the complainant. Urbani Tartufi s.n.c. v. Urbani U.S.A., D2003-0090 (WIPO April 7, 2003) (<urbani.com>) (domain name registered “with the evidence consent of Complainant at a time when Complainant and Respondent were in a business relationship.”) This can be so even after the formal termination of the agreement. Ivanko Barbell Company v. Syclone Corporation c/o Adam Auerbach, FA0805001191122 (Nat. Arb. Forum July 22, 2008) (<ivanko.com).

The facts in the earlier cases, however, are distinguishable from Hexagon Metrology in that the Respondent’s contract with Brown & Sharpe expressly restricted it from representing himself as ‘the Brown & Sharpe Distributor.’ Contrary to the Respondent's contention

[t]his does not ‘explicitly’ imply that he could register various forms of the company name as his own domain name. Quite the contrary. It implies that unauthorized of the company name or references to the relationship are not permitted.

Other facts both corroborate this reading of the parties’ agreement in Brown & Sharpe and establish the Respondent's bad faith registration and use. These include registering misspelled domain names that refer to Complainant and in one instance using a misspelled domain name – <brownandsharp.com>, omitting the ‘e’ – to ‘disrupt’ the Complainant by misleading Internet users that the Complainant’s website was ‘Down for Maintenance.’ “Internet users who mistakenly omit the ‘e’ while in search of Complainant’s site are likely to be hindered or deterred from doing business online with Complainant. We can find no good faith justification for this false, misleading and potentially disruptive statement.” Respondent's attempt at justification which includes an argument for laches is so much mumbo jumbo.

January 14, 2010

Not All Confusion is Actionable

A trademark holder’s rights are prospective; they may reach back on proof of trademark use in the marketplace and consumer recognition predating its registration; but otherwise prior use of an identical or confusingly similar term by another as a domain name or identifier of its goods or services belongs to the person who got there first. The Complainant in Park Hotel Leipzig Theo Gerlach OHG v. Niki Chelu, D2009-1559 (WIPO January 10, 2010) stated that it had opened a “new steak restaurant [to be known as the ‘meatery’] in one of [its] several hotels... and plans to extend the steak restaurant concept to other hotels within the chain.” The only problem is that the Respondent registered <meatery.com> for its business years earlier than the Complainant’s German trademark registration. Nevertheless, the Complainant “wishes to use the disputed domain name ... in parallel with its <meatery.de> domain name so as to avoid confusing its guests.”

However, “wishing” to have a domain name is not a persuasive argument under UDRP. Neither is a respondent’s rejection of overtures to purchase the domain name persuasive. The Respondent in Park Hotel (a U.S. resident) “was never and is not [presently] interested in selling the disputed domain name ... or any of his other domain names.” It also is not persuasive for forfeiture that a domain name was inactive until shortly before the complainant filed its complaint and when it became it active it was redirected to another website. What is true for a mark higher on the classification scale is not true for descriptive words and phrases. If a respondent has rights or legitimate interests in the domain name it is irrelevant how it uses it. Neither is it persuasive that “the disputed domain name <meatery.com> is identical with the Complainant’s MEATERY trademark .. [and] likely to confuse the Complainant’s international guests.” Most likely it will be confusing! But when the harmful consequence is self-created it will not be actionable.

Having exhausted its armamentarium, the Complainant throws in an allegation of inference, namely that it believed that “the Respondent is holding onto the domain name because he wants to earn money by selling it for a higher price when the Complainant's EATERY trademark is successfully established.” See yesterday’s Note, distinction between allegations of fact and inference. The only evidence that gave the Panel pause was the redirection of the domain name to another website offering greenhouses for sale: “however, it is not necessary for this Panel to determine these issues as the Complainant has in any event failed to establish the third and final element of the test.”

The Respondent’s observation about the Complainant registering an English word for its trademark and restaurant that it failed to perform due diligence is apt because it spotlights the certification requirement that it have a meritorious claim (Rule 3[xiv] of the Rules of the Policy). Ordinarily, it is the respondent who must answer to its representation and warranty. Here, the Complainant clearly did not “check[] if the name is already in use.” The Respondent also notes that a “further search on Google will easily show that the name ‘meatery’ has been created by others many years ago and is in existence for very many years.” The Respondent evidently did not request and the Panel did not make a finding of reverse domain name hijacking.

January 13, 2010

Inferring from Circumstantial Evidence

Rule 14(b) of the Policy provides that if a party does not answer the complaint or comply with any request from the Panel “the Panel shall draw such inferences ... as it considers appropriate.” The Panel’s decision in MBS Consulting SPA v. mbsconsul inc. / web master, D2009-1505 (WIPO December 23, 2009) illustrates what is appropriate. “There is no direct evidence that the Respondent knew of the Complainant or its MBS CONSULTING trademark, or registered the disputed domain name for the purpose of selling it for a profit. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.”

The following are the undisputed facts in MBS Consulting:

(a) the Complainant’s MBS CONSULTING trademark is specific to the Complainant in connection with its consulting services business; (b) the disputed domain name was registered almost three years after the Complainant began using its MBS CONSULTING trademark on the Internet and otherwise; (c) the Respondent used the disputed domain name for a single page website that stated, in relevant part, as follows: ‘This domain is for sale - USD1890 - (This price is strictly non negotiable)’; and (d) there is no apparent connection or relationship between the disputed domain name and the Respondent or its business or any other justification for the Respondent’s registration and use of the disputed domain name.

It can be inferred from these facts that the Respondent 1) had actual knowledge of the Complainant and its trademark – “The fact that the disputed domain name was registered before the Complainant registered its MBS CONSULTING trademark does not assist the Respondent, because the Complainant was using its MBS CONSULTING trademark on the Internet and otherwise for almost three years before the domain name was registered”; and 2) acquired the domain name to sell it to the Complainant – although the Respondent’s offer “to sell the disputed domain name is not directed specifically to the Complainant or its competitors it is identical to the Complainant’s MBS CONSULTING trademark and there is no evidence that the disputed domain name would be of interest to anyone other than the Complainant or its competitors.”

