Archive

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

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.”

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.

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.

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.

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.

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.”

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.”

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.”

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.”

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

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 not properly grounded. The application of equity depends on bona fide use before notice.

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.

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.”

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).

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.

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.

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.”

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.”

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, D2009-1278 (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 be 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.

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.

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, its history and some informative information about its activities 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 perhaps 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.

Putting aside the question as to whether a particular corporate name is registrable as a trademark, or is simply a trade name not actionable under the UDRP, the Panel in Applied Technology Holdings, Inc. v. u-Logic, Dan Stirling, D2010-0042 (WIPO February 17, 2010) held that the Complainant (ipso facto) owned a common law trademark in APPLIED TECHNOLOGY HOLDINGS. While it is clear that the Respondent – a former officer and director of Complainant – breached his fiduciary duty to the Complainant and has no right or legitimate interest in the domain name, less clear is jurisdiction under the UDRP. There is no doubt that jurisdictional space has grown to include abusive practices, and this may be the Panel’s rationale in Applied Technology for holding the case and deciding in the Complainant’s favor.

Ordinarily, a domain name registered prior to the complainant acquiring a trademark right cannot logically have infringed a right nonexistent at the time of registration. There is an exception to this rule set forth in the WIPO Overview at paragraph 3.1, which applies to a situation in which an insider takes advantage of a corporate opportunity: “In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”

The Respondent in Applied Technology argued “that its paying for registration and renewal of the disputed domain names creates such a right.” However, to succeed on this argument a respondent has the burden of proof on the issue of consent. The issue was specifically addressed in Igor Lognikov v. Web Ventures, Nerdec, Inc. and Charles Edmunds, D2009-1684 (WIPO January 29, 2010) (“If save for consent, the facts suggest that a domainname had been registered and used in bad faith, then it is the respondent that bears the burden of proof that the Complainant consented to that activity.”) Secret acts do not support consent any more than they would acquiescence.

Indeed, the Respondent in Applied Technology “offer[ed] no proof of ... such authority, nor any proof that Complainant was even aware of its registration of them in Respondent’s rather than Complainant’s name at any time during his service as Complainant’s officer and director.” And, “[w]ithout express consent to the contrary, Mr. Sterling’s registration of the disputed domain names in anything other than his beneficiary’s name was thus made in bad faith.” Unauthorized acquisition of a corporate opportunity by an officer and director imposes on that person a constructive trust in favor of the corporation.

World Publications, LLC v. GMW Digital, LLC, D2009-1737 (WIPO February 8, 2010) is a brief decision. The complaint was denied on the grounds that the Respondent had registered the disputed domain names – <privatemeetingssummit.com> and <privatemeetingsummit> – prior to (in fact, many years earlier) than the Complainant’s acquisition of a trademark right. I am limiting this Note to the discussion in Footnote 1 of the decision which briefly discusses the status of the trademark, PRIVATE MEETINGS SUMMIT. The Panel reviewed the automated records of the PTO and found, first, that the Examining Attorney had initially rejected the application, and when it was approved upon proof of continuous use for 5 years, required the Complainant to disclaim “summit.” Under 15 U.S.C. § 1052(f) a mark that has been rejected as merely descriptive may be registered on the Principal Register upon proof of acquired distinctiveness, or secondary meaning.

The general rule is that “when descriptive or generic words are disclaimed in a registration on the Principal Register, the legal effect is that the registration does not evidence any trademark rights in the disclaimed words; rather, those words are protected only when used with the mark as a whole,” Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, D2008-1475 (WIPO December 11, 2008) (<religionnewsservice.com>). The Complainant disclaimed exclusive right to use of “news service” apart from the mark as shown. Its trademark RELIGION NEWS SERVICE is registered on the Supplemental Register and although the Complainant has been using the term for half a century was unable to persuade the Panel that it had acquired secondary meaning.

Even if there were not an issue of timing and the Complainant had not misstated the facts, World Publication’s PRIVATE MEETINGS SUMMIT suffers from the same disability as the other examples. It has no monopoly of a descriptive phrase, in this case used by the Respondent who demonstrated that it was in the same industry and provided similar services.

Paragraph 4(a)(i) of the Policy sets forth the elements for jurisdiction. A complainant has standing to maintain a UDRP proceeding only if 1) it has an existing trademark to which 2) the disputed domain name is identical or confusingly similar. If the complainant either has no trademark or if it does but the domain name is not identical or confusingly similar to it the complainant has no standing to complain. As paragraph 4(a)(i) has come to be construed the trademark in which the complainant has a right is one that exists at the time the complainant commences the proceeding.

Of the seven disputed domain names in Igor Lognikov v. Web Ventures, Nerdec, Inc. and Charles Edmunds, D2009-1684 (WIPO January 29, 2010) the Respondent consented to transfer three, typographical variations of the trademark, TEMPLATE MONSTER; it contested four others of which three incorporated one of the words of the trademark, “template”, as in <templatetuner.com>, <template tunning.com> and templatestunning.com>. The fourth domain name was confusingly similar to the trademark by adding an “s” to “monster”, <templatemonsters.com>. The Complainant (represented by counsel) submitted a confusing complaint by omitting material facts including trademark information that was only presented in the response.

Although the Complainant alleged that only the “template” domain names were abusive, it offered no proof – indeed “made no attempt to address the issue of confusing similarity” in so far as the non-monster domain names were concerned. The Panel noted

For both “monster” and non-monster domain names, instead of relying upon its registered trademarks the Complainant appeared (inexplicably) to rest its claim for transfer on common law trademarks in <templatemonster.com> and <templatetuning.com>. However, the Complainant “does not identify where he claims ‘common law’ rights and mark. He simply asserts that the marks hav.e been used ‘in worldwide’ commerce.” The question here is whether a complainant residing in a jurisdiction that does not recognize common law trademark can be said to have a trademark right. In Igor Lognikov the Complainant was accorded ‘the benefit of the doubt’ because he appears to be based in the United States. The decision puts a class of complainants on notice. Making a case for common law trademark based on national jurisdiction is not an issue to be overlooked as the same panelist noted in one of his earlier decisions, Antonio de Felipe v. Registerfly.com, D2005-0969 (WIPO December 19, 2005) (“These rights derive from national laws and do not exist divorced from such laws.”) The answer may lie, as it did in Antonio de Felipe, with the market in which the complainant operates.

Proving Common Law Trademark Rights by Showing Renown in a Particular Marketplace

However identical or confusingly similar a disputed domain name may be to a name used by the complainant if the name is not a trademark the dispute does not belong in a UDRP proceeding. Although it is not necessary for an alleged trademark to be registered, the complainant’s burden of proof rises in proportion to its classification. Generally, descriptive and suggestive words require more proof; arbitrary and fanciful less. To successfully assert common law or unregistered trademark rights, a complainant must show that its alleged mark has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. “Where a term is highly descriptive, even very extensive use may be insufficient to establish the requisite secondary meaning,” citing Canadian and U.S. case law, Jason Hachkowski v. Lucas Barnes, D2009-1800 (WIPO February 5, 2010) alleging common law trademark in AIDS-DRUGS-ONLINE.COM.

The proof problem in establishing unregistered rights is also illustrated in Patricia Kelley v. Innovation HQ, Inc., D2009-1723 (WIPO February 6, 2010). The Complainant alleged that she has an unregistered trademark in <papersnowflakes.com>; allegedly infringed by the Respondent’s registration of <papersnowflake.com>. As stated by the U.S. Supreme Court and echoed in many ICANN cases, a trademark acquires secondary meaning when, “in the minds of the public, [its] primary significance is to identify the source of the product rather than the product itself,” Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 851, n.11 (1982). The Patricia Kelley Panel noted that ordinarily one “might expect details of users, markets, testimonials, annual advertising figures, annual business turnover details, detailed website statistics and any awards or public reports or commentary in relation to the business or website.” Explanation long on unsupported statements and short on facts has never been a winning formula.

Moreover, “[m]ere evidence of use in relation to a website and a bare submission that there have been substantial website page views during that period is insufficient, even in relation to a not-for-profit business, in order to enable the Panel to infer the requisite degree of secondary meaning to support a claim of common law trade mark rights.” It is not even a matter of providing advertising expenses. For example, the Complainant in The College Network, Inc. v. IV-MEDIA, LLC, FA0811001234688 (Nat. Arb. Forum January 23, 2009) provided evidence of the dollar amount spent in advertising its products under THE COLLEGE NETWORK mark. However, it failed to offer “any evidence that the public at large has come to associate the mark with Complainant’s goods and services.” According to the 3-Member Panel “the focus of a secondary meaning inquiry should be on the public’s awareness of the mark, not just on a complainant’s sales or advertising data.” So, too in Patricia Kelley. While the Complainant alleged that “since 2000 … there has been 18,000,000 views of the website… [she provided no] other evidence of renown in any particular marketplace.”

Targeting as an Essential Element of Proof for Trademarks Composed of Generic and Descriptive Terms

Having a registered trademark buys standing but it is not sufficient to win a domain name if its composition is on the weaker end of the classification scale. The Panel noted in National Gardening Association, Inc. v. CK Ventures Inc., FA0911001294457 (Nat. Arb. Forum February 16, 2010) that “it seems probable that the USPTO only found the marks [containing the words GARDENING WITH KIDS] to be distinctive enough to be registrable because of the stylized manner in which they were presented as well as the additional embellishment of the sunflower device.” To prevail the complainant must also prove that the respondent had actual knowledge of its trademark and registered the domain name to take advantage of its reputation in the marketplace.

Timing is a critical factor in proving knowledge even with suggestive trademarks. Holders of generic and descriptive trademarks cannot rely on their registrations. That a later acquired trademark has no priority over an earlier registered domain name is a well established principle imbedded as a consensus view in the WIPO Overview at paragraph 1.4. In National Gardening, the record disclosed that when the disputed domain name was registered “Complainant’s earliest trademark was still pending and indeed was only advertised for opposition purposes some 3 weeks” after the registration of the domain name. “Admittedly [the application] was on file and [the trademark] had apparently been used since January of that year, but it seems difficult to attribute bad faith to Respondent when it could hardly have been aware of Complainant’s (only marginally) earlier rights.”

Even though the Respondent in National Gardening is using the domain name as an advertising portal and in that respect may lack any right or legitimate interest and even if the use of the domain name marginally directs Internet users to competitors of the Complainant it is not sufficient to prove abusive registration. The Panel cited Société des Produits Nestlé S.A. v. Pro Fiducia Treuhand AG, D2001-0916(WIPO October 12, 2001) for the proposition “that where a respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, then lack of bona fide use on its own (i.e. all the features set out in paragraph 4(b) of the Policy), is not sufficient to establish bad faith.” This proposition is less convincing when applied to a suggestive or fanciful trademark, TATRA, a.s. v. Tatra Ltd., Tatra folks PO, FA0911001296249 (Nat. Arb. Forum February 5, 2010), denying the complaint (over dissent). In National Gardening, there was no persuasive evidence that in registering the domain name the Respondent intended to piggyback on the reputation of Complainant’s trademark.

Respondents default in appearance in a high percentage of cases and in many of them the complainant prevails. However, a complainant is not entitled to relief simply because it has a trademark and a respondent does not suffer forfeit of the domain name because it defaults. This was illustrated most recently in General Electric Company v. Estephens Productions, D2009-1438 (WIPO December 17, 2009) (<geentertainment.com>) in which the Panel found that the Respondent was legitimately operating under the name of “Global Executives Entertainment,” a Georgia business registered under the name of G.E. Entertainment, LLC.

It is not cybersquatting to register a domain name identical or confusingly similar to a complainant’s trademark, as long as it is not acquired to take economic advantage of a trademark pre-existing the registration of the domain name. Nor is it bad faith to speculatively register domain names for presumed future value. A holder of a future acquired trademark, for example, has no legal right to an earlier registered corresponding domain name. This principle is copiously applied, most recently in CruiseShipCenters International Inc. v. Leonard Brody, FA0912001297509(Nat. Arb. Forum February 10, 2010) (<cruiseshipcenters.mobi>) in which the complainant provided no “arguments or additional supporting documentation regarding the date Complainant first established common law rights in the mark.”

To prevail a complainant must prove that the defaulting respondent has no right or legitimate interest [paragraph 4(a)(ii)] and that it registered and is using the domain name in bad faith [paragraph 4(a)(iii)]. In a small percentage of cases, as indicated in the General Electric and CruiseShip cases, the complainant is unable – in ignorance of the proof requirements – to marshal proof and the domain name stays with the respondent. In other, generally nondescript cases such as Philosophy Inc. v. 1-800-Therapist c/o Donald Hackett, FA0912001297666 (Nat. Arb. Forum February 2, 2010) Panels are authorized to draw inferences. Rule 14 of the Rules of the Policy reads:

Although default is not an admission of material facts, there are consequences. A respondent put to its proof cannot ignore allegations and evidence that it has no rights or legitimate interests in the disputed domain name. Rule 5(b) requires the respondent to “respond specifically to the statements and allegations contained in the complaint.” Failure to rebut allows the Panel to draw an adverse inference. The reasoning is that if there were evidence, the respondent would have presented it.

The settled rule is that the Panel “is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory,” Philosophy. The rule has been expressed in a variety of ways. Thus, if 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); again, allegations of fact unopposed that are reasonable, that is, more probable, may be accepted as true, Reuters Limited v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (“The Panel draws two inferences where the Respondent has failed to submit a response: (a) ‘the Respondent does not deny the facts which the Complainant asserts’ and (b) ‘the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts’). In Philosophy, the Respondent redirected the Internet user to his own domain name <1800therapist.com>). This constitutes bad faith under paragraph 4(b)(iv) of the Policy.

Tatra, a.s. has national trademark registrations for TATRA in the United States and the European Community and is also the owner of a number of other TATRA and TATRA-family trademark registrations around the word, including the International Trademark Registry. It does not appear to have a trademark in Russia, the Respondents’ home jurisdiction in TATRA, a.s. v. Tatra Ltd., Tatra folks PO, FA0911001296249 (Nat. Arb. Forum February 5, 2010), but it sells trucks in the Russia market. The majority were not persuaded that the Respondent was targeting the Complainant when it registered the domain name <tatra.com>. I call this a “benefit of the doubt” case; the expression “not persuaded” translates into a failure to preponderate on the evidence. However, that being said, there are a couple of unusual features about the case.