These inferences are reinforced in MBS Consulting by “the Respondent’s failure to provide any explanation or rationale for its registration and use of the disputed domain name.” Are the inferences “appropriate”? A distinction is drawn between “allegations of fact” and “allegations of inference.” An allegation of fact asserts the existence or non-existence of an act or circumstance, for example that the complainant did not grant respondent permission to register and use the disputed domain name. If a fact is not denied it is deemed admitted and absent evidence to the contrary is conclusive on the issue for which it is proffered.

Rule 14(b) has been construed to mean that allegations of fact unopposed that are reasonable, that is, more probable, may be accepted as true. When the burden shifts and the respondent fails to respond, either because it has not answered or offers no explanation if it has, the Panel will assume that “the evidence would not have been favorable to respondent.,” Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, D2000-0004 (WIPO February 16, 2000).

January 12, 2010

Respondent’s Burden of Production

Paragraph 4(a)(ii) of the Policy is the fulcrum test for both parties. If the respondent demonstrates that it has a right or legitimate interest in the domain name it concludes the proceedings regardless of the complainant’s trademark rights. But, to demonstrate a right or legitimate interest the respondent must either come forward with concrete evidence or the record is insufficient to establish the complainant’s prima facie case. Student Price Card Ltd. v. Victor Trasoff, FA0911001292958 (Nat. Arb. Forum December 23, 2009) (<spccard.com>), citing a string of cases from UDRPs first year of operation. The shifting the burden approach entered the UDRP vocabulary tentatively in April 2000 in two cases by the same panelist [EAuto, Inc. v. Available-Domain-Names.com, d/b/a Intellectual-Assets.com, Inc., D2000-0120 (WIPO April 13, 2000) and EAuto, L.L.C. v. EAuto Parts, D2000-0096 (WIPO April 9, 2000)]. It took several more months to solidify as a rule in the decision process [D2000-0252, 0270, 0374, 0624]. A complainant is not expected to prove a negative proposition – facts that are “uniquely within the Respondent’s knowledge and control,” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000). Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden shifts to the respondent to produce rebuttal evidence.

At its simplest a prima facie case requires the complainant to establish that in using the domain name the respondent is not making a bona fide offering of goods or services [paragraph 4(c)(ii)], is not commonly known by the domain name [paragraph 4(c)(ii)] and is not making a legitimate noncommercial or fair use of the domain name or otherwise justified in using the domain name on free speech principles [paragraph 4(c)(iii)]. If the respondent defaults in appearance the record is limited to the complainant’s submission, although it may be enlarged by an investigation undertaken by the Panel as was the case in General Electric Company v. Estephens Productions, D2009-1438 (WIPO December 17, 2009).

In Student Price Card as in many other UDRP cases the Respondent failed to answer the complaint. Even if it could be argued that each part of the domain name is generic or descriptive, the combination of “spc” and “card” is specific to the Complainant. In cases in which the complainant loses against an absent respondent the trademark or the combination of words are simply too common to charge the respondent with knowledge or if it did that it had the complainant in mind. Dependable Staffing Services, LLC v. Ramesh Prasad, D2009-1206 (WIPO November 12, 2009) (<dependablestaffingagency.com> and <dependablestaffingagency.net>).

The paragraph 4(b) examples of bad faith refer to both registration and use. Thus, if the respondent offers to sell the domain name to “anybody,” but in reality only the trademark holder can use it, it supports two conclusions, first that the respondent has no right or legitimate interest in it; and, second that it registered the domain name for a prohibited purpose. In Student Price Card, the Respondent’s website when active had contained hyperlinks to Complainant and Complainant’s competitors in the discount and credit card services industry, but was presently inactive. Passive holding is bad faith when by direct evidence or inferentially the trademark holder is the only party legally entitled to use the symbol, a legal principle laid down within the first month of UDRP’s initiation.

January 11, 2010

Trademark Consisting of or Incorporating a Geographic Indicator

The dissent in Loma Linda University Adventist Health Sciences Center, Loma Linda University and Loma Linda University Medical Center v. Development Services, StateVentures, LLC, D2009-1059 (WIPO December 18, 2009) agrees that geographic indicators do not qualify as a trademark right, but argues that “the name ‘Loma Linda’ should constitute an exception to the general rule.” Why this should be is not clearly stated, except that the Complainant “literally put Loma Linda ‘on the map.” So too did the Complainant in Atlantic Station, LLC v. Dargan Burns III, FA0903001250592 (Nat. Arb. Forum April 26, 2009) put Atlantic Station on the map, but that is no compelling reason to support an exception to the general rule.

There are many examples of geographic indicators as trademarks, but holders are not entitled to capture domain names corresponding to them if the domain name is being used in its literal sense rather than for its trademark value or the respondent has made demonstrable preparations to use the domain name in a non-infringing way. For example, Neusiedler Aktiengesellschaft v. Kulkarni, D2000-1769 (WIPO February 5, 2001) (<neusiedler.com>), a lake in Burgenland (eastern Austria) and northwestern Hungary,); or Superga Trademark, S.A. v. Gilberto, Publinord S.r.l., D2008-1890 (WIPO February 24, 2009) (<superga>), a well-known place name, “a hill overlooking the city of Turin (Torino) and the site of an 18th Century basilica and royal tombs.” Both Neusiedler Aktiengesellschaft and Superga Trademark are on the equivalent of the USPTO Principal Register. Neither controls or has a monopoly on the geographic place name.

A combination of a primarily geographically descriptive term and a generic or merely descriptive term for the type of services provided also does not make the grade. National Association of Competitive Soccer Clubs v. Bruce Binler, D2009-0957 (WIPO September 7, 2009). Complainant’s US CLUB SOCCER is registered on the Supplemental Register and has no superior right to shut down or take control of <usclubsoccer.net>.

Even a geographic indicator that has metamorphosed into a famous trademark with an International reputation in the automobile industry can be vulnerable if, as in Loma Linda there was reality to the services the respondent was either presently or demonstrably preparing to offer. “Hitachi” for example is a geographical region of Japan,. The Respondent in Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. Hilaire Shioura, DWS2004-0002 (WIPO July 23, 2004) (<hitachi.ws>) claimed he registered the domain name to promote the region but offered no evidence of “demonstrable preparations.” Kabushiki Kaisha prevails not because it is a famous mark but because the Respondent fails to prove it is in the business of delivering regional information. The trademark holder prevails where the domain name is either passively held or actively directs Internet users to web sites whose content demonstrates lack of rights or legitimate interests and contravenes one of the elements of paragraph 4(b) of the Policy.