The subdivisions of paragraph 4(b) set forth four non-exclusive examples of bad faith registration and use. It has long been established that panelists may consider the “totality of the circumstances” – coined in Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) – when conducting a review of the evidence, citing among other cases Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO March 7, 2000), “[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [paragraph 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”

However, “totality of the circumstances” is generally applied against the respondent. In Tatra the rule is reversed and applied in favor of the respondent. That is, just as there are circumstances from which an inference can be drawn of bad faith registration, equally the same circumstances can be read in respondent’s favor. The domain name was registered in 2001 and held passively since that date; passive, at least, to the extent that the domain name has no active presence on the Internet. However, the respondent “uses” the domain name as an e-mail address, “contact@tatra.com” in connection with its business communications with its business partners.

As the dissent points out, there is substantial law on what is called “passive use” stemming from Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The “fact that the domain name was used in connection with an email address before any notice to Respondent of this dispute does not, at least in my opinion, necessarily support the majority's conclusion on the bad faith element.”

However, the majority cites precedent that holds that “[a]lthough it may not be easy to discern whether a domain name is being used for e-mail, FTP services, or simply as a host, such uses are legitimate,” Thrive Networks, Inc. v. Thrive Ventures, Inc., D2003-0534 (WIPO August 26, 2003). There is certainly precedent for emails, but respondents generally register generic terms and common names for their vanity services. Tetra is different, in that the name is identical to the trademark.

The second unusual feature is that evidence that is unpersuasive to prove a right or legitimate interest in the domain name is held to be sufficient to avoid a finding of bad faith. “Whereas [the assertion that the use of ‘contact.tatra.com’ is legitimate] is not persuasive with respect to the analysis under [the] second element of the policy ... it is at least some evidence in its favor with respect to the issue of bad faith, where the Complainant carries the burden.”

Yesterday’s Note discussed a dictionary word used misleadingly to confuse Internet users looking for the Complainant, but words can be used denotatively as well as connotatively. In ordinary usage, words often cross the boundary that separate them as a speaker weaves his or her sentences. In the dictionary, definitions are denotative. For example, defining the quality “virtue” or “vertu” is denotative. Trademarks on the other hand are connotative indicators; they add value to words by transforming the common into symbols of identity. Nokia’s VERTU is intended to suggest the quality attributed to one with “vertu” transformed to a cell phone. Geographic indicators are denotative in that they pinpoint location without having to cite latitude and longitude. Sometimes words are interchangeably denotative or connotative depending on the speaker’s intention. “Hayward” is a city in California; it is a surname; it is also the trademark for the Complainant in Hayward Industries, Inc. v. WebQuest.com, Inc., D2009-1493 (WIPO January 27, 2010).

The Respondent in Hayward alleged that it registered the domain name (as it has many others) for its geographic significance. It maintains a stable of domain names with geographic orientations. When domain names are appropriately used they qualify as bona fide offerings of services. It is with deviations from the denotative that respondents expose themselves. As with yesterday’s “vertu” so with today’s “Hayward.” Respondents gain credibility by showing their business plans for their geographic websites, 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) (<leyton.com>), but lose credibility by putting their websites to use in a non-denotative sense as in Hayward. Once the content of the website evidences a cross over to the connotative the registration of the domain name becomes suspect. “***PPC parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services,” Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008).

The trademark does not have to have wide currency. The question is whether it is targeted; whether the respondent is taking advantage of the connotative quality of the word or phrase. In Hayward, the proof is internal; evident from the content in that the website contained links to businesses competitive with the Complainant. This raised a question as to whether the Respondent violated paragraph 4(b)(iii) or 4(b)(iv) of the Policy. Commercial gain is fundamental to all the examples of bad faith although only explicitly expressed in 4(b)(iv). However, 4(b)(iii) requires proof that the respondent is a “competitor.” Paragraph 4(b)(iv) focuses on likelihood of confusion. A competitor “is a person or entity in competition with a complainant for the provision of goods or services, and not merely any person or entity with an interest oppositional to that of a mark holder,” Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001). In Hayward, the Panel was not convinced that Respondent is a “competitor” of Complainant.

Whether one is a competitor or not, at least ultimately, important, because the question is determined by the denotative vs. connotative divide. “[W]here ... the links are apparently to competitive websites, especially with no indication that the links are not sponsored by or affiliated with the relevant trademark owner, then such activity indicates bad faith under the Policy,” Wal-Mart Stores, Inc. v. Whois Privacy Inc., D2005-0850 (WIPO September 26, 2005). It is a contradiction in terms for a respondent to allege good faith – a denotative argument – and use the domain name for its connotative quality to direct Internet users to websites offering goods or services competitive with complainant.

The general rule is that where a respondent uses a parking service to populate its website with links that redirect Internet user to goods or services competitive with complainant it violates paragraph 4(b)(iv) of the Policy. The underlying principle is that a respondent cannot evade its representation and warranty under paragraph 2 of the Policy by denying responsibility for the content of its website. Even though the owner of a parked domain name may not control the content Ait is ultimately [the] respondent who is responsible for how its domain name is used, State Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum November 20, 2007).

This well trodden ground is discussed in Nokia Corporation v. Ara Guloglyan, D2009-1739 (WIPO February 4, 2010). It is persuasive for a respondent to argue that it contracted the content of the website to a third party. A case can be made in respondent’s favor for dictionary words where the domain name is used in its lexical meaning, but a finding of targeting is particularly difficult to overcome where the content of the website supports a likelihood of confusion [paragraph 4(b)(iv) of the Policy]. The Complainant's trademark in Nokia is VERTU, spelled in English as “virtue” but “vertu” can also be found in the dictionary as a variant. It has a specialized meaning in literary and artistic studies, denoting an excellence of taste and discernment.

The Respondent registered <vertuemail.com> and <vertumail.com>. He explained that “he purchased the disputed domain names in 2006 for the sole purpose of creating and maintaining virtual email websites for independent and amateur artists, the idea being to allow artists to be able to send emails, post and show to the world their creations, such as music videos, clips, paintings, sculptures and other art creations. The word “vertu” was chosen for its dictionary meaning of ‘Fine Arts & Visual Arts’, ‘The artistic way’.” A noble endeavor, but domain name rights and legitimate interests are locked into the present and in Nokia the Respondent’s explanation failed to meet reality. Virtual mail services of the kind the Respondent allegedly contemplated can be a bona fide offering of services, but the respondent has to establish its legitimate interest in rebutting the complainant’s prima facie case under paragraph 4(a)(ii) of the Policy.

The test is not what a respondent has in mind to do in the future but what he or she is doing in the present. Future oriented plans must be anchored by proof of “demonstrable preparations.” “It is by now well established that PPC parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii),” Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008).

In Nokia, the “Respondent provides not one piece of evidence to support his claimed plan to use the disputed domain names as a means to enable artists to show their works. The only evidence before the Panel shows that the domain names are being used to divert potential customers of the Complainant to its competitors, through sites designed to generate revenue in which the Respondent, as the owner of the disputed domain names, can be expected to share.” A respondent has two ways of escaping forfeiture, by either proving an affirmative defense or benefitting from the complainant’s inability to prove bad faith registration. Use in bad faith is generally evident from the content and also follows from a finding that the respondent lacks rights or legitimate interests in the domain name. But content also proves bad faith registration where a domain name incorporating a trademark piggybacks on complainant’s presence and reputation in the marketplace as explained in Ustream.

There is no intra-UDRP procedure for correcting a wrong decision. To state the case charitably, there are some decisions that deserved more than a single set of eyes, but the Policy provides no procedure for appeal. Recourse is to a national court, which in the United States would be a claim in district court under the Anticybersquatting Consumer Protection Act (ACPA). Either the law upon which a panelist rested his or her decision or his or her understanding of the law was grounded on a false premise. Such decisions are legal dead ends. Unfortunately, parties with small means are discouraged by the expense of a plenary action to mount a de novo challenge to a UDRP decision.

While it is no comfort to the losers of an earlier case, it does happen that the correct law is applied in a later one. An example of this is Loma Linda University Adventist Health Sciences Center, et al. v. JM XTrade, Inc., Joseph Martinez, D2009-0036 (WIPO March 11, 2009) in which the sole Panel determined that the Complainant had a superior right to <lomalinda.org> and <lomalinda.net> even though “Loma Linda” is a geographic location and not registrable as a trademark. The decision was recently voted the worst reasoned decision of 2009 by a distinguished panel at the T.R.A.F.F.I.C convention is Los Vegas.

The majority in Loma Linda 2 rejected this position. “Complainant cannot rely on its United States registrations because those registrations specifically disclaimed any exclusive rights to the term ‘Loma Linda’.” And, in any event “the Complainant’s claim of secondary meaning in LOMA LINDA fails because over the years LOMA LINDA has become utilized by others in numerous contexts. Indeed, LOMA LINDA has become the name of a city with some 22,000 inhabitants.” The Respondent’s legitimate interest in the domain name rests on proof that it “is in the business of developing geographically-oriented websites featuring information and services about municipalities and other geographic regions.”

The UDRP is a niche regime for arbitrating claims of abusive registration of domain names. It is not a stand-in for a court of law. The Complainant’s theory in IM Global LLC v. Intermedia Film Equities, Sterling Davis, D2009-1690 (WIPO January 24, 2010) was that the Panel could order transfer of the disputed domain name, <imglobalfilm.com> “on the basis of Respondents’ previous [contractual] consent without a review and analysis of the facts supporting the claim.” In support of this theory the Complainant submitted “a copy of a heavily redacted contract” highlighting one clause that appeared to obligate the Respondent “for no additional consideration” to transfer ownership of the domain name. Much is wrong with this theory of the case regardless of the forum.

Even if the complainant framed its claim under a UDRP theory in IM Global it failed to provide evidence sufficient to establish any trademark credential. It neither alleged under which national jurisdiction it claimed common law trademark rights or submitted any “evidence of usage of the trademark or evidence of knowledge of the mark among the relevant public so as to establish secondary meaning ... [or] alternatively provide a legal basis for the establishment of common law trademark rights in some jurisdiction.” Failure of jurisdictional proof is as fatal to a UDRP claim as it is to a claim in a civil court of law. The Panel in IM Global held that the Complainant had no standing, but nevertheless decided to “briefly address the other elements for the sake of completeness.”

In this case, the Panel rejected the Complainant’s invitation to expand the jurisdiction of the Policy to rule on a contract claim. It wanted “the Panel [to] ignore the requirements of findings under the Policy because a contract entered into prior to the dispute has not been carried out.” However, “Complainant has provided one clause of a heavily redacted contract in the apparent anticipation that the Panel will act as a civil court and enforce that clause as against Respondent. The Panel is not a civil court and, [even] if it was a civil court, it would not enforce a single clause redacted from a contract as presented by Complainant here.” Underlying the invitation is a construction of the Policy that would find bad faith registration based on the “totality of circumstances,” a perfectly good basis but not applicable to claims outside the scope of the Policy. As the Panel (ironically noted) “the Complainant has not persuaded the Panel to accept a new category of bad faith acts comprised of disappointing a contract buyer of a domain name registered in good faith, and passively holding while at the same time actively using a disputed domain name.”

Linguistic Analysis Rejecting the Conjunctive Bad Faith Construction of the Policy

This Note summarizes the linguistic analysis in response to the Octogen line of cases and the most recent rejection of the construction for “retrospective bad faith," Validas, LLC v. SMVS Consultancy Private Limited, D2009-1413 (WIPO January 20, 2010). The first case decided under the UDRP regime concluded that the complainant was required to plead and prove bad faith in the conjunctive. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, D1099-0001 (WIPO January 14, 2000). The Panel noted that “the WIPO report, the DNSO recommendation, and the registrars'group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO.” Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, submitted for Board meeting of October 24, 1999, para. 4.5, a.

The Octogen Panel had (he said) come to believe that “panelists, [himself included], seem to have largely overlooked the language of the Policy regarding the respondent’s representations and warranties. The question is whether the respondent’s representations and warranties should as a matter of policy “negate[] the temporal distinction suggested by 4(a)(iii) of the Policy,” Octogen. According to the Validas Panel “this line of reasoning involves interpreting the Policy, paragraph 4(b)(iv) as deeming the particular form of bad faith use” to be conclusive of bad faith registration rather than merely evidence for it, citing PASSION GROUP INC. V. USEARCH INC., AF-0250 (eResolution Undated 2000). The Panel in Passion Group held that “[t]his contrasting language indicates that use of the kind described in 4(b)(iv) is to be taken as evidence of bad faith registration as well as evidence of bad faith use. But this evidence is not necessarily conclusive. Furthermore, the panel is not required to assign substantial weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved.”

If “retroactive bad faith” or “unified concept” were the law “the clearly conjunctive language of paragraph 4(a)(iii) could be too easily circumvented,” Hertz System, Inc. v. Kwan-ming Lee, D2009-1165 (WIPO). It “would in effect turn ‘and’ into ‘or’, which would be inconsistent on its face with the plain meaning of those words,” Validas. In the view of this Panel, the only permissible way for this to be achieved is for ICANN to amend the Policy, paragraph 4(a)(iii) by changing “and” into “or”. Until then this Panel believes that (unsatisfying as it may be in its practical effect in the small number of cases in which it has been an issue) the view should prevail.

The difference in construction turns on the language in paragraph 4(b), which introduces the non-exclusive examples that support bad faith registration and use. Paragraph 4(b) contains language that suggests that if any of the non-exclusive examples are demonstrated, “in particular but without limitation ... [they] shall be evidence of the registration and use of a domain name in bad faith.” However, it is a mistake to interpret this language as justifying a lower standard of proof for bad faith registration. “[P]aragraph 4(b) merely deems these circumstances 'evidence' of the registration and use in bad faith ... thereby making it clear that the expression in paragraph 4(b) 'registration and use of a domain name in bad faith' is mere shorthand for the expression in paragraph 4(a)(iii) 'the disputed domain name has been registered and is being used in bad faith',” Validas.

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, D2009-1278 (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 and 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).”

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

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

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.”

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.

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:

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:

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 “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.

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)].

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

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.

“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.

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.

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.

Paragraph 4(b) of the Policy comes into play when the respondent fails to marshal a defense for rights or legitimate interests in the disputed domain name. 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...” (Emphasis added). The four particular circumstances listed do not presume to cover the universe of bad faith. They are “intended to be illustrative, rather than exclusive,” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Unidentified are other abusive practices covered under the catchall phrase “in particular but without limitation.” “It does not matter that the facts ... may not fall within any of the circumstances described at paragraph 4(b) of the Policy,” Fox News Network, LLC v. Sam Solomon, D2005-0022 (WIPO March 25, 2005). If not any one of those examples the Panel can rule on the “totality of circumstances,” Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000). The presence of circumstances, listed or otherwise, is “evidence” (not necessarily conclusive) of bad faith. This construction is compelled by the language in paragraph 4(a)(ii) of the Policy which requires proof in the conjunctive of registration and use. There is a hierarchy of acts, more or less egregious, the less being unpersuasive of bad faith. An example of this was noted in yesterday’s case, Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010) which had a link on its webpage to competitors of complainant.

Defined most broadly bad faith is registering a domain name identical or confusingly similar to a complainant’s trademark and using (or holding) it to gain an economic advantage. A respondent can be shown to lack rights or legitimate interests in the disputed domain name but still not to have registered the domain name in bad faith. Of the four listed examples of bad faith the first three are written in the past tense and focus on the respondent’s intention in registering the domain name: “you have registered the domain name” primarily for purposes inimical to the complainant’s interests and its rights. From the evidence is to be inferred the intention.

In contrast, the fourth example of bad faith [paragraph 4(b)(iv)], is written in the present tense, but implies a continuum of (if not current) predatory conduct in using the domain name. Other abusive practices generally concern the use of the domain name, such as phishing for example, or if registration, illicit transfer by hacking the registrar’s database or pretending to be the trademark holder. In one sense, the conjunctive requirement under paragraph 4(a)(iii) can be satisfied without separate proof of registration and use. To have registered the domain name for ransom (for example) satisfies the conjunctive requirement regardless whether there is an active website. Whether active or not the respondent’s conduct violates paragraph 4(a)(iii) of the Policy. Some panelists have taken the phrase “evidence of the registration and use” in combination with paragraph 4(b)(iv) to mean that the very fact of bad faith use – the facts not otherwise in contradiction – presupposes or infers bad faith registration. Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009).

In most instances, the Panel analyzes the facts of use first to determine whether the record is sufficient from which to infer registration in bad faith. There is no per se rule. In the line of cases stemming from Octogen bad faith use warrants a finding of abusive registration, but this construction has not found any significant support and is being criticized in a number of recent decisions, BioClin B.V v. MG USA, D2010-0046 (WIPO March 22, 2010) and Camon S.p.A. v. Intelli-Pet, LLC, D2009-1716 (WIPO March 12, 2010). The BioClin decision will be discussed in a later Note because in denying the complaint the Panel incidentally highlights the difference between the evidentiary demands under the UDRP and those under the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125 (d) for injunctive and legal remedies for trademark infringement.

Continuing Legitimate Interest in Domain Name After Termination of Business Relationship

A respondent’s right to continue using a trademark in its domain name after termination of its business relationship with the trademark holder is a contract issue, but under the right factual circumstances refusing to relinquish the domain name is actionable under UDRP. Ordinarily, permissive registration is conclusive against the complainant in a UDRP dispute because it disables the complainant from proving bad faith registration. Invariably in these situations the respondent’s post-termination business competes with the complainant’s, but whether a dispute of this kind is properly within the scope of the Policy depends on the existence or absence of language in the contract.

Where the contract is silent about post-termination rights the dispute is outside the scope of the Policy. In Re-Bath LLC v. Northern Nevada Bath, FA1002001305824 (Nat. Arb. Forum March 23, 2010) the parties failed to address the issue of post-termination rights in their contract. Hence, the question of rights becomes a trademark rather than an abusive registration issue. This is made clear by the Panel noting in obiter dicta the rule of law that applies under the UDRP, namely that since the disputed domain name was not registered in bad faith the complainant cannot satisfy its burden of proof. Obiter dicta, too, is offered on the issue of use: “[g]iven that the Respondent … is now using the contested domain name to point to a web site that provides factual information on the situation (namely that the Respondent is no longer a distributor for the Complainant), it would not appear that the present use of the contested domain name could be considered to be in bad faith in the sense of the Policy.”

In contrast, where the contract addresses post-termination rights in the domain name, the dispute is within the scope of the Policy. Former franchisees have no legitimate interest in a disputed domain name even if they registered it with permission. ERA TM LLC and ERA Franchise Systems LLC v. Era Sierra Properties, FA0812001239255 (Nat. Arb. Forum February18, 2009) and RE/MAX International Inc. v. NCR Northcoast Realty, FA0906001266756 (Nat. Arb. Forum August 4, 2009). Forfeiting a domain name permissibly registered may appear in contradiction to the Policy, but the theory is sound. Although the respondent appeared to have registered the domain name in good faith – it represented and warranted as such in its registration agreement – its refusal to relinquish the domain name on termination demonstrates that it never really intended to do so, therefore it must have registered the domain name in bad faith. Since permission was conditional, default in relinquishing the domain name warrants such an inference. The look-back can be seen as a variant of that line of cases that holds that respondent can be charged with retroactive bad faith.

That any aggrieved trademark holder can institute a claim against any respondent however distant their countries of residence means only that the former has jurisdiction to maintain the proceeding. To advance its cause the complainant has to demonstrate that at the time the domain name was registered its reputation extended to the respondent’s country of residence with at least circumstantial proof that the respondent was aware of its trademark. However well-known a complainant’s trademark may presently be is not evidence of its strength in the past. Even if the disputed domain name is identical to the complainant’s trademark there is no presumption in favor of the complainant, although more explanation is expected from the respondent as the trademark rises on the classification scale from generic and descriptive to the arbitrary and fanciful.

Two cases illustrate this point. The trademark in Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010) is AEROMAR, not a word commonly found in a dictionary of the English language but nevertheless chosen by the U.S. Respondent for its domain name, <aeromar.com> and appropriate if used in a sense that captures the meaning of “aero.” The Complainant “offers passenger, charters, mail and parcel flight, primarily within Mexico.” The Respondent’s website is a portal for things relating to aircraft, but the Respondent is not a carrier. The second case, involves a word not defined in the Merriam-Webster Dictionary on my desk but with an understandable meaning in English, “intermesh”, Indiamart Intermesh Limited v. Portmedia Inc. / Intermesh.com, D2009-1804 (WIPO March 15, 2010). “Intermesh” is defined in Merriam-Webster On Line as “to mesh together; interlock.” The website is populated with dating links.

In Aeromar, the parties are respectively located in Mexico and California, not a great distance but the Complainant offered no evidence that at the time the domain name was registered its reputation had traveled to the United States. Its argument was also undercut by two facts. First, that its trademark registration in the United States post-dated the registration of the domain name; second, that it waited 14 years to commence a proceeding to capture the domain name. The Respondent did not argue laches, but the time lapse is nevertheless a significant factor in weighing evidence for and against legitimacy. “The fact that the Respondent’s domain name and associated website have existed for more than 14 years, apparently without complaint, also weighs in favor of the legitimacy of the Respondent’s conduct.”

In Portmedia, also, the domain name had been registered for a substantial period of time, since 2001, and although the Complainant showed that it had a significant international presence today, it offered no proof that it had such a presence when the domain name was registered. A complainant’s naked assertion that its trademark is famous or well-known has weight only to the extent that it coincides with the registration of the domain name. “The rapid growth of Complainant’s advertising supports the inference that nine years ago ... the level of international advertising and scope of secondary association globally was fairly limited.”

Respondents violating third party rights generally give themselves away by the content of their websites. However, suspicion that many years earlier respondents chose names corresponding to complainants’ trademarks is not evidence of bad faith registration; merely a non actionable coincidence.

Nothing could be easier for a registrar owed money (or, in the case herein discussed, the reseller of a registrar) to simply change the registration of the domain name into its own name and hold it for ransom. Grace From Fire, LLC v. ConnectDomain.com Worldwidedomains, Inc, D2010-0143 (WIPO March 9, 2010) (<jackjackass.com>). But, is it legal? Removing property is either conversion civilly or larceny criminally. Holding a domain name for ransom is condemned as an act of bad faith under paragraph 4(b)(i) of the Policy. These acts fall into two classes of cases: respondents known to the complainant – former employees, partners, consultants and agents – and those unknown who have hijacked the domain name by fraudulently arranging for a transfer of registration. Grace From Fire is in the first class. Taeho Kim v. Skelton Logic, FA1002001305934 (Nat. Arb. Forum March 22, 2010) is in the second class.

Of course, in order to maintain a proceeding the complainant must be a trademark holder. In Taeho Kim, alas, the Complainant alleged that his “GoDaddy.com account was hacked ... and the domain names [<recent.net>, <they.net> and <than.net> ] were sold to a third party and re-sold to Respondent. Thus, Complainant alleges that Respondent purchased stolen domain names.” In Grace From Fire, the Respondent took “self help” in improving its bargaining position on a non-payment dispute by taking control of <jackjackass.com>. The Panel in Takaso Rubber Products Sdn Bhd v. Selim Tasci and Tasci Dis Tic. Ltd. STI, D2006-1263 (WIPO December 16, 2006) noted that the “demand by Respondent for ... a business concession in exchange for transfer of the disputed domain name constitutes an offer to transfer the disputed domain name for valuable consideration.”

Although there may have been an issue in early cases whether disputes with former employees, partners, agents, etc. were within the scope of the Policy, the consensus is that they are, essentially equating tortious and criminal conduct with cybersquatting. Leverage and extortion cases are generally treated as violations under paragraph 4(b)(i) of the Policy. Examples cited in Grace From Fire include Birinyi Associates, Inc. v. Convert, D2001-0395 (WIPO June 20, 2001) and Robilant & Associati Srl v. POWERLAB snc (ROBILANT6-DOM), D2006-0991 (WIPO October 5, 2006).

A claim for alleged past due amounts on service contracts does not justify taking possession of another's property. “Respondent’s rather frank admission that he intends to use the disputed domain name to leverage compensation for copyright materials allegedly taken from his website suggests that the motive was to use the domain name as a bargaining means for another dispute. This is improper and in the Panel’s view is a clear illustration of bad faith,” Coppertown Drive-Thru Systems, LLC v. R. Snowden, FA0605000715089 (Nat. Arb. Forum July 17, 2006); also, Nexxt Development Corp. v. Richard Spence, D2008-0530 (WIPO May 29, 2008): “passively holding the domain names for use in possible settlement negotiations of the dispute between the parties constitutes use of the domain names in bad faith.” Ultimately, “non-payment of fees by the Complainant to the Respondent does not establish rights or legitimate interests in the disputed domain name in the Respondent.” Ecoyoga Ltd. siteleader.com, Siteleader Hosting, D2009-1327 (December 11, 2009).

Ordinarily, a trademark must have been in existence before the registration of the domain name for a finding of bad faith registration, but this is not invariable and depends on factors other than timing. The issue is addressed in paragraph 3.1 of the WIPO Overview, which states:

This is then qualified to account for those circumstances in which the respondent has taken unfair advantage of the complainant by anticipating accrual of its right:

The WIPO Final Report at paragraph 23 identifies two types of “predatory and parasitical practices”. The consensus refers to the second type, registering domain names “simply to take unfair advantage of the reputation attached to those marks.” The fairness issue has been discussed in a number of recent decisions. It makes no difference that the complainant has no registered trademark or has an application pending at the commencement of the proceedings, as long as its right is incipient: “any rights that may arise from the complainant’s enterprises.”

In Body Accounting, Inc. v. Affinity Domains, Energy First, D2009-1419 (WIPO December 11, 2009) there was evidence of “connections between the two [parties] that pre-date the registration of the Domain Name.” “The fact that the complainant actually acquires local law trade mark rights in the future is important for the purposes of paragraph 4(a)(i) of the Policy. ... However, whether or not it is apparent at the time of registration that they will necessarily come into existence is not important so far as the paragraph 4(a)(iii) assessment is concerned.” It is sufficient that the respondent “had knowledge that trademark rights would soon arise through use or registration of a mark by the Complainant,” General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, D2003-0845 (WIPO January 15, 2004).

Although not involved in Body Accounting because the complainant resides in a common law jurisdiction, this construction of the Policy allows a complainant in a non-common law jurisdiction to maintain a proceeding even though it does not have a registered trademark, citing St Andrews Links Ltd v Refresh Design, D2009-0601 (WIPO June 22, 2009): “So far as possible, the concept of bad faith should be interpreted in such a way that it has its own separate meaning under the Policy and is not dependent on the laws of the country in which the complainant or respondent operates.” This means in practice that a complainant can establish jurisdiction for an unregistered right regardless of its national residence.

The basic ingredients for bad faith are knowledge and intention. Denying is more common than admitting them, and although having knowledge of a complainant and its trademark is not necessarily prejudicial to a respondent’s right or legitimate interest in the disputed domain name, proof of intention must be met by counter proof. While the foundation documents expressly excuse respondents from having to perform trademark searches – the fact of registration does not give rise to constructive notice – respondents are not excused from willful blindness to a holder’s trademark rights. The concept of “willful blindness” is expansive. Respondents cannot plausibly deny knowledge easily obtainable through Internet searches. Hayward Industries, Inc. v. WebQuest.com, Inc., D2009-1493 (WIPO January 27, 2010): “[n]otably, the Panel has independently observed that the most prominent organic search result for “hayward” leads to a website for Complainant (at www.haywardnet.com), so, as in Mobile Communication Service [D2005-1304 (WIPO February 26, 2004)] “even a cursory search [by Respondent] on search engines like Yahoo! and Google would have shown that [this word] is a trademark.”