If there is to be an exception to the general rule as the dissent insists in Loma Linda it cannot be based on a naked indicator; it would have to be a non-descriptive string in which the geographic indicator is incorporated. Such insistence is out of harmony both with trademark law and UDRP. The dissent in Loma Linda was the sole Panel in an earlier UDRP case, Loma Linda University Adventist Health Services Center, et al. v. JM XTrade, Inc., Joseph Martinez, D2009-0036 (WIPO December 18, 2009), in which he awarded the domain name to the Complainant, and for which he cites no case law authority for the proposition that a geographic place name is protected. Unfortunately, as UDRP is presently constituted the majority in a second case cannot correct an error of law made in a first.

January 8, 2010

Non-Conflicting Use of and Equal Rights in Generic Terms

The general rule is that parties who utilize generic terms as trademarks or service marks (dictionary words, common phrases) cannot use the UDRP to bar others from using them absent proof that the respondent has targeted the complainant or its trademark for commercial gain. This extends to exotic and foreign words of uncertain meaning to an English audience but understood by an ethnic one. A case in point is Vartkes V. Marjik d/b/a Zankou Chicken, Inc. v. ArmenianMatch.com, FA0911001292651 (Nat. Arb. Forum December 23, 2009). The disputed domain name, <zankou.com> is confusingly similar to the Complainant’s U.S. registered trademark ZANKOU CHICKEN – “removal of the term ‘chicken,’ does not distinguish the disputed domain name from the mark, because the distinctive portion ‘zankou’ remains”. However, the Respondent operates a business in a different Class of service. A search for “zankou” solo brings up in declining order the Complainant’s restaurant, a fictional work having a character by that name and the Respondent’s Armenian dating service.

The parties share an ethnic background; both are located in California. “Zankou” appears to be an Armenian word (of uncertain meaning; could not find on an Internet search). The disputed domain name was registered (1998) after the trademark’s alleged first use in commerce (1984), but before the trademark registration (2003). There is no question that the Respondent’s website is the portal to its business. “Complainant alleges that the <zankou.com> domain name redirects to a website that sells social networking services,” which is a “purpose wholly unrelated to Complainant’s use of its ZANKOU chicken mark.”

First use in commerce, however, is not proved by assertion alone. “Although the Complainant asserts that it has used the ZANKOU CHICKEN mark since 1984, without evidence in the record supporting these assertions, the Panel cannot find Complainant had rights prior to those established through the registration of its mark. ” Since evidence of use of the trademark prior to its registration on the Principal Register is entirely under the Complainant’s control, its failure to submit proof of 14 years of commercial presence in the Respondent’s marketplace is insufficient to overcome the facts of record, namely timing of the registration of the domain name and the use of the website.

Although not discussed in the decision, the Respondent’s continued use of a domain name (over 10 years) incorporating the trademark “before any notice to you of the dispute” supports the affirmative defense under paragraph 4(c)(i) of the Policy. The UDRP recognizes that two parties can equally be entitled to the use of a term, Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) (<autocar.com). Different classes under these circumstances cannot (as required under paragraph 4(b)(iv) of the Policy) create any “likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”

January 7, 2010

No Priority Over Respondent’s Legitimate Interests

Registering domain names composed of dictionary words improves the likelihood of good faith even if they conflict with existing trademarks, Kim Laube & Company Inc. v. RareNames, WebReg, FA0910001291282 (Nat. Arb. Forum December 22, 2009) (<natureschoice.com> and <natures-choice.com>). If there are any “buts” they depend on the timing of the registration, the proximity of the parties and the contents of the websites. Layby Services Australia Pty Ltd. v. Chrisco Hampers Australia Ltd., D2009-1066 (WIPO November 3, 2009) (<hamperking.com>). As a general rule the more ordinary the words, the heavier the Complainant's burden to prove bad faith.

NATURES CHOICE is not exactly one of a kind. There are approximately 80 registrations on the Principal Register that either include the term or are composed of the two words (with or without the possessive). The Complainant in Kim Laube is a successor to an earlier registrant who allowed its trademarks to lapse. Those earlier trademarks were composites that included prominent and distinctive device elements. This led the Panel to query “which trademark Complainant is claiming long and continuous use.” The Complainant only applied for registration for NATURES CHOICE after its purchase of the name rights which was many years after the registration of the domain name. There are, of course, documented examples of holders inadvertently losing their trademarks and later re-acquiring them, but in contest with a domain name registrant a declaration of first use in commerce is insufficient (by itself) for priority of right.

To prevail on an argument of “extensive use of the mark” with all that that implies requires more than an assertion. Where knowledge of a fact is within the control of the party who asserts it the failure to offer supportive evidence undermines its truth. According to the Complainant it and “its predecessor in interest have been using the trademark NATURE’S CHOICE continuously for more than 22 years, since at least as early as November 21, 1986.” Further, it “states that it acquired the trademark in 2007, at which time the estimated value of the goodwill in the mark was approximately US$500,000 ... [and that] since 1986, the mark has acquired significant consumer recognition in the field of animal and pet products. Tens of millions of dollars in NATURE’S CHOICE products have been sold since the mark was adopted.” However, there is “no documentary support for the claim that in 2007, the value of the goodwill in the trademark was an estimated $500,000. There is no proof of the ‘tens of millions of dollars’ of product sold. There are no other indicia that the trademark has ‘acquired significant consumer recognition’.”

The basic principle in UDRP jurisprudence is proof that the respondent has actual knowledge of the complainant’s rights and intended to take advantage of the complainant or its trademark’s reputation. Intent is generally inferable from the surrounding facts and circumstances. “[F]or that reason a complainant must be assiduous to prove its reputation in, and the public awareness of, its trademark even when it has registered trademark rights. That onus rises when the trademark consists of descriptive elements, as in this case” (emphasis added). That a holder would like to have domain names corresponding to its trademark is not grounds to wrest domain names from the respondent first to register. The Complainant in Kim Laube “owns the domain names <natureschoiceshop.com> and <natureschoiceshampoo.com> which, albeit that they might not be Complainant’s first choice, nonetheless fully reflect its trademark.”

January 6, 2010

Registration in Good Faith; Subsequent Change of Use = “Retroactive Bad Faith”

I am returning to this issue of “retroactive bad faith” because it is beginning to receive attention from a number of panelists. It represents a new construction of the Policy that conflates the “and” and “or” of paragraph 4(a)(iii) so that bad faith registration rests on the respondent’s present use of the domain name where use has changed over time to infringe the complainant’s rights. It was first announced in City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D2009-0643 (WIPO July 3, 2009) (complaint denied) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009) (transfer granted). Essentially, “retroactive bad faith” holds the respondent to its representation and warranty for any subsequent (not only to its initial) use of the domain name. A change of use to take advantage of the complainant or its trademark supports a finding of abusive registration.

The Panel in Fundação CPqD - Centro de Pesquisa e Desenvolvimento em Telecomunicações v. Gary Lam. D2009-1403 (WIPO November 27, 2009) acknowledged the new construction, but concluded that since the Complainant “has not put its case in that fashion and the facts of this case are such that the adoption of a more conventional approach leads to a decision in the Complainant’s favour ... [t]his is an argument and discussion to be left for another day.” Leaving the argument “for another day” was not the view of the Panel in Ville de Paris v. Salient Properties LLC, D2009-1279 (WIPO December 3, 2009) <wifiparis.com>).

The prevailing construction of the Policy – the one that respondents have come to expect – gives the original respondent a pass, but nails the transferee. This is illustrated in HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (<creditkeeper.com> ) and even more tellingly in Daimler AG v. William Wood, D2008-1712 (WIPO February 25, 2009) a re-filing of the complaint – tellingly because the Respondent’s predecessor, its partner in the Internet business claimed that the change of registration was not really a transfer but intra-partnership. However, the point in both Daimler (conventional approach) and Octogen is that the websites changed over time; they may have started in good faith, but they metamorphosed to infringing.

If “retroactive bad faith” takes hold – if it is not a dead end – it represents an entirely new direction for assessing abusive registration. It means that the respondent either sticks to its original purpose or is called to account. It is more the model of the Anticybersquatting Consumer Protection Act which is less forgiving than the UDRP. The question is, Why is the new construction being offered at this time? It is, I think, a response to respondents changing course adventitiously and believing that as original registrants they are protected from forfeiture. The new construction puts respondents on notice that this is no longer an acceptable model even if they were the first to register a term subsequently found to be identical or confusingly similar to a newly acquired trademark.

January 5, 2010

Credibility as a Factor in Inferring Intent

It is perfectly rational to register a domain name for its income potential. Pay-per-click revenue can be respectable, but it shades into illegitimacy when the motive to create revenue is coupled with intent to take advantage of another’s trademark. While “generation of revenue from domain name parking activities is not necessarily activity in bad faith” it is mala fides to use a domain name “in the hope and expectation that ... similarity [to the Complainant’s trademark] would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page,” Fundação CPqD - Centro de Pesquisa e Desenvolvimento em Telecomunicações v. Gary Lam. D2009-1403 (WIPO November 27, 2009).

The assessment in Fundação CPqD “[e]ssentially ... boils down to the question; is the Respondent using the Domain Name with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?” Respondents conventionally deny having the complainant in mind when they registered the domain name. In many instances geographic distance makes the denial plausible. EURO DATA GmbH & Co. KG v. Excel Signs, D2009-0465 (WIPO May 5, 2009) (Germany and U.S.A.). Denial not plausible in Fundação CPqD or Credit Industriel et Commercial S.A. v. Demand Domains, Inc., D2009-1184 (WIPO October 19, 2009) (same Panel in both cases) because the apparent random strings of letters – “cpqd” and “escic” – correspond to the Complainants’ trademarks. Whatever may be appearance, the strings are not random, but referential or symbolic.

The Panel relies on a number of facts to support a finding of bad faith registration that are worth looking at. The Respondents in both cases have a history of UDRP findings against them for abusive registration. History undermines a respondent’s credibility in denying knowledge of the Complainant’s rights unless it gives a fuller account as to how it selected the letters. In order to succeed on such an argument the respondent has to show that its selection reflects its normal practice (generic words, 4 or 5 letter strings) and explain how it decided on the specific sequence it registers. Does it, for example, use an algorithm to select the sequence of letters? “Perhaps the [d]omain [n]ame is merely one of an extensive set of registrations by the [r]espondent all of which comprise similar ‘meaningless’ combinations of five letters.” But if that is the case, it needs to be fleshed out with evidence. Silence is construed against the party asserting a right.

In Fundação CPqD the letters sequenced as they are “have no obvious meaning in any language and are not associated with any person or business other than the Complainant.” The “only credible reason why an Internet user would type the Domain Name into a browser would be that he or she was seeking information about the Complainant or its activities.” The confusion element under 4(b)(iv) of the Policy means misleading the Internet user into believing that the website is that of the trademark holder – sometimes referred to as “initial interest confusion.” “It does not matter that when the Internet user arrives at the pay per click site that it then becomes clear that the website is unconnected with the trade mark holder.” The damage is already done because the respondent has achieved its goal of enticing Internet users to the website.

January 4, 2010

Reproducing Distinctive Part of the Trademark, Omitting Article: A Form of Typosquatting

SAVE THE CHILDREN and <savechildren>. Omitting an article, in this case the “the” but retaining the verb and subject, Save the Children Federation, Inc. v. Steve Kerry, North West Enterprise,Inc, D2009-1404 (WIPO December 9, 2009) does not create a distinctive new combination and has some of the earmarks of typosquatting; that is, a de minimus variation of the prototype. It is not the “the” that makes the trademark distinctive which means that the domain name is sufficiently similar to the trademark to pass the jurisdictional test. The trademark in its common law form is decades old; registration on the Principal Register dates back to the 1980's. The parties are both resident in the U.S. While the Respondent’s default deprives the Panel of direct evidence of its intention its motivation is clear, not to aid children but itself by generating pay-per-click revenue. But, how is a finding of bad faith registration generated from these facts? In many cases, bad faith use informs intention in registering the domain name. Bad faith use is readable on the surface – it either is or is not; bad faith registration is subsurface. From this can be inferred that. There is no doubt that the combination “save children” could be differentiated in use from the trademark but that depends on the content of the website.