Paragraph 2 of the Policy reads that by “applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that ... (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” (Emphasis added). “Knowledge is important since without knowledge (and in the absence of willful or Nelsonian blindness of the type described above) it will be difficult to show that a respondent has the necessary intent for bad faith,” Aubert International SAS and Aubert France SA v. Tucows.com Co., D2008-1986 (WIPO March 17, 2009).

“Actual” knowledge is construed to mean “awareness” of the complainant and its trademark. So, for example, denial of knowledge where the complainant markets its goods or services in the same geographic community or to the same group of consumers becomes increasingly implausible if the content of the respondent’s website contradicts its assertion of ignorance. In Dex Media, Inc. v. c/o DexLocal.com and Domain Manager MediaVision, D2009-1766 (WIPO March 4, 2010) the Respondent argued that because the Complainant did not file a trademark application for DEXLOCAL it was “fair to presume that [it] did not want to register the name <dexlocal.com> or use the term ‘dexlocal’” as a trademark. The argument was revealing “because it is consistent with awareness on the part of the Respondent of the Complainant’s DEX mark when the disputed domain name was registered.”

The content of the Respondent’s website in Dex Media supported this conclusion. When “coupled with the use of the disputed domain name for a website offering local listings of a directory nature, leads the Panel to conclude that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s DEX mark as to the endorsement of the Respondent’s website or of the services on its website.”

Regions, Cities, Municipalities and Towns may wish to control the use of their names on the Internet but there is an insuperable barrier, namely that naked geographical indicators are not covered under the UDRP and protection under trademark law for geographic terms is uncertain. Nevertheless, there have been a number of recent challenges by public authorities to domains with geographic names, most prominently the “Paris” cases, Ville de Paris v. Salient Properties LLC, D2009-1279 (WIPO December 3, 2009) <wifiparis.com>) and Ville de Paris v. Paris.TV LLC, DTV2009-0010 (WIPO February 17, 2010) (<paris.tv>), both decided in favor of the Respondents. The Panel in the <wifiparis.com> case rejected the Complainant’s contention that its right rested on its logo plus words – “PARVI PARIS VILLE NUMERIQUE, with a distinctive ellipse device, and the word PARVI appearing in larger font than the other words” – because the trademark did not “confer any rights in the word ‘Paris’ alone.” Offense to public authorities that a business enterprise enjoys commercial gain from registering what it views as its geographic property is not a proper basis for denying the respondent a legitimate interest in the domain name.

The most recent public authority to suffer disappointment is Commune de Tignes v. Laurence et Sandrine Raymond, D2010-0076 (WIPO February 23, 2010). However, unlike the Paris disputes the Panel in Commune de Tignes denied the complaint because the Respondent demonstrated that its use of the domain name brought it within the “legitimate noncommercial or fair use” provision of the Policy, paragraph 4(c)(iii). Commune de Tignes (like Ville de Paris) also owns a figurative trademark, in its case incorporating the term “Tignes.” However, instead of addressing geographical exclusion, the Panel accepted the Respondent’s proof that it had a right or legitimate interest in the disputed domain name. This is unfortunate because it misleadingly implies that but for the noncommercial content of the website the Complainant would have succeeded, although this would have violated another trademark principle that generic terms incorporated in figurative designs are not in isolation from the design registrable.

The mere fact that the complainant exists at a geographical location is not proof of a trademark right. Thus, the Complainant in Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel, D2001-0348 (WIPO June 18, 2001) could not protect ROUEN in <rouen.com> and <rouen.net> because, although it had a trademark that included the word “Rouen” it had no mark in “Rouen” standing alone. “Unless the evidence demonstrates that the name of a geographical location is in fact performing the function of a trademark, such a name should not be considered a trademark for the purposes of the Uniform Policy,” Brisbane City Council v. Warren Bolton Consulting Pty Ltd., D2001-0047 (WIPO May 7, 2001). The Panel held that the

The obverse of geographic entities demanding control is commercial enterprises that have adopted geographic symbols to distinguish themselves in the marketplace. Under Section 1052(e) of the Lanham Act and similar statutory provisions in other jurisdictions, geographic indicators are excluded from registration unless allowable under 1052(f). In this respect, business enterprises have the same problem as public administrations, namely that the disputed domain name is being used in a non-trademark sense, Superga Trademark, S.A. v. Gilberto, Publinord S.r.l., D2008-1890 (WIPO February 24, 2009) (<superga.com>, “a hill overlooking the city of Turin (Torino), or the City or Municipality cannot register, cannot claim a monopoly over the naked geographic term. Even if a geographic trademark attains registration on the Principal Register it is treated as a generic term and “does not … become absolutely protectable,” Spherion Corp. v. Solomon, FA 112454 (Nat. Arb. Forum July 22, 2002) (<saratoga.biz>).

Rules 12 and 10(a) of the Rules of the Policy are closely connected. Rule 12 grants panelists authority to request information from parties, while Rule 10(a) of the Rules of the Policy has been construed to authorize panelists to undertake some minimal research – “The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules” – but this does not (or should not) extend to filling in facts not pleaded by or making a case for a party. An early decision explained that Panels may “independently visit the Internet in order to obtain additional light” on a case, InfoSpace.com, Inc. v. Hari Prakash, D2000-0076 (WIPO April 6, 2000) and perform “limited modest factual research.” This “consensus” is reflecting in Paragraph 4.5 WIPO Overview of WIPO Panel Views on Selected UDRP Questions which reads:

However, it “is one thing for a panelist to view a web site to verify parties’ assertions and quite another to embark upon an independent investigation as to what a complainant’s case may be,” Silvie Tomcalová a.k.a. Sylvia Saint v. Juan Campos, D2006-0379 (WIPO May 5, 2006). Beyond the limited research permitted, panelists are not permitted to make a party’s case any more than a judge in a civil action is authorized to grant relief not otherwise requested. This issue of the Panel's authority to independently investigate facts is noted in a concurrent opinion in a case discussed last week, San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., D2009-1545 (WIPO March 3, 2010) and deserves not to be overlooked.

“Limited factual information” should be of the kind bearing a relationship with judicial notice, that is facts of common knowledge “not subject to reasonable dispute because they are capable of accurate and ready determination or resort to sources whose accuracy cannot reasonably be questioned,” Uniform Rules of Evidence, Rule 201. The majority in San Diego held that the disputed domain name was confusingly similar to the complainant’s trademark, while the concurring opinion disagreed:

However, the majority in San Diego based its decision on a visit to the Complainant’s website. The question is whether it is appropriate for the Panel to conduct an independent investigation in cases in which there is no default and the parties have submitted a record. In that case where “a party has expressly elected to argue A before a panel, that panel should not presume it also intended to argue B. The majority simply cannot know whether Complainant failed to direct the Panel’s attention to its own website out of simple forgetfulness, or instead because it was aware of some grounds for doubting that the site demonstrates the rights it seeks to establish.”

The decision in San Diego in any event favored the Respondent, but the independent investigation assisted the Complainant by filling in information not in the record that supported the conclusion that the domain name was infringing. An alternative view is that the parties' websites historically and presently are deemed part of the record, either to corroborate or contradict their assertions. This better explains and justifies research in the Internet Archive [see Note for March 17th].

Parking is not prima facie illegitimate, but it may require plausible explanation where the respondent has knowledge of the complainant’s trademark and has incorporated it into the domain name. Authorized dealers, resellers, distributors, consultants and, in Alstom v. Industrial Tests, Inc., D2009-1702 (WIPO February 6, 2010), companies in the business of testing equipment manufactured by the Complainant may legitimately incorporate the trademark in advertising its services – <alstomservice.com>. The Respondent contended that it “only ever intended to use the domain name descriptively; that is, to describe its services in relation to the Complainant’s products.” It parked the domain name as “a consequence of the dispute.”

Alstom is unusual in that the Respondent is offering services related to the Complainant’s goods, “but not the good themselves.” Ordinarily, a respondent establishes legitimacy by demonstrating that its offering is limited to the complainant’s goods. “It may not assist the Respondent’s case that it may also be offering services related to other goods.” This principle is traceable to Oki Data Americas, D2001-0903 (WIPO November 6, 2001); see, also, Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969) concerning defendant’s right to incorporate plaintiff’s trademark into the phrase “Independent Volkswagen Porsche Service.” The defendant’s “prominent use of the word ‘Independent’ whenever the terms ‘Volkswagen’ or ‘VW’ appeared in his advertising was sufficient to distinguish his business to the eye of the customer.” The incorporation of the trademark simply describes the services offered. It does not pretend to be associated with the trademark holder.

Nevertheless, in Alstom the domain name resolved to a website offering testing services for goods manufactured by other brands. This would appear to violate one of the Oki Data tests, namely that the “respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.” While “application of these considerations to this case is finely balanced” it is not fatal to the respondent because “the Panel considers it likely that Internet users who find themselves directed to the Respondent’s site may well be uninterested in the servicing of any brand of equipment except that which they already own.... Indeed, the history and nature of the Respondent’s business is made clear on the site.”

The Panel did, however, implant a note of caution to the Respondent in Alstom; a note incidentally that holds true in many cases in which a legitimate interest of good faith registration of the domain name is found based on the record as it presently exists. “On balance, the Panel accepts the claim of the Respondent that the parking site has been developed merely for the purpose of holding the disputed domain name while this dispute is resolved” but “obviously, if the use of the disputed domain name was to become subsequently abusive, that may well be a highly relevant consideration in any future proceeding that may be brought by the Complainant.”

UDRP’s remedial niche is limited to disputes of abusive registration of domain names rather than trademark infringement. The WIPO Final Report states that the “scope of the procedure is available only in respect of deliberate, bad faith, abusive, domain name registrations or ‘cybersquatting’and is not applicable to disputes between parties with competing rights acting in good faith,” (Paragraph 135(i)). The string of adjectives suggests that WIPO did not intend to pin down ‘abusive registration’ to a formula of conduct that would prescribe the result. While there may well be consumer confusion concerning the source of goods offered by a respondent on its website, that in itself is not probative of “deliberate, bad faith, abusive” conduct. A trademark holder may have a claim for infringement but not be entitled to a remedy under the UDRP.

In Island Sky Corp. v. sky water, D2010-0039 (WIPO February 25, 2010) the Panel found that the “water-related systems offered by the parties … are not strictly, as Complainant asserts, in direct competition with one another. As the Panel understands it, Complainant produces water from the atmosphere and Respondent purifies existing water.” Both parties use the terms “skywater”, the Complainant as a registered trademark; the Respondent in its domain name, <skywatersystems.com>. The difficulty for the Respondent was that its logo resembled the Complainant’s. It explained that
“At the time of its creation, Sky Water asked the branding company for a logo that was consistent with the products and services being Go-Green, and environmentally friendly. In retrospect, this was a mistake. Water companies everywhere at the time became obsessed with Go-Green and wanted Go-Green literature and logos etc. ”

Although resemblance between art on the respondent's website with the complainant's could be an indicator of copying, and copying probative of a respondent’s knowledge of the complainant, “[w]hen nature and environmentalism are themes embraced by a company marketing a water-related product, the images of a green leaf and a blue droplet leap fairly readily to mind. Respondent’s explanation that it outsourced the design of its logo and, by coincidence, the logo somewhat resembles that used by Complainant is not so far-fetched as to be discredited on its face.”

Also in Respondent’s favor in Island Sky is that the parties are respectively in Florida and New York. Denial of knowledge is more plausible the greater the geographic distance of one from the other. Absent evidence of “deliberate, bad faith, abusive” conduct the Complainant’s allegations are insufficient to tip the scale. Nevertheless, this decision only determines the issue reserved under the Policy. It does not foreclose a claim under the ACPA for trademark infringement. In Island Sky, however, this would be difficult because “[o]n the spectrum of inherent distinctiveness, the trademark SKYWATER to identify a system that produces water from the atmosphere in this Panel’s view can hardly be regarded as fanciful or even arbitrary. It is, for this Panel rather, suggestive at best and even arguably descriptive.” While this does not “negate Complainant’s right to enforce its registered trademark rights … it can undermine an allegation in a streamlined proceeding under the Policy that Respondent was aware of the mark when it registered the Domain Name.”

The Panel in Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010) (discussed a few days ago on another subject) reminded us that “the ‘robots.txt doctrine’ that bad faith may be found if access to the archive of the historical contents of a website is blocked by a respondent after initiation of a domain name dispute” is not applicable where the respondent’s blocking of access preceded the dispute. “Hence, whatever view one might take as to whether such a doctrine is appropriate, having regard to the justifications for archive blocking advanced by the Respondent (and the Panel finds it unnecessary to express a view), that doctrine cannot apply in this case.”

“Robots.txt” is a program that crawls websites for the Internet Archive, more familiarly known as the Wayback Machine (“IA”). IA is accessible on the Internet at http://www.archive.org. An overview of IA’s mission is described by the Panel in The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], D2007-1438 (WIPO December 18, 2007) (unanimous 3-member panel). It was founded in 1996. “Like a paper library ... [it] provide[s] free access to researchers, historians, scholars, and the general public, of historical web pages.” It started to build a better-rounded collection in late 1999 by using Alexa to crawl the web. With its Wayback Machine – a device that displays the website as it looked on a given date – anyone can literally have a window on the past use of the domain name. The Panel in iFrancise held that

“Alexa respects robots.txt instructions [not to crawl a particular site], and even does so retroactively, thereby preventing the researcher from discovering targeted pages.” The antidote to such instructions is for the complainant to argue and the Panel to draw a negative inference in favor of the complainant’s “reasonable factual allegations ... as to the historical use of the web site to which the domain name at issue resolves ... and that the use of robots.txt in the particular case may be considered as an indicia of bad faith,” The iFranchise Group. There is another service that captures ‘historical snapshots’, but in contrast to IA DomainTools.com stores images of the home pages without following links or storing text or site code. Note: IA is a free, DomainTools.com a subscription service.