It is generally true that silences as much as submissions contain clues of intention. There are electronic footprints; who the respondent is and its history are either discoverable or deducible. In Save the Children the Respondent has a history of abusive registration that includes typosquatting which typically involves adding or omitting letters. In general, a respondent’s registration of a domain name that misspells a trademark, or is composed of added, substituted or transposed letters that varies the prototype, is not merely confusingly similar but implies knowledge and suggests targeting the trademark. De minimis changes “immediately raise[] suspicions and call[]or an explanation,” CareerBuilder, LLC v. Azra Kha, D2003-0493 (WIPO August 5, 2003) (<careeerbuilder.com>, an extra “e”).

The Save the Children Respondent left a larger than usual “silent record.” It was involved in a prior proceeding involving the same domain name, D2006-0388 (WIPO May 15, 2006). This suggests that the Complainant (or its counsel) has been less than vigorous in policing its trademarks. Nevertheless, as with the earlier proceeding, so in this one. Use of a “disputed domain name to direct Internet users to other charitable organizations is not a bona fide offering of services,” Id. The existence of an earlier proceeding – not mentioned incidentally in the later one – is evidence of actual knowledge of the Complainant’s trademark. (This is one of the rare instances – indeed, a solitary one – in which the same parties are arbitrating the same claim without reference to their earlier combat). In this later proceeding, the Panel apparently ignorant of the earlier proceeding, in essence fell back on constructive knowledge: “Respondent either knew, or should have known, of Complainant’s SAVE THE CHILDREN mark when it registered the Domain Name insofar as, well before Respondent registered the Domain Name, the Mark had been in use (since 1939), the Mark was well-known in the United States and abroad.”

Omitting the “the” – contracting the trademark to its essence by eliminating the article – but leaving the distinctive elements in place could only be defended if a domain name is used to attract visitors for the value of the combined dictionary words. It does not do this. It is this failure that ultimately establishes the Respondent’s mala fides.

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TOPICAL NOTES

Paragraph 4(a)(i) of the Policy

Paragraph 4(a)(i), the jurisdictional requirement for maintaining the proceedings, has two elements, both of which must be satisfied. The Paragraph calls for complainant to prove that respondent’s “domain name is [1] identical or confusingly similar to a trademark or service mark in which [2] the complainant has rights.” Surprisingly, there are complainants – and this despite the instructional materials from WIPO and Nat. Arb. Forum – who misunderstand the requirement to mean that they can capture a domain name identical or confusingly similar to their trademark recently acquired. The right that must be demonstrated is one that came into existence prior to the registration of the domain name.

2/6/09 – Proper Party Complainant (Real Party in Interest)
3/25/09 -- Dominant Word Elements of Design + Words Mark

Paragraph 4(a)(ii) of the Policy

Paragraph 4(a)(ii) requires the complainant to prove that the respondent lacks rights or legitimate interests in the disputed domain name. This is harder than the test for ¶4(a)(i) but the evidence is subjected to a two step analysis. The requirement – made necessary because the unavailability of discovery limits what can be learned about the respondent’s intention in choosing the domain name in issue – is pivotal for both complainant and respondent.

Step 1 of the two step analysis is a more probable than not showing. The complainant has to lay before the Panel sufficient evidence to support a prima facie case that the respondent has “no rights or legitimate interests in the domain name.” It does not require the complainant to offer proof absolute but is satisfied by circumstantial evidence plausibly indicating that the respondent lacks rights or legitimate interests in the domain name. Without respondent’s participation and even with it, the complainant must make do with whatever adventitious information he can glean from the Internet, deconstruct from the website to which the domain name resolves and/or deduce from a respondent’s UDRP statements and history.

In Step 2 the burden shifts to the respondent to produce evidence that it does have rights or legitimate interests by proving its defense under ¶4(c) and ¶4(c)(i-iii). “This ‘burden shifting’ is appropriate given that Paragraph 4(c) of the Policy, which is entitled ‘How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint,’ discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name,” Document Technologies, Inc. v. International Electronic Communications Inc., D2000-0270 (WIPO June 2, 2000).

The concept of the prima facie case is Panel made. It was invented within the first few months of the Policy's introduction to solve a particular problem, that without discovery there was no way for the complainant to prove conclusively respondent's intention or motivation for registering the disputed domain name; why it did what it did and what it knew about the complainant or its trademark was peculiarly within the control of the respondent.

The following Notes discuss the ¶4(a)(ii) analysis:

2/17/09 – Prima Facie Proof and Burden of Production

Paragraph 4(a)(iii)

The UDRP is unlike its country code younger siblings in that it requires the complainant to prove bad faith in the conjunctive rather than either/or registration or use. As a rule, ICANN Panels examine the evidence for bad faith use first; from which – in the absence of other evidence under the respondent’s control – it is possible to draw an inference of bad faith registration.

Paragraph 4(b)(i)

The UDRP lists four, non exclusive illustrations of bad faith. Paragraph 4(b) of the Policy does not presume to cover the universe of actionable conduct. It reads

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith...

Application of this evidentiary rule finds expression, for example, in the phrase “totality of circumstances.” Wendy Ida v. Farid Azam, FA0901001240643 (Nat. Arb. Forum February 27, 2009) (“Additional factors can also be used to support findings of bad faith beyond those enumerated under Policy ¶4(b),” citing Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

The first of the four examples of bad faith reads as follows:

[C]ircumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.

1/8/09 – Buying and Selling Domain Names
1/13/09 – Construing the Prohibition Against Selling, Renting or Otherwise Transferring the Domain Name Registration to the Complainant
3/27/09 -- Inadvertent Lapse of Domain Name Ownership

Paragraph 4(b)(ii) ("Pattern of Conduct")

The second of the four examples of bad faith [Paragraph 4(b)(ii) of the Policy] reads:

[Y]ou have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.

The example contains two elements for violation, both of which must be satisfied.

The phrase “corresponding domain name” refers to the Second Level Domain that allegedly “prevents the owner of the trademark from reflecting [its] mark.” It is not a defense that the complainant has other TLD’s available to it, provided however that the complainant also demonstrates that the respondent has “engaged in a pattern of such conduct.”

The second element contained in the phrase “engaged in a pattern of such conduct” is elucidated in the WIPO Overview at Paragraph 3.3. The consensus view is that the element may be satisfied by showing either “multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to known trademarks.” The consensus concludes with the proviso that “the registration of two domain names in the same case is not generally sufficient to show a pattern.”

For sufficiency in showing a pattern, “Panels have considered number of transfers, general frequency of cases commenced, procedures implemented to prevent inadvertent registration of others’ marks, among other things.” However, “[n]ever to this Panel’s knowledge [has there been] a case in which Respondent prevailed substantially on grounds argued here [simply registering large swaths of domain names – some further showing of conduct is required – or complainant initiated offers to buy domain names],” Salmi Oy v. PACWEBS, D2009-0040 (WIPO March 4, 2009).

Serial cybersquatters battle credibility – they may, after all, really and truly got there first; serial typosquatters have no credibility because varying a trademark is evidence of knowledge of it.

2/2/09 – Pattern as Evidence of Bad Faith

Paragraph 4(b)(iii) (“Disrupting Business of Competitor”)

The third of the four examples of bad faith [Paragraph 4(b)(iii) of the Policy] reads:

[Y]ou have registered the domain name primarily for the purpose of disrupting the business of a competitor.

Competitor is defined in Webster's Ninth Collegiate Dictionary as “one selling or buying goods or services in the same market as another.” “Purpose of disrupting” applies only registrants who are competitors, “not merely any person or entity with an interest oppositional to that of a mark holder,” Howard Jarvis Taxpayers Ass’n v. Paul McCauley, D2004-0014 (WIPO April 22, 2004). Nevertheless, there has been a handful of cases in which panelists have inappropriately extended the meaning to include competitors for Internet users.

It “is not necessary to show that the Complainant’s business was actually disrupted – only that the Respondent’s primary purpose is disruption,” RuggedCom, Inc. v. LANstore, Inc., D2005-0760 (WIPO November 15, 2005).

3/11/09 – Beating the Competition to the Registrar
4/30/09 – Avatar in the Form of Senior Executive

LexisNexis Trademark Blog:

10/3/08 Distinguishing Among Theories

Paragraph 4(b)(iv) (Intentionally Attempting Attract for Commercial Gain)

The fourth (nonexclusive) example of bad faith reads:

[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

In contrast to ¶4(b)(i-iii) written in the past tense (“you have registered”), ¶4(b)(iv) is written in the present tense (“by using”), but implicit is continuum of use. A respondent is not absolved of illegitimacy by removing infringing content after the commencement of the proceedings. Tenses were parsed by the Panel in Trade Me Limited v. Vertical Axis Inc, D2009-0093 (WIPO April 7, 2009) (yesterday’s Note and my gloss):

What makes paragraph ¶4(b) important in so many cases is that subparagraph ¶4(b)(iv) addresses only current use by a respondent yet, where non-bona fide current use is proven [¶4(c)(i)], that conduct is deemed to be evidence of bad faith use and bad faith registration. Absent evidence of good faith registration, this deemed evidence can be pivotal to many cases. Whether that outcome is the result of inelegant drafting or intentional given the objectives of the Policy is not for us to consider; it is without doubt the way the Policy has been interpreted and applied since its inception, and we embrace it.

4/142/09 – Forfeiting Rights and Legitimate Interests.
4/28/09 -- Well Known in its Market, but Confined Geographically.

LexisNexis Trademark Blog:

7/15/08 -- Parking for Revenue
10/3/08 -- Distinguishing Among Theories

Paragraph 4(c)(i) of the Policy

Paragraph 4(c)(i) is the first of three affirmative defenses. Bad faith is rebutted if “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 [was made] in connection with a bona fide offering of goods or services.”

1/6/09 – Bona Fide Offering of Goods or Services.
1/8/09 – Buying and Selling Domain Names.
2/5/09 – Accrual of Right or Legitimate Interest.
5/5/09 – Incorporating Complainant's Trademark Legitimately.

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Why do this?

UDRP decisions are only occasionally mentioned on blogs and webs, leaning heavily on summaries with little or no discussion of the jurisprudence. Useful perhaps, but not sufficiently so to educate parties to their burdens under the Policy. Above all else it is important for parties to understand that panelists take the law of evidence seriously. They examine the record as presented by the parties as would a judge in a civil action to grant or deny summary judgment and when they find it necessary will issue procedural orders compelling further discovery. Most helpful is to examine what panelists' make of the evidence – what they are looking for in the record – and their analysis of it in drawing inferences and reaching their conclusions. One can go to school on the best reasoned decisions and even learn from the lesser. Accordingly, I will devote <udrpcommentaries.com> to examining the principles of domain name law and the parties' evidentiary burdens as these matters are analyzed, reflected upon and discussed in the decisions.

The examination will take two forms: the first, Comments on Cases – a more extensive report from the front, as it were – and the second, Daily Notes of current or recent decisions briefly highlighting the central legal issues in the cases. I want to get away from simply summarizing decisions. Comments on Cases, which will be published from time to time by LexisNexis on its Trademark Blog site offer an opportunity to link current decisions with earlier ones to emphasize both the evolution of the jurisprudence and predicability in deciding like factual circumstances. Parties want to know that they will be dealt with fairly and in accordance with law. The fact is, the UDRP jurisprudence is not static; decisions are not based on rote and the best panelists are both clear headed and inventive. That the jurisprudence develops, acquires an ever greater subtlety of analysis, will I think, be demonstrated.