However, domain name registrants may legitimately block collection of website information. The question is whether blocking access to page content is intended to mask infringement of the complainant’s right or undertaken for a legitimate business purpose. In SCOLA v. Brian Wick d/b/a CheapYellowPages.com, FA0711001115109 (Nat. Arb. Forum February 1, 2008) the Respondent presented evidence from the Wayback Machine that his predecessor had used the disputed domain name in good faith, but blocked access from its acquisition. That suggested to the Panel concealment of evidence.

In contrast, the Respondent in Rba Edipresse identified five reasons for legitimately blocking access as a business practice for operators of pay-per-click websites. The Panel sets them forth in full “for the benefit of other panels in future cases,” intended I think to counter the view that blocking is ipso facto grounds for finding bad faith. According to the Respondent, allowing access 1) imposes a cost in bandwidth by taxing the respondent’s server capacity for which it has to pay “without any return of revenue to the Respondent”; 2) and 3) promotes click fraud and related scams associated with archiving -- the Respondent explains that “[b]ecause of concerns of click fraud and related scams, the confidential contracts between PPC feed providers and publishers forbid archiving, reverse engineering, and copyright violation inherent in allowing third party content storage of current ads”; 4) creates confusion with respect to parked pages; and 5) provides inaccurate information about the geographic distribution of use because the archived pages show only what was visible in one location.

The Respondent points out that DomainTools.com avoids these problems because it stores images of the home pages without following links or storing text or site code. Bad faith rests on timing, whether before or after notice of the dispute. If after and there being no explanation as in Scola an inference of bad faith is more likely. In Rba Edipress, the Respondent's blocking of access was a considered business policy that preceded notice.

Whether geographically near, as in San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., D2009-1545 (March 3, 2010) (registered trademark), or far, as in Digital Alchemy, LLC. V. Digital Alchemy c/o Ramon Felciano, FA0911001295928 (Nat. Arb. Forum January 12, 2010)(unregistered trademark), the complainant cannot assume that the consuming public recognizes its descriptive trademark as the source of particular goods or services different from another’s use of the same terms. ICANN panelists no less than judges have insisted that the putative trademark holder demonstrate secondary meaning if it hopes either to establish jurisdiction or prove knowledge as a basis for bad faith registration.

Reference to Section 2 of the Lanham Act, as amended (15 U.S.C. §1052) is useful here to put the issue in context. The statute reads that “[n]o trademark by which the goods or the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it….” There are several exclusions, but for this discussion the two relevant provisos are Subsections 2(e) and 2(f). Under the former, a trademark can be rejected if it is “merely descriptive”, “primarily geographically descriptive of the applicant’s goods”, “primarily merely a surname,” or “comprises any matter that, as a whole, is functional.”

Subsection 2(f) takes this back if the applicant’s use of the trademark has become distinctive of its goods in commerce. The trademark becomes distinctive upon “proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.” However, “it does not involve a determination that the Complainant’s mark, at the time of the Respondent’s registration of the disputed domain names, had acquired secondary meaning sufficient for the public to recognize it as a symbol distinguishing the Complainant’s goods and services from those of others,” San Diego.

Both U.S. courts and ICANN Panels insist that proof of secondary meaning “includes evidence as to (1) the length and continuity of a mark's use, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales or admission figures,” San Diego, citing First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir.1987). For trademarks registered under 2(f) the complainant must prove secondary meaning. In San Diego Hydroponics the majority granted jurisdiction, but denied the complaint; in Digital Alchemy, the Panel held that the Complainant failed to prove any common law rights to the descriptive term.

As for trademarks based on generic terms, however powerful they may be in market A they are unrecognized in market B. If market A and B are widely separated, as are Spain and the United States, and the dispute centers on a two syllable term that is attractive to many merchants peddling goods and services in different Classes, the complainant cannot rest its case on opprobrium. In Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010) the Complainant disputed the Respondent’s right to retain <clara.com>. The Complainant has a Spanish trademark for CLARA which it claims is “well-known”, but offered no proof for reputation beyond the borders of Spain. The Respondent pointed out that “the same mark is registered in Spain and in the United States by many others; the same mark is used in France for a similar but unrelated magazine; and ... the Complainant has made no claim to any reputation beyond Spain.” Where the complainant alleges that it has a reputation it has the burden of proving it; it is not for the respondent to rebut the allegation.

Essentially, the Complainant rested its case on the Respondent “usurping a domain name which obviously corresponds to a complainant as owner of a priority-registered trademark” and that this “reprehensible behaviour” prevented “the Complainant from carrying on its normal business activity through the domain name.” Whether a respondent is usurping the disputed domain name and acting reprehensibly is not determined on the basis of conclusory statements. It is no more necessary for a respondent to have trademark rights to establish a “right or legitimate interest” in the disputed domain name than it is for a complainant to prove a legal right to the domain name. It would turn “the Policy on its head,” Scripps Networks, LLC v. Chief Architect, Inc., D2009-0633 (WIPO June 29, 2009).

However, the female name “Clara” and the Spanish word “clara” (meaning “egg white” or “albumen”) are not granted a higher classification for the asking without proving secondary meaning in the respondent's market; that it has travelled intact from Spain to the United States. “Complainant’s submission that the term ‘Clara’ has “full distinctive capacity and should be considered a whim or at most a fantasy trademark with respect to its distinctive products” is rather a fantasy in eyes of the beholder. “The totality of ... circumstances [being taken into account] affords no reason to suppose that the Respondent had the trademark meaning or the Complainant’s magazine in mind on registration of the disputed domain name.” A generic or descriptive term does not transform to the suggestive or arbitrary because in its niche it is recognized by the consuming public.

In general, a respondent’s registration of a domain name that misspells a trademark, or is composed of added, substituted or transposed letters that vary the prototype, is not merely confusingly similar but implies knowledge and suggests targeting the trademark. For these minor orthographic variations of trademarks panelists invented the term “typosquatting,” De minimis changes “immediately raise[] suspicions and call[]or an explanation,” CareerBuilder, LLC v. Azra Kha, D2003-0493 (WIPO August 5, 2003). However, some differences genuinely spell different words. The Panel in 5127173 Manitoba Ltd., carrying on as "Canada Drugs IT" v. Suucess Incorporated, FA1001001302812 (Nat. Arb. Forum March 8, 2010) held that <canadarugs.com> is not identical or confusingly similar to CANADA DRUGS. The Complainant argued that by dropping “d” the Respondent is guilty of typosquatting. In typical typosquatting cases the confusing term does not form a dictionary word; respondents reorder letters. Rugs is not likely to be confused with drugs.

There are three levels of questions in typosquatting cases. The first concerns the protectability of generic and descriptive terms. The words “Canada” and “drugs” are as generic singly as they are joined. Panels frequently cite Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) for the proposition 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.”

The second question concerns the timing of the domain name registration which in turn concerns the respondent’s knowledge or lack thereof of the complainant’s and its trademark’s existence. In 5127173 Manitoba the disputed domain name predated the Complainant’s trademark by a number of years, although the Respondent had passively held it for some of them; it became active again after the Complainant began marketing pharmaceuticals.

The third question is the content of the website which in the case of 5127173 Manitoba is an advertising portal for rugs and furniture. Of interest here is what may happen in the future if the domain name is transferred to a new owner who wants to go beyond the unremunerative advertising of rugs and furniture or if the Respondent does possibly triggering the construction held by the Panel in the March 8 Note on Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010).

Ordinarily, a finding against the complainant on the jurisdictional element under 4(a)(i) of the Policy makes it unnecessary to examine the record further, but in 5127173 Manitoba the Panel ruled that the Complainant also failed to satisfy the requirements of paragraphs 4(a)(ii) and 4(a)(iii). One explanation is that the Panel was uncomfortable in its jurisdictional ruling that the domain name was not confusingly similar to the trademark. After all, the confusion is not farfetched. In a number of early UDRP cases panelists were unsure about dismissing the complaint. Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001): “However, in case we are wrong on this issue [that is, skipping the threshold finding], we find that the Complaint fails to meet any of the requirements of paragraph 4b of the Policy.”

The phrase “opportunistic bad faith” is not found in the WIPO Final Report, but was coined by early Panels initially to refer to disputed domain names that are so obviously connected with famous and well-known trademarks that their use by someone with no connection with them or the complainant's products suggests respondents taking advantage of Internet users to lure them to alternative web sites. Early cases include Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000) (<xpediatravel.com>) Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., D2000-0163 (WIPO May 1, 2000) (<veuveclicquot.org>). Intentionally diverting web traffic by misleading Internet users into believing that they are accessing the trademark holder’s website is prima facie bad faith.

However, opportunism embraces a larger community of respondents and is not limited to trademark holders. It describes those who prey on the prestige and drawing power of a complainant’s rights for commercial gain. One aspect of this conduct is identified in the WIPO Overview at paragraph 3.1 which describes respondents who with knowledge of a third party’s rights register domain names in anticipation of a filing for trademark registration. This form of opportunism is at the center of Monty Program Ab v. Tong, FA0912001299742 (Nat. Arb. Forum March 2, 2010). “According to the Complainant, it or its predecessors in business, as well as Mr. Widenius, have been using the mark Monty Program for commercial activities since at least 1992.” However the term became prominent in February 2009 when it “was publicly announced that Mr. Widenius was resigning from a major company and would form his own new company, which would be called Monty Program AB.”

The Respondent in Monty Program registered <montyprogram.com> one day after the announcement. The Panel cites as precedent 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent's registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”) and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do”). See also Pro Confort SRL v. PIER56, Ion Robu, D2008-0801 (WIPO August 8, 2008). Although the Complainant's trademark registration for RIN GRAND HOTEL followed the registration of the domain name by several months, the Respondent registered the domain name a month after the hotel’s official opening which was “notoriously advertised by Romanian media.”

In order to avoid forfeiture, the respondent must offer evidence that it had no knowledge of the complainant’s plans and that the registration of the disputed domain name was in preparation for a bona fide use. In Monty Program, the Respondent contended that “as a child, he had been an avid fan of the well-known comedy group Monty Python. When cleaning out his room in January 2009, he came across some old programs and was motivated to create a web site to let more people know about the group. Since the domain name <montypythonprogram.com> was taken, he chose the disputed domain name, which was available.”

The mere fact that a domain name identical to a trademark is available, however, is not a defense to abusive registration. An excuse has at least to rise to the level of plausibility; not descend to risibility.

Mattel, Inc. owns trademarks for BARBIE, FASHIONISTAS and SO IN STYLE. The Respondent in Mattel, Inc. v. jaomadesigns, FA1001001303036 (Nat. Arb. Forum March 3, 2010) admitted that the Complainant owned the trademarks but argued that it “has failed to demonstrate ownership pertaining to the following disputed domain names: <barbiefashionista.com>, <brbielovesstila.com>fashionistabarbie.com>.” In so doing the Respondent misapprehends the rights in issue. Complainant “does not have the burden to show rights in the infringing domain name, only rights in the mark...,” Scripps Networks, LLC v. Chief Architect, Inc., D2009-0633 (WIPO June 29, 2009). The argument that a complainant must have rights in the domain name “turns this element of the Policy on its head,” Id.

Although there are limited circumstances under which respondents can avoid violation of the Policy by incorporating a trademark (coupling it with another term that identifies a wholly different business, for example, Prudential Insurance Co. of America v. Quick Net Communications, FA 146242 (Nat. Arb. Forum March 27, 2003) (<prudentialmotors.com>) rights or legitimate interests cannot be acquired by mixing and matching variations of trademarks well established in the marketplace. The order in which terms are written -- <barbiefashionista> or <fasionistabarbie> -- is as inconsequential as adding or omitting the plural form. “Barbie” is the dominant term in all the domain names. Respondent’s fallback position in Mattel that the domain names could not be “confusing to the Complainant's sites since they are fansites, whereas Complainant site is the official site for Barbie, which anyone can easily tell" is equally unavailing. Even if a site were truly what it purported to be a respondent is not permitted to “commercially gain” from the targeted trademark.

The belief that adding a disclaimer on the website trumps the exclusivity of complainant’s trademarks is misguided. “The disputed domains are also not causing confusion with the Complainant official sites, and marks because everyone who has ever seen a television commercial knows that to find Barbie, you go to Barbie.com. Even an average internet user does not necessarily expect to find every site containing the word BARBIE, to be an official Barbie site.” But, the “average internet user” can be misled into believing that the confusingly similar domain name is an “official” site.

It is not certainty of confusion but “likelihood of confusion” that is a violation of the Policy. In response, the Panel noted “that the Respondent may have presented a more persuasive case had ‘Barbie’ not been included in its domain names.” That is, while BARBIE is a famous trademark, “fashionistas” (regardless of tense) is generic and can have an independent non-infringing existence. Fusing identical or confusingly separate trademarks into a new string is no less a violation of the Policy than appropriating each trademark singly when the respondent's purpose is to capture the complainant’s audience by directing it to a third party website.

Zuccarini is one of those mythic respondents whose registrations of domain names provided the grist for articulating standards of conduct under the UDRP. He has also featured as a defendant in disputes arising under the Anticybersquatting Consumer Protection Act. Most recently, the 9th Circuit affirmed the judgment against him by decision dated February 26, 2010 in Office Depot, Inc. v. Zuccarini involving domain names as property subject to lien and garnishment. The status of domain names has evolved since they first made their appearance.

Domain names were initially seen as having two lives: providing “addresses for computers that [are] easy to remember ... without the need to resort to the underlying IP numeric address” and identifying a business or its products or services [WIPO Final Report at paragraph 10]. However, over time they acquired an additional life beyond the purely functional. Entrepreneurs quickly learned how to create value by monetizing domain names for income and sale which raised their dignity into assets that could be pledged as security for collateralizing loans. Courts have recognized this change of status by analogizing domain names to real estate and corporate bonds. This status also exposes domain name owners to seizure for payment for debt. This is a radical transformation from how domain names were originally viewed.