Some of the reports from the front are triggered by panelists discussing, engaging with their colleagues and sometimes arguing principles, citing earlier decisions and resolving issues in current cases, and other reports look back to cases in which the particular principles were first enunciated or elegantly expressed. There is, as every litigator has experienced, an ongoing dialogue in whatever forum he or she happens to be, not only between or among the parties, but also among judges or, in the UDRP lexicon, panelists speaking through their decisions and sometimes when there is a 3-Member Panel in these domain name proceedings, even, within the case itself through dissents. I hope to highlight this engagement and, in passing, discuss the principles for which consensus has formed and those other instances in which there is still division.

WHAT IS THE UNIFORM DOMAIN NAME RESOLUTION POLICY AND WHAT IS ITS PROVENANCE ?

The Uniform Domain Name Resolution Policy (“UDRP” or the “Policy”) is a special purpose alternative dispute resolution regime implemented by the Internet Corporation of Assigned Names and Numbers (“ICANN”) in October 1999. It is based on studies undertaken by experts under the auspices of the World Intellectual Property Organization (“WIPO”) which published a Final Report earlier in the same year addressing the collision of two systems, the trademark system and the domain name system. The experts found that there was an urgent need to protect “the orderly functioning of the market through the avoidance of confusion and deception” (WIPO Final Report at ¶11). The Final Report recommended a regime that would balance rights between trademark owners and registrants of domain names based on procedural and legal principles widely accepted around the world.

One complaint was filed in the implementation year and decided on default in January 2000. Since its inauguration, ICANN panelists from WIPO and the National Arbitration Forum have filed over 25,000 decisions. Each of the Providers maintains a databank of decisions, WIPO here and Nat. Arb. Forum here. WIPO more so than Nat. Arb. Forum has organized its databank in creative ways to facilitate research [see Index of WIPO UDRP Panel Decisions]. Nat. Arb. Forum is less research friendly, but publishes a monthly newsletter, here. WIPO publishes statistics for a number of categories of information; Nat. Arb. Forum does not.WIPO also publishes an Overview of WIPO Panel Views On Selected UDRP Questions. Interestingly, although WIPO disclaims precedent in favor of consensusin in its Overview, panelists routinely reinforce governing principles by citing authority from UDRP and decisions from cases decided in national courts and many of them use the term "precedent". For common law jurisdictions, precedent is an ancient procedure and the absence of historical citation can undermine the authoritativeness of a decision. Parties naturally want to know why they have won or lost. Others, and prospective parties, want to learn what it takes to prevail or avoid losing in such a proceeding.

Domain name law is a developing jurisprudence. To U.S. federal judges the UDRP process is "adjudication lite," which it may be. But it performs well the task of balancing disputants' rights to keep possession of domain names. The appointees who serve as experts on ICANN panels and drive the jurisprudence are drawn from an international bench of lawyers, scholars and retired jurists. Their decisions draw on well established legal principles the sources for which are set out in Rule 15(a) of the Policy: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” The final clause -- "and principles of law that it deems applicable" -- opens the jurisprudence to construction. So, for example, where “both the Complainants and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes ... the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States,” KeyCorp and City of Seattle v. i-designsolutions.com, Inc., D2005-0104 (WIPO April 14, 2005) citing Tribeca Film Center, Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO April 10, 2001) that cites EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., D2000-0047 (WIPO March 24, 2000). In the case of the statutory principle of constructive notice, if applied at all, it is limited to parties resident in the United States. The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, D2003-0305 (WIPO June 18, 2003) (“constructive knowledge” exists in principle under United States trademark law and is valid, especially in the situation when the Complainant and the Registrant of the disputed domain name are located in the United States).

The great benefit of the UDRP is its international reach. It operates across national borders without territorial restriction. If the complainant qualifies as a trademark owner in any jurisdiction in the world and has a marketing presence in the respondent's jurisdiction or proves that it or its mark was known to the respondent (actually or was at least aware of it) at the time it registered the domain name, then it is entitled to a remedy under the Policy. If there is jurisdiction -- proof that the complainant has a trade or service mark in which it claims a right [¶4(a)(i)] -- the proceeding will be decided efficiently, quickly and relatively inexpensively in the form of a declaratory order to the Registrar. If the complainant cannot prove that it has a trademark or that it or its trademark was known to the respondent at the time it registered the domain name, then the complaint must be denied. The theory underlying this conclusion is that a registrant cannot be said to have acted in bad faith when, at the time of registration, it had no knowledge or awareness of the complainant or its trademark, but the respondent's alleged lack of knowledge and unawareness cannot be "wilful blindness." Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum November 7, 2000). The defense must be creditworthy. Circumstances supporting lack of knowledge include classification of the mark (fanciful, arbitrary, suggestive, descriptive, and generic), geographic distance, and respondent’s business.

The UDRP model of bad faith is substantially different from the Anticybersquatting Consumer Protection Act and some country code ADR policies by requiring either/or proof rather than conjunctive bad faith.

THE ARCHITECTURE OF THE UDRP: A QUICK PRIMER

The architecture of the Policy could not be more simple. There are three requirements each having a number of elements that can be satisfied on an either-or basis. The analysis of the evidence is not entirely linear; it shifts back and forth. It starts with the complainant’s proof of its own right and disproof of any right or legitimate interest of the respondent; shifts to the respondent’s proof of defenses, if any; then, back to the complainant’s conjunctive proof of the respondent’s bad faith (registration + use).

1. – the domain name is A) either identical or confusingly similar to a trademark B) in which the complainant claims a right [¶4(a)(i)];

IF THE COMPLAINANT FAILS TO SATISFY THE JURISDICTIONAL REQUIREMENT OF EITHER ELEMENT, THE COMPLAINT MUST BE DISMISSED FOR LACK OF SUBJECT MATTER JURISDICTION.

2. – the respondent has either A) a right or B) a legitimate interest in the domain name [¶4(a)(ii)] ;

IF THE RESPONDENT REBUTS THE COMPLAINANT’S PRIMA FACIE CASE BY PROVING THAT IT DOES HAVE A RIGHT OR A LEGITIMATE INTEREST IN THE DOMAIN NAME, THE COMPLAINT MUST BE DISMISSED.

3. – the respondent rebuts complainant’s prima facie case by proving one or more of three affirmative defenses [¶4(c)(i-iii)]. The affirmative defenses are:

i. “[B]efore any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”

ii. “[Y]ou (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.”

iii. “[Y]ou are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

IF THE COMPLAINANT MAKES AN UNREBUTTED PRIMA FACIE SHOWING THAT THE RESPONDENT HAS NEITHER A RIGHT NOR A LEGITIMATE INTEREST, THE ANALYSIS PROCEEDS TO THE NEXT REQUIREMENTS.

4. – the complainant must prove that the respondent BOTH A) registered and B) is using the domain in bad faith [¶4(a)(iii)].

– to satisfy the bad faith requirement of ¶4(a)(iii), the complainant has to prove one or more of four elements [¶4(b)(i-iv)]. The elements of bad faith are:

i. “[C]ircumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”

ii. “[Y]ou have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.”

iii. “[Y]ou have registered the domain name primarily for the purpose of disrupting the business of a competitor.”

iv. “[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

IF THE COMPLAINANT IS ONLY ABLE TO PROVE USE IN BAD FAITH, THE COMPLAINT MUST BE DISMISSED.

IF THE COMPLAINANT SUCCEEDS ON ALL THREE REQUIREMENTS THE PANEL IS EMPOWERED TO ORDER THE DISPUTED DOMAIN NAME EITHER CANCELLED OR TRANSFERRED TO THE COMPLAINANT.

Basic Rules for Claiming and Defending Disputed Domain Names

The Uniform Domain Name Resolution Policy (“UDRP” or the “Policy”) is an arbitral procedure of limited scope. It is intended to provide an effective international enforcement mechanism to protect “the orderly functioning of the market through the avoidance of confusion and deception” (WIPO Final Report, Para. 11). The Policy does not operate as a trademark court. Nor does its “administrative dispute-resolution procedure ... extend to cases where a registered domain name is subject to a legitimate dispute.” ICANN’s Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999) at Sec. 4.1 c. Subject matter jurisdiction for relief under the Policy is limited to resolving claims of abusive registration of domain names. While there is some elasticity to the meaning of “abusive registration”, it is generally defined as cybersquatting or some other kind cyber-tort, such as phishing. There is a thin band of variability as to what the Policy's scope includes. Some panelists find breach of contract/fiduciary duty within the scope as long as the domain name issue predominates.

Complainants and putative respondents unfamiliar with the UDRP can find introductory explanations on both the WIPO and Nat. Arb. Forum websites. It is recommended that the parties review and understand their burdens of proof and persuasion before submitting their pleadings and supporting evidence. The submissions essentially initiate a review similar to a motion for summary judgment. A party's right to the disputed domain name is determined as a matter of law. Complaints that exceed subject matter jurisdiction authorized under the Policy or raise triable issues of fact must be dismissed. If either a complainant's right is uncertain or a respondent's bad faith registration or use cannot be established the relief must be denied and the complaint dismissed.

In order to prevail, the complainant must satisfy a tripartite, cumulative burden to have the domain name cancelled or transferred. The respondent's failure to submit an answer does not automatically result in its losing the domain name. The onus remains with the complainant, although it will have the advantage of any negative inferences against the respondent. If the complainant's proof tends to establish that the respondent has no right or legitimate interest in the domain name and has registered and is using it bad faith, then the respondent loses the domain name. The respondent prevails either if the complainant's proof of bad faith is insufficient or the respondent proves that it registered the domain name in good faith.

The complainant's first requirement is to establish that it has a present right to a trademark (¶4(a)(i)). Proof requirements differ for registered and unregistered marks. It is not sufficient simply to assert a claim. The second requirement is to prove that the respondent has no right or legitimate interest in the domain name (¶4(a)(ii)). Panels early recognized that the respondent controls proof of this element just as the complainant controls proof of its trademark. Therefor, they construed the Policy to impose a light burden on the complainant and to shift the burden of proof to the respondent to prove its right or legitimate interest. The third requirement is to prove that the respondent registered and is using the domain name in bad faith (¶4(a)(iii)). World Wrestling Federation Entertainment, Inc. v. Michael Bosman, D1999-0001 (WIPO January 31, 2000) (Default; Transferred)

In order to prevent loss of the domain name, the respondent may interpose any defenses from a non-exclusive safe-harbor list to prove its good faith right or legitimate interest in the disputed domain name. Paragraph 4(c) of the Policy provides:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of ¶4(a)(ii) [of the Policy]:

(i) 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 in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) 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.

If the respondent satisfies its burden by proving that it has a right or legitimate interest in the domain name, the complaint must be denied. If the respondent is unable to satisfy the safe harbor defenses, then the complainant must prove bad faith conduct from the following non-exclusive list, ¶¶4(b)(i -iv):

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith....

[Para. 4(b)(i)] [C]ircumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.

[Para. 4(b)(ii)] [Y]ou have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.

[Para. 4(b)(iii)] [Y]ou have registered the domain name primarily for the purpose of disrupting the business of a competitor.

[Para. 4(b)(iv)] [B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Decisions rest on well established legal procedures that are set out in Rule 15(a) of the Policy: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” It can be seen in more than a handful of cases that inferences are not drawn with scientific scrupulosity, although on the whole decisions are of high quality given time pressures to file them.

Illustrative Cases:
[Beyond Scope of Policy] The Thread.com, LLC v. Jeffrey S. Poploff, D2000-1470 (WIPO January 5, 2001) the Panel held that UDRP does not apply because attempting "to shoehorn 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... It cannot be used to litigate all disputes involving domain names."

[Burden Ignored] Landers Brothers Auto Group v. mga enterprises limited, FA0708001067455 (Nat. Arb. Forum October 15, 2007) ("Complainant does not make any assertions with respect to the three-pronged burden under the Policy.")

[Successfully defended] Carl Stahl Sava Industries, Inc. dba Decorcable Innovations, LLC v. Michael Vierra, D2007-1215 (WIPO October 8, 2007)("Respondent has shown with credible evidence that he or his company has been known by the phrase incoprorated in the disputed domain name for more than forty years.")

GO TO COMMENTS ON CASES THEMATIC INDEX

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