The evolution from the purely functional to becoming an asset has been progressive. While recognizing the value of domain names, a pre-ACPA decision in the 4th Circuit rejected the view that they were property. The District Court for the Eastern District of Virginia in Dorer v. Arel, 60 F. Supp.2d 588 (E.D. Va. 1999) sought an answer through analogy with trademarks: “Significantly, trademark law does not suggest that the trademark owner ‘owns’ the words used in the mark, but only that the owner may enjoin others from using the words in commerce so as to avoid confusion or dilution of the value and significance of the mark.” The Court then listed “several reasons to doubt that domain names should be treated as personal property subject to judgment liens.” This reasoning was subsequently followed by the Virginia Supreme Court in Network Solutions, Inc. v. Umbro Int'l, Inc., 259 Va. 759, 770 (Va. 2000), reversing the Circuit Court that held that the “judgment debtor's Internet domain name registrations are valuable intangible property subject to garnishment.”

In contrast to the 4th Circuit and Virginia Supreme Court the Court in Kreman v. Cohen, 337 F.3d 1024 (9th Cir. 2003), a decision under the ACPA that emphasized the value inherent in domain names, held that they are personal property and defined property broadly as including “every intangible benefit and prerogative susceptible of possession or disposition…” The Court held that “[l]ike a share of corporate stock or a plot of land, a domain name is a well-defined interest. Someone who registers a domain name decides where on the Internet those who invoke that particular name — whether by typing it into their web browsers, by following a hyperlink, or by other means — are sent. Ownership is exclusive in that the registrant alone makes that decision.”

The most recent discussion on this subject is the 9th Circuit’s decision affirming the judgment in Office Depot. The Court held that “[g]iven the persuasive but not controlling language of the ACPA, and the practicalities involved in bringing suit to execute judgments against owners of domain names, we conclude under California law that domain names are located where the registry is located for the purpose of asserting quasi in rem jurisdiction. Although the question is not directly before us, we add that we see no reason why for that purpose domain names are not also located where the relevant registrar is located.”

Functionality and value have been completely separated. Domain names remain like telephone numbers but are assets valuable in themselves subject to lien and attachment.

The consensus is that renewal of registration does not affect a registrant’s right to a domain name registered in good faith, while a transferee’s rights are determined from the date of its registration. The Panel in Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) describes this as the “traditional” approach. However culpable of bad faith use, as the Policy is presently construed the original registrant is protected from forfeiture. This view was articulated most clearly in Teradyne, Inc. v. 4Tel Technology, D2000-0026 (WIPO May 9, 2000), although raised in the first case decided under the UDRP.

The anomaly of a respondent intentionally targeting a trademark years after good faith registration is a feature of the Policy requiring the complainant to prove both bad faith registration (an act that took place in the past) and bad faith use (an act that is taking place in the present.) The construction of the Policy that permits this has been questioned in a number of recent cases. “Until last year’s decision in City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 (‘Mummygold’), panels had considered the requirements of ‘registration and use’ to be conjunctive, requiring a panel to consider both bad faith first at the date of registration, and to examine whether the respondent’s use was in bad faith.”

The Mummygold line of cases abandoned the conjunctive requirement in favor of a unified approach to the problem based on violation of a continuing duty under paragraph 2 of the Policy to respect the rights of trademark holders. This approach has not met with overwhelming enthusiasm because, for among other reasons, as the Panel in Eastman Sporto notes “whether intended or not, the Mummygold approach

Instead the Panel in Eastman Sporto resuscitates a position expressed in PAA Laboratories GmbH v. Printing Arts America, D2004-0338 (WIPO July 13, 2004) in which the Panel elected reluctantly to follow precedent, but noted his reservations about the “traditional approach.” In making the finding it does

The Panel in Eastman Sporto agrees: “Based upon the record in this proceeding. The Panel deems Respondent’s 2009 renewal of the disputed domain name to be the date on which to measure whether the disputed domain name was registered and used in bad faith.” If this approach were adopted it would be as significant a departure from established law as that proposed by the Mummygold approach. Instead of doing away with the “and” and “or” of paragraph 4(a)(iii) of the Policy domain name registrants will be held accountable for their representation and warranty at each renewal of registration.

Yesterday’ Note on precedent in deciding UDRP cases touched on dictionary words and descriptive terms. Theories of bad faith under subdivisions of paragraph 4(b) of the Policy have similarly been construed. Thus, the respondent violates paragraph 4(b)(i) if it is found to have registered or acquired the domain name “primarily for the purpose” of holding it for ransom. The paragraph prohibits “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.” Registration or acquisition of a domain name for some purpose other than selling, renting etc. may be actionable under a different theory, but commerce in domain names is not prohibited as a matter of law. “[I]f the drafters ... had intended to broadly cover offers to any and all potential purchasers as evidence of bad faith, it would have been a simple matter to refer to all offers to sell the domain name, and not offers to specific parties or classes of parties,” Educational Testing Service v. TOEFL, D2000-0044 (WIPO March 16, 2000).

Offering to sell the domain name to “the owner of a trademark or service mark trademark or service mark or to a competitor of that Complainant” is not as limited as it may appear from the literal reading of the phrase. It includes “general offers to sell the domain name, even if no certain price is demanded,” Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum November 6, 2000); offers to sell the domain name to the complainant’s licensee, Mattel, Inc. v. Unknown c/o Dora Marks, FA0506000490083 (Nat. Arb. Forum July 11, 2005) (Respondent alleged that it purchased the domain name as an “investment”); offers to sell to the general public, Systea GmbH v. Marketpoints.com New Media Branding Services/DNS Administrator, D2006-0324 (WIPO May 13, 2006) (Domain name “offered for sale on a publicly accessible website”); Parfums Christian Dior S.A. v. QTR Corp. D2000-0023 (WIPO March 9, 2000) (holding bad faith where WHOIS information included the phrase “this domain name is for sale”); offers to the “Internet universe,” Cargill, Incorporated v. RN WebReg c/o Rare Names, Inc., FA0904001260307 (Nat. Arb. Forum June 12, 2009), “which necessarily includes both Complainant and its competitors.” Demand for business concessions to relinquish the domain name also falls within the prohibition as do threats to sell to other trademark holders of the mark, Cello Holding, LLC v. Lawrence A. Storey, d.b.a. Lawrence – Dahl Co., AF-506 (eResolution December 21, 2000).

“Primarily for the purpose” also includes extortion for business concessions, Takaso Rubber Products Sdn Bhd v. Selim Tasci and Tasci Dis Tic. Ltd. STI, D2006-1263 (WIPO December 16, 2006). The demand by Respondent for such a business concession in exchange for transfer of the disputed domain name constitutes an offer to transfer the disputed domain name for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. Moreover, the “consideration demanded in exchange for a domain name registration does not have to be monetary in nature to run afoul of UDRP paragraph 4(b)(i), but can be anything of value that exceeds the amount spent in registering and maintaining the domain name,” Gutterbolt, Inc. v. NYI Bldg. Prods. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000). Demands for concessions in pre-arbitration communications veiled as opportunities fall within the proscription. “[I]t is very often an opening gambit in an exercise of inducing the trademark owner to offer to buy the domain name without providing direct evidence to support a complaint under the Policy,” Google Inc. v. Jeltes Consulting/N. Tea Pty Ltd, D2008-0994 (WIPO August 20, 2008).

For consistency in the application of domain name law panelists try to anchor their decisions with citations to earlier cases. It is standard practice by both bench and bar in common law jurisdictions; a practice that is emphasized in the daily Notes. The wealth of domain name law is easily accessible online for prosecuting and defending disputes. I will depart in today’s and tomorrow’s Notes from current decisions to discuss thematic issues raised in earlier cases in which panelists received and affirmed precedential principles in favor of respondents.

Dictionary words used in their ordinary sense and “registered because of their attraction as dictionary words, and not because of their value as trademarks” do not contravene the Policy, The Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum August 6, 2004) (<landmark.com>); 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.”). Even if a dictionary word is accepted for registration the trademark holder has no superior right to the corresponding domain name, absent proof of targeting. No person is entitled to monopolize what is common to all.

Further, where the mark is “a highly descriptive term, a party seeking to establish exclusive rights carries a heavy burden of proof in removing the term from the public domain,” Snowboards-for-sale.com, Inc. v. Name Administration Inc., D2002-1167 (WIPO February 19, 2003) (<snowboardsforsale.com>). The general rule that applies to dictionary words applies to common linguistic constructions in trade and the professions. For example, the disputed domain name in Super-Krete International, Inc. v. Concrete Solutions, Inc., D2008-1333 (WIPO October 14, 2008) is <supercrete.com>; the Complainant’s trademarks SUPER-CRETE and SUPER-KRETE registered after the domain name are neologisms common in the industry to mean super strong concrete. Similarly with scientific terms employed to call attention to the content of the website, such as <rorschachonline.com>. In Hogrefe AG v. Ney Limonge, D2008-1206 (WIPO October 3, 2008) the Complainant had a registered trademark for RORSCHACH. Respondent, a clinical psychologist, registered the disputed domain name to distribute “an interactive online computer program used in the administration of the Rorschach inkblot test.” In eSnipe, Inc. v. Modern Empire Internet, Ltd., D2009-0719 (WIPO August 5, 2009) the confusing similarity involved the expression “snipe.” Wikipedia defines sniping as it relates to auctions as “the process of watching a timed online auction (such as on eBay), and placing a winning bid at the last possible moment (often seconds before the end of the auction), giving the other bidders no time to outbid the sniper.” The Complainant owns SNIPE IT!; the Respondent registered <snipeit.com> prior to the registration of the trademark, but even if the timing was otherwise, given the established meaning of snipe it “leaves open the strong possibility that entities in different parts of the world might quite likely come up with the same or similar snipe-related names independently of one another.”

Unless there is “intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common generic term,” Ultrafem Inc. v. Royal, FA 97682 (Nat. Arb. Forum Aug. 2, 2001) (<instead.com>); see, CITGO Petroleum Corporation v. Matthew S. Tercsak, D2003-0003 (WIPO February 28, 2003) (<mystic.com>; domain name is confusingly similar to Complainant’s mark but Respondent operates a bona fide business from that address). It is precisely because the web sites in these and other cases are unyielding to any inference that the Respondent intended to target the complainant's audience under paragraph 4(b)(iv) of the Policy that the complaint must be dismissed.

Reverse Domain Name Hijacking Warranted When Allegations of Bad Faith are Without Substance and Should Never Have Been Made

Rule 15(e) of the Rules of the Policy which authorizes a finding of reverse domain name hijacking is symmetrical with paragraph 4(a)(iii) of the Policy. Either party can be found in bad faith. The difference of course is in the consequences. The respondent forfeits the disputed domain name while the complainant is merely chided. There has been considerable criticism aimed at some panelists for their myopia is refusing to find against complainants even where complainant’s bad faith is manifest. A guideline for reverse domain name hijacking with criticism was offered by the Hon. Neil Brown, Q.C. in a brief essay that appeared in a Domain Name Wire blog on July 13, 2009.

A holder of a later acquired trademark has no legal basis for capturing an earlier registered domain name, yet avoids sanction. The most recent example is the decision in CP Masters B.V. v. RareNames, WebReg, D2009-1673(WIPO February 11, 2010) in which the Panel essentially applied his own (subjective) standard, denying an order of RDNH because, well to put it charitably, it does have a trademark; that is, it has prevailed on the jurisdictional requirement. The Panel’s reason for giving the Complainant (incidentally, represented by counsel) a pass is, well, ludicrous, clearly rejecting Mr. Brown's strictures (or perhaps never have read them): “The very obviousness of the gap in the Complainant’s case [that it had no trademark right when the domain name was registered] suggests more strongly that the Complainant seriously misunderstood what was required for a finding in paragraph 4(a)(iii) of the Policy, rather than that the Complaint was brought dishonestly.” Translated, this means according to that panelist that not understanding the law or being ignorant of it is sufficient to avoid sanction.

Compare this with a decision from the first full year of the UDRP to see how the Rule should properly be applied. The Panel in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000) put it this way:

Thank you for today’s note – I’m glad you and at least one other person noticed and took exception to this obvious miscarriage of the limited justice available to the Respondent.

What you may find even more interesting is that in a pre-UDRP correspondence – following many rounds of good faith negotiations – I implicitly warned the same attorney that if his client went the UDRP route that I would argue for a finding of RDNH – based solely on the facts.

But this quote, from the decision – it’s priceless: “The very obviousness of the gap in the Complainant’s case suggests more strongly that the Complainant seriously misunderstood what was required for a finding in paragraph 4(a)(iii) of the Policy, rather than that the Complaint was brought dishonestly.”

The Panel knew full well the entirety of the correspondence that the parties exchanged and nevertheless found that this Complainant “seriously misunderstood what was required”? But I told Complainant what was required!

Maybe the Panel thought we should’ve accepted the Complainant’s offer (not that that’s part of the RDNH calculus)? It’s the only rationale that makes some sense to me; on the other hand, the “asking” price was above $100K months before this Complainant ever inquired about it (due in no small part to the type-in traffic it generates naturally, i.e., from Portuguese-speaking users of the Internet searching for images).

Maybe next time I need to spell that out for the Panel? That we weren’t holding the domain hostage vis-à-vis Complainant: the price was north of $100K before we ever heard from them and without any regard to them?

Respondent with Future Intentions for a Domain Name Must “Demonstrably Demonstrate” His Plans

In deciding on the issue of a respondent’s good or bad faith conduct, there are two obligatory questions: “Why did the Respondent register the Domain Name [in which he has no right or legitimate interest]?” and, Why would one register as a domain name the name of another entity, knowing it to be the name under and by reference to which that entity carries on business?” In Israel Bar Association v. Itai Ram, D2010-0003 (WIPO February 15, 2010) the questions are rhetorical since the answer is self-evident in this case.

As between paragraphs 4(a)(ii) and 4(a)(iii) of the Policy there is a symmetry. In the first the respondent has the burden of rebutting the complainant’s prima facie proof that it lacks any right or legitimate interest in the domain name which essentially means proving good faith; in the second, the complainant must prove conjunctive bad faith. Although lack of rights or legitimate interests is not conclusive on the issue of bad faith – the onus remains at all times with the complainant – it is not without meaning. The Respondent in Israel Bar offered proof to support future intention for the disputed domain name, but a future oriented intention is not equivalent to “demonstrable preparations” to do that which it allegedly intends. It could be said that an unpersuasive rebuttal is worse than no evidence, because no evidence increases pressure on the complainant to prove bad faith whereas an implausible explanation actually assists the Complainant with its burden.

The Respondent (Israeli educated) offered two (arguably inconsistent) explanations for registering <israelbar.com>, that he intended to create an “an online website for mobile devices that will provide a portal with links to popular Israeli bar” and the other for “a website for mobile devices that will provide an online bar (similar to the Google Bar, or the Yahoo Bar) with links to popular Israeli websites.” The Panel noted that if the latter was a clarification of the former “that the Google and Yahoo ‘bars’ are more commonly referred to as ‘toolbars’ and <israelitoolbar.mobi> would have been a much more informative domain name than the Domain Name <israelbar.mobi>.” In any event “the Respondent’s explanation does not ring true.”

In those cases in which a respondent lacks rights or legitimate interests but complainant’s proof is insufficient to establish registration in bad faith it is generally found that the respondent got there first. Either the trademark postdated the registration of the domain name as in CP Masters B.V. v. RareNames, WebReg, D2009-1673 (WIPO February 11, 2010) or it was a generic or descriptive term lacking market penetration to have come to the respondent’s attention as in Patricia Kelley v. Innovation HQ, Inc., D2009-1723 (WIPO February 6, 2010). However, if a respondent cannot rebut complainant’s proof on the second requirement and on the third requirement cannot explain why it registered a disputed domain name identical to a well known trademark then it is an easy step to conclude that it registered it to take advantage of the trademark.

If the respondent is going to offer an explanation it should be both factually consistent and related to the applicable law. Implausibility of explanation affects how the speaker himself is regarded, credibly or not. The Panel in Israel Bar concluded that “In the absence of an explanation, the Panel is entitled to infer that the Respondent’s intent was abusive. Where, as here, there is an explanation, but the Panel does not believe it, the Panel has no hesitation in holding that the Respondent’s intention was abusive.”

Personal and surnames are not protected under the UDRP unless their owners can demonstrate their names are associated in the marketplace as sources of goods or services. Personalities in sports, entertainment and the arts have generally succeeded in capturing infringing domain names, but business people have been rejected – Israel Harold Asper v. Communication X Inc., D2001-0540 (WIPO June 11, 2001 – although as I pointed out in the Note for September 23, 2009, there is emerging a more expansive view for entrepreneurs associated with business ventures even if not named after them, Chung, Mong Koo and Hyundai Motor Company v. Individual, D2005-1068 (WIPO December 21, 2005).

In contrast, names of personalities plucked out of the history book and adopted as trademarks are not treated under the surname rule. It has been transformed into a symbol. The question turns on whether the complainant can carry the burden of demonstrating recognition of the symbol in the marketplace sufficient for the Panel to conclude that the respondent had actual notice of the trademark's existence. This was the issue in Churchill Insurance Co., Ltd. v. Churchhill financial Services, Ltd., FA 0906001270466 (Nat. Arb. Forum September 1, 2009) (U.K. Complainant; Respondent resides in the Cayman Islands) in which the complaint was denied because “Churchill” was not transformed in all markets. It was a symbol for one and an historical personality only for another because of its limited market range. However, no such conclusion could be drawn from adoption by General Motors of the surname of Antoine de la Mothe Cadillac, the French Governor and founder of Detroit. The Complainant in General Motors LLC v. Shenzhen Belding Golf Planning Co.,ltd., D2009-1781(WIPO February 10, 2010) demonstrated that its trademark CADILLAC has migrated from automobiles to luxury goods and golf courses. Like ROLLS ROYCE the CADILLAC trademark denotes superlative quality. It is irrelevant that the trademark registrant appropriated the name of a former president, governor or cultural figure if the respondent is using the domain name in a trademark sense.

The Respondent in General Motors nevertheless denies that its choice of <cadillacgolf.com> is in any way a violation of the Policy because “[i]n China, the Trade Mark is only registered and used by the Complainant in respect of automobiles and automobile manufacturing... The Complainant's international Class 28 registration for the Trade Mark does not cover golf-related products.” This argument perpetuates a misunderstanding of the UDRP and of trademark law. It is not the Class that necessarily defines a holder’s exclusive rights to a registered trademark, but the likelihood that consumers will be misled by the use of a name identical or confusingly similar to the trademark into believing that the website is sponsored by the trademark holder. In any event, the Complainant in General Motors demonstrated that it uses CADILLAC in its golf related ventures and that the Respondent was piggybacking on the association of the trademark.

Where there is a parity of right, the first to register a domain name comprised of a string of syllables, two or three letter acronyms, single words or combination of letters or words is entitled to it. In these circumstances, the “first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest,” CRS Technology Corporation v. Condenet, Inc., FA93547 (Nat. Arb. Forum March 28, 2000). First come first served implies registration of a domain name that equally could have been acquired by a trademark holder who was outraced to the registry. However, it is not being first that secures the right, but being first to register the domain name in good faith. “A person who successfully registers a domain name on the basis that [he was] the first to apply to register it secures the registration subject to the three threefold requirements of the Policy” (emphasis added), VRL International Ltd. and International Lifestyles, Inc. v. Relevansanalys, D2009-0974 (WIPO September 3, 2009).

The first to register principle is illustrated in Neptune Orient Lines Limited v. cnwonder.com c/o Wu Guiqiang, FA1002001310401 (Nat. Arb. Forum April 14, 2010) contending over the three letter second level domain name <nol.com>. The Complainant claims to have operated under the trade name NOL since 1968, although it only obtained registration of it as a trademark subsequent to the registration of the domain name. Although the Complainant “has proved that it is entitled to claim protection of its mark ‘NOL’ and its tradename ‘NOL’ before Respondent began to use the domain ... Respondent is likewise free and allowed to claim protection upon the ‘NOL’ domain name, as it is making a bona fide offering of services, certainly linked with the name used in the domain” (Underlining in original).

A competitor who by happenstance registers a domain name descriptive of its services and not purposely to disrupt its counterpart who has also adopted the mark is entitled to retain the domain name. One Creative Place, LLC v. Kevin Scott, D2006-0518 (WIPO June 16, 2006) (<montrosejetcenter.com>):

Finally, where the mark is used by a “multitude” of businesses – “nol” is incorporated in a number of trademarks – Panels have approached the issue in one of two ways. Either the mark is too weak to satisfy the bad faith registration requirement or too diluted for protection by any of the multitude, in which event the first to register is entitled to keep it.

There is a sliding scale, on one end of which celebrities whose talents are offered in the marketplace are privileged. Personal names of artists, performers, musicians, authors and athletes have been found to pass the evidentiary hurdle for common law trademark rights. Others who may be equally celebrated in their non-marketplace fields, have to scramble for trademark recognition. Two cases illustrate the divide, Hill Harper v. Moniker Privacy Services / Domain Administrator, D2010-0225 (WIPO April 14, 2010) and Mr. Cinar Orge Saylan and Mr. Caglayan Orge Saylan v. GKG.NET Domain Proxy Service/The Fact Co., Winston Smith, D2010-0248 (WIPO April 9, 2010). In the first, the Complainant’s activities establish his right to protect his name from commercial exploitation; but not in the second. The difference lies in the reach of their respective names as commodities in the marketplace. The measures of fame and success are pecuniary and material; the helping professions (at least with the Panel in the second case) do not qualify.

Respondents appeared in neither case and in both the domain name resolved to pay-per-click websites. Although “the mere offering of a domain name for sale to the Complainant or to a competitor of the Complainant for more than the out-of pocket costs directly related to the Domain Name does not constitute evidence of both bad faith registration and use within the Policy ... [because] paragraph 4(b)(i) ... requires the additional showing that this was the Respondent’s primary purpose for registering or acquiring the Domain Name,” an intent, for commercial gain, to attract Internet traffic as a result of confusion between the Domain Name and the Complainant’s mark violates paragraph 4(b)(iv) of the Policy.

Hill Harper is well-known as an actor and author in the United States of America. Dr. Turkan Saylen on the other hand is a non-commodified celebrity. She is “a well-known professor, doctor and humanitarian in Turkey. Dr. Saylan was the founder of the Association for the Support of Contemporary Living, a well-known NGO in Turkey ... [who] received the International Gandhi Prize in India ... [as well has] won numerous peace awards and other accolades in Turkey.” On top of this she “has also published numerous books, articles and other scholarly works.”

The result is often unexpected and unfair. This was anticipated in the the WIPO Second Report. The Report states at paragraph 179 that “the application of the UDRP to the protection of personal names [should be authorized only] when they constitute trademarks,” Paragraph 179. At 199, the Report goes on to state that this may result in an “injustice” and is undoubtedly an unhappy limitation: “many sensitivities [will be] offended by the unauthorized registration of personal names as domain names” and the “result is that there are some perceived injustices.”

The Panel denied Dr. Saylan common law rights to her name and concluded that “this dispute is better served by being adjudicated by the appropriate authority under Turkish law.” The problem is that the Respondent resides in the U.K. “If anything is clear from the numerous past panel decisions focusing on personal names, it is that the UDRP policy was not intended to provide comprehensive protection to personal names.” It is not absolutely correct that academics celebrated in their fields have been refused protection. In a criticism (alleged fair use) case, the Panel found that the Complainant had common law protection, Joseph Schlessinger, Ph.D. v. PrivacyProtect.org / Harold O Connor, JS Players Association, D2009-0695 (WIPO July 21, 2009). It can be added further that if “anything is clear” a court action in Turkey against a person a continent away to vindicate a reputation and obtain rights over one’s own name is an illusion.

This Note reviews an issue not frequently before a Panel, namely complainant’s right to maintain a subsequent proceeding where the current status indicates that its license to use a trademark has, rightly or wrongly, been terminated in favor of the respondent. Licensees are among those included as allowable complainants under paragraph 3(a) of the Rules of the Policy. Ordinarily, the jurisdictional requirement “can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world,” Advanced Magazine Publishers Inc. v. Computer Dazhong, D2003-0668 (WIPO December 12, 2003).

In Jetfly Aviation SA v. Jens K. Styve / Domains by Proxy, Inc. and Happy Landings S.A., D2010-0244 (WIPO April 5, 2010) the complainant was the terminated licensee of JEFLY. The question of wrongful termination of license of one party and its grant to another party is outside the scope of the Policy. In Jetfly, the Complainant has already commenced proceedings against the Respondent in Geneva in relation to the latter’s use of JETFLY and the corresponding domain name, <jetfly.com>. The matter in the Geneva court is pending. The Complainant’s right to use the trademark depends on the court’s decision. The facts read like a boardroom farce. The Complainant and Respondent were both formed by the same founders, the Respondent more recently. More recently still the founders terminated their firstborn in favor of their second. The taking from one and giving to another suggests a falling out between investors in the Complainant and the founders, which the founders resolved by taking their ball to another playground. Adding spice and intrigue to the equation, the Complainant either in retaliation or, perhaps, in anticipation of the founders’ action, obtained a Community registration for JETFLY (evidently without opposition) against which the founders recently instituted a cancellation action.

The Policy does not authorize commencing a proceeding “during the pendency of a related civil action,” Automobile Atlanta, Inc. v. Treadway Solutions, FA0905001264729 (Nat. Arb. Forum July 20, 2009). Rule 18(a) reads: “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” However, a number of panelists have expressly authorized the complainant to refile its complaint if the factual circumstances change. Thus, in Cluett, Peabody & Co., Inc. v. Sanford Bus. Writing Serv., FA 95842 (Nat. Arb. Forum December 12, 2000) the panel allowed a complaint to be refiled because the previous Panelist had “expressly reserved the right of Complainant to recharge bad faith registration and use of the domain name in issue.”

Since the Respondent is under license and no court has ruled against it the “Panel is unable to conclude ... that the Domain Name was acquired by the Respondent and is being used in bad faith.” That is the only conclusion that can be drawn from the record. However, “if the Geneva court hands down a decision to the effect that the Respondent has no rights or legitimate interests in respect of the Domain Name, but does not order transfer of the Domain Name to the Complainant,” then, if the Complainant wishes to refile its complaint the Panel believes that the Complainant should be permitted to do so.”

Domains that are identical or confusingly similar to a well known trademark of which the respondent cannot plausibly deny knowledge are on one end of the spectrum. In a great majority of these cases respondents do not bother to answer the complaint unless they can offer or the record contains sufficient evidence that supports a defense under paragraphs 4(c)(i) or (ii) of the Policy. A recent example of a default in which, however, there was sufficient evidence in the record is General Electric Company v. Estephens Productions, D2009-1438 (WIPO December 17, 2009) denying transfer of <geentertainment.com>. Where the trademark is lesser or plausibly unknown to the respondent, the evidence in support of forfeiture must be persuasive. An example of an unpersuasive submission is Letstalk.com, Inc. v. Inofirma, Ltd c/o Domain Administrator, FA1002001310279 (Nat. Arb. Forum April 21, 2010) (the Panel was “quite troubled by the apparent carelessness with which the Complaint in this proceeding was prepared.”)

The Complainant in Letstalk received registration of LETSTALK.COM on the Principal Register in 2010, although it “had made active use of its later-acquired mark for several years prior to Respondent’s registration” of <letztalk.com> in 2003. The Complainant resides in California; the Respondent in Russia. “[I]t does not appear that [Complainant’s] mark is used outside the United States (aside from the fact that Internet users worldwide presumably can view Complainant’s website).” The Panel decided to go directly to the issue of bad faith. He apparently agreed that the domain name was confusingly similar otherwise he could have terminated the proceeding, but he found it unnecessary to pass judgment on either paragraphs 4(a)(i) or 4(a)(ii) of the Policy. Whether similar or not or even confusingly so, the Complainant lost for failure to prove bad faith.

As a rule of thumb, it is more probable than not that domain names identical or confusingly similar to famous or well known trademarks have been chosen for their value to capture Internet traffic, regardless of website content. The opposite is true for trademarks less well known or composed of common words and descriptive phrases. Even in the presence of confusing similarity bad faith is not a given. It is proved by showing that the registration was directed at the Complainant or its trademark. “The essence of the Complaint is an allegation of bad faith, bad faith targeted at the Complainant,” Asset Mktg. Sys., LLC v. Silver Lining, D2005-0560 (WIPO July 22, 2005); Terana, S.A. v. RareNames, WebReg, D2007-0489 (WIPO June 7, 2007) (requiring that “the trademark owner or its mark [be] targeted by the domain name registrant”). Denial of knowledge is less plausible the greater the market penetration of complainant’s trademark or where the market penetration is local or regional rather than national. This is particularly so where the parties are engaged in the same business in the same territory, Texas Wind Power Company v. Wind Works c/o Savvy Dog Design, LLC, FA0903001252746 (Nat. Arb. Forum May 12, 2009) (<texaswindworks.com>).

In finding for the Respondent in First American Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO April 20, 2001) (<firstamerican.com>) the Panel held that it would be “inconsistent with existing trademark principles and with the limited language and scope of the Policy” to construe paragraph 4(b)(iv) “without a requirement of direct action by the Respondent.” It would

Respondent’s content in First American did not support a conclusion that it was targeting the Complainant, whereas incorporating a competitor’s trademark with a minor variation – substituting “works” for “power” in Texas Wind Power – does. Letstalk is in the category of First American, not Texas Wind Power.

Companies come and go and reputations grow or wither, but at the start new businesses are one among many offering similar goods or services. When parties acquire their respective interests close in time and are geographically distant from each other the question of the respondent’s knowledge of the trademark holder is a significant factor in determining parties’ rights. Knowledge can be inferred from the complainant’s reputation. The more it has and the wider its sales the greater the likelihood that the complainant or the trademark came to the respondent’s attention and this and other evidence can point to abusive registration. Lack of market penetration is likely to undermine a complainant’s contention that the respondent registered the domain name to take advantage of the trademark. Woe betide a complainant who proves only its reputation within a year or two of commencing proceedings. Lack of proof suggests the complainant had no reputation earlier in time than the evidence it offers.

The disputed domain name <www.wallpaperdirect.com> in C Brewer and Sons Limited v. Vertical Axis Inc. / wallpaperdirect.com/ c/o Nameview Inc. Whois IDentity Shield, D2009-1759 (WIPO April 11, 2010) was registered in 2002; the Complainant has been “operating its online business under the Trade Mark via its ‘www.wallpaperdirect.co.uk’” since September 2000. “The Respondent has stated that it did not know of the Complainant or its registration for the Trade Mark when the Respondent registered the disputed domain name.” The parties are geographically distant from each other. The Respondent may be mendacious – it has been party to prior UDRP proceedings, albeit winning more than it lost – but proof of knowledge is the Complainant’s burden.

One tack for a complainant is to demonstrate that its reputation traveled even to the far corners of the earth and that its trademark is and was well known in the country of respondent’s residence. In C Brewer, however, the Complainant offered evidence limited to “its sales in 2007, 2008 and 2009 ... [together with] evidence of its advertising expenditure in 2008 and 2009, and a reference to the Complaint being quoted in an April 2009 article in the United Kingdom broadsheet newspaper, ‘The Independent’.” This is not good enough to settle the question that it was in 2002 what it claims for itself in 2009. “Is” is not “was.” We have met this problem recently in Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010); and Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010). In contrast, a trademark composed of a generic term or common word that achieves an International reputation “puts the Complainant’s claims on quite a different footing,” Easygroup IP Licensing Limited v. N. Hilton, Easycentre.com, D2005-0935 (WIPO October 31, 2005) (<easycentre.com>).

It cannot be said, even by its most sympathetic admirer that Complainant’s WALLPAPER DIRECT achieved in its early years an International reputation such that the Respondent would be guilty of bad faith when 8 years earlier than the commencement of the UDRP proceedings it registered a generic domain name. Although it “has been long-established that the doctrine of laches has no bearing on domain name proceedings filed under the Policy ... delay, together with the lack of evidence of goodwill and reputation in the Trade Mark when the disputed domain name was registered, and the Respondent’s assertion that it had never heard of the Complainant when it registered and commenced use of the disputed domain name, gives rise to the inference that the disputed domain name has not been registered and used in bad faith.” Neglecting proof of reputation assists the respondent.

Credibility as a Factor in Determining Parties' Rights to a Disputed Domain Name

Although UDRP complaints are resolved solely on papers without benefit of discovery and with no right of confrontation it would be a mistake to discount credibility as a factor in determining parties’ rights to a disputed domain name. Parties make their appearances in submissions and can be judged for their candor or lack of it, the plausibility of their arguments, their statements or silences and by the evidence they produce or suppress. In DigiPoS Store Solutions v. Hiname Inc., D2010-0297 (WIPO April 16, 2010), the Respondent pleaded good faith registration which, however, was belied by its conduct.

The persona a party projects can be critical to how it is perceived by the Panel and ultimately to its success or failure in the proceeding. Either party can fail on credibility. To take a few examples. In Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd., FA0501000406512 (Nat. Arb. Forum March 9, 2005) the Panel stated this point bluntly: “Complainant’s allegations in the Complaint are so conclusory, and so obviously unsupported by evidence, that it calls Complainant’s other assertions into question. Parties in UDRP proceedings are well advised not to advance arguments that are so patently without merit that it undermines their credibility.” Obversely, in Hurriyet Gazetecilik Ve Matbaacilik A.S. v. INFOMED, D2008-0127 (WIPO March 30, 2008) (<hurriyet.net>, Turkish parties) the Respondent made a good impression. In Scarlett Johansson v. Tristan Dare, D2008-1650 (WIPO December 16, 2008) the Respondent’s contemptuous attitude – his disdain for “the entire concept of bad faith a concept which he described in his Response as ‘pragmatically speaking, beside the point, since bad faith is an arbitrary qualitative identifier that is neither culturally, neither structurally universally applicable’ ” – did “nothing to inspire confidence in the credibility of the Response.” Some explanations are so highly dubious as to stretch credulity. In H-D Michigan LLC v. Paul Hagerty, FA0906001269352 (Nat. Arb. Forum August 24, 2009) “Respondent argues that its selection of the domain name <h-d-roadhouse.com> reflects the fact that his business is called ‘Hagerty's Drivin Roadhouse.’ However, Respondent has not presented evidence in support of this contention, even after being provided a second opportunity to do so by Interlocutory Order.”

In DigiPoS, prior to the filing of the complaint the Respondent demanded an excessive price for the domain name and shortly after changed content on the website. The Panel dismissed the Respondent’s contentions that it “did not really” make such a demand and in any event “it was in response to approaches from the Complainant” as not meriting “any serious consideration.” On the issue of changing content the Panel noted that “[w]hilst the Respondent is at complete liberty to establish a website offering IPO related advice, it has failed to furnish any evidence to suggest it has the right to resolve the disputed domain name, comprising the Trade Marks, to such a website.” Sanitizing the record after notice does not cure but supports the complainant’s contention that the domain name violates paragraph 4(b)(iv) of the Policy. Sansum Clinic v. Sansumclinic.com / c/o Whois Identity Shield, D2008-1008(WIPO August 28, 2008).

Not Granting a License is Not Dispositive of a Respondent’s Legitimate Interest

Holding a trademark does not guarantee a right to a corresponding domain name even where the trademark antedates the registration of the domain name. The paragraph 4(c) defenses, in fact, expressly recognize differences of timing. Paragraph 4(c)(i) of the Policy opens with the phrase “[b]efore notice of the dispute” expressing thereby that a respondent’s right or legitimate interest in a disputed domain name is not limited by an earlier acquired trademark. Paragraph 4(c)(ii) covers the situation in which prior to the registration of the domain the respondent had been commonly known by that name regardless whether another person earlier acquired the same name for its business sign. Paragraph 4(c)(iii) confers legitimacy on a registration as a matter of public policy where the trademark exists prior to the domain name registration. Implicit in all three defenses is the understanding that the parties have potentially parallel rights to the domain name and that the respondent only stands in an inferior position if the proof establishes that the registration was abusive.

In Bluearc Corporation v. Blue Arc, D2010-0181 (WIPO March 29, 2010) the Complainant “makes the argument that due to the notoriety and fame associated with the BLUEARC trademark, it would essentially be inconceivable for the Respondent to make a bona fide or a legitimate noncommercial or fair use of the disputed domain names without the intent for commercial gain.” This argument, however, presumes what is not the case that a respondent’s defenses are limited in scope to paragraph 4(c)(iii). “Notoriety and fame” are sometimes in the eyes of the beholder. According to the Respondent “Blue Arc-Advanced IT Solutions is a legally registered company in Turkey” where it is resident and since the website is written in Turkish “there would be little benefit for any Internet user not fluent in the language.”

Existence of a company bearing the name of the domain satisfies paragraph 4(c)(ii) of the Policy. Operating a business that makes a bona fide offering of goods or services “before notice of the dispute” satisfies paragraph 4(c)(i). While it is true that the Respondent registered the disputed domain name without obtaining the Complainant’s permission, the “Complainant does not address the fact that the Respondent can indeed make a legitimate bona fide commercial use of the disputed domain names which is what the Respondent appears to be claiming.” In this respect the Complainant has “not sufficiently evidenced that the Respondent has no legitimate interest to the disputed domain names in light of the evidence put forth by the Respondent and upon the Panel’s assessment of the evidence.”

There is an additional factor in these cases involving the respective businesses of the parties. It may under certain circumstances be relevant if the parties service the same sector of the market. The Complainant in fact focused its argument primarily on paragraph 4(c)(iii) alleging that the Respondent was not making a legitimate noncommercial or fair use of the domain name. However, there is “no evidence that the Respondent is intentionally trying to divert Internet users to its domain pages or to create a false association with the Complainant or its business.” Rather, the “services offered by each respective Party are distinctly different and it would be unlikely that any party seeking to find assistance with its data storage needs would associate the Respondent with the Complainant. This is even more unlikely considering that many of the services of the Complainant are not even offered by the Respondent.”

Similarity of Domain Name and Trademark Unsurprising Where Parties Service Same Market

Although in AroundThe Rings Inc. and World Football Insider Inc. v. Dunsar Media Company Limited, Duncan Mackay, Sarah Bowron / Contactprivacy.com, D2010-0153 (WIPO April 7, 2010) the Panel found the similarity between domain name and trademark confusing on a side by side examination – “on this element [the parties’ cases] are finely balanced” – he held that the Respondent had a legitimate interest and did not register the domain name in bad faith. The Complainants hold a registered trademark in WORLD FOOTBALL INSIDER and the Respondent registered (together with several other domain names with different extensions) <insideworldfootball.com>. According to the Complainants the “Respondent has simply reversed the two components of the Complainants’ name and omitted an ‘r’....” Reversing or rearranging components is not an uncommon ploy in cybersquatting; omitting or substituting letters is a common feature of typosquatting. However, when the respondent makes an appearance and defends its conduct, the complainant has to do more than complain about similarity even if it is confusing.

To bolster its contention, the Complainants offered proof that the Respondent copied material from its website on two occasions and “backdated” them to make it appear that they were printed on “the date of the relevant event.” The Panel found this unpersuasive because both “news items relate[ed] to events in the football community. It is to be expected that the Complainants and Respondent will sometimes (and indeed often) publish articles on the same topic.” Since “the Complainants did not bring any evidence that the Respondent had seen the corresponding stories on the Complainants’ website ... [t]he Panel accept[ed] the Respondent’s evidence that it obtained the information for its articles from press releases and syndication services which reported the stories.” The analysis pointedly emphasizes the importance of closing the circle; for when it remains open the inference is that there is no evidence to disprove the respondent’s submission.

However, the Respondent's legitimate interest in Around The Rings turns on its proof that it was engaged in a publishing business servicing the same market which was ongoing “before notice of the dispute” [paragraph 4(c)(i) of the Policy]. Moreover, it held a registered logo trademark for INSIDE WORLD FOOTBALL and held other domain names “intended as an expansion of its ‘inside’ brand.” The Complainants failed to offer any countervailing evidence to establish “that the Respondent selected the disputed domain names to trade off the Complainants’ reputation.” In fact, it offered no evidence of its reputation and, although the parties inhabited the same niche, there was no evidence that the Respondent was aware of the Complainant.

Right to Regain Domain Name Earlier Registered than Trademark Not Dependent on Respondent’s Use, Non-Use or Underutilization Of It

Unless a complainant has a trademark right with priority over the respondent’s choice there is no principle of law that allows it to acquire a domain name by forfeiture. This does not mean that a respondent’s earlier registration necessarily defeats a prima facie case, but a complainant’s argument that it has a superior right because it has a trademark and the respondent does not, PPTP.NET, LLC v. Hoa But, FA1002001310141 (Nat. Arb. Forum April 12, 2010), or that the respondent either uses in bad faith, underutilizes (in the complainant’s opinion), keeps its domain name inactive or refuses to respond to complainant’s correspondent is based on a false premise, Success Bank v. ZootGraphics c/o Ira Zoot, FA0904001259918 (Nat. Arb. Forum June 29, 2009). The superior right of a holder refers to its exclusive use of its trademark in commerce rather than to a corresponding domain name. In that respect only the holder has superiority because it has priority, not the other way around, and this superiority looks forward from the holder’s acquisition of its trademark, not backward to encompass another's right. To rule otherwise would introduce a new rule of law favoring holders of later acquired trademarks.

In attempting to establish a better claim or a superior right to the domain name the Complainant in NETtime Solutions LLC v. NetTime Inc. c/o Chad Wagner, FA0810001230152 (Nat. Arb. Forum December 19, 2008) for example proposed that a respondent can lose its right to a domain name if “his company has been dormant for at least 10 years; that his use of the domain name has not been in connection with bona fide offering of goods and services; that the domain name has been crippled by its non-use; [and] that by ceasing to trade Respondent has extinguished his rights in the name.” However, even if a complainant is successful in proving that the respondent lacks rights or legitimate interests in a domain name because of its use the respondent’s registration prior to the complainant acquiring a trademark right is a barrier to proving bad faith. The law is that a “later business cannot just register a trademark and then subsequently use this procedure to remove a website from the Internet that uses the same name,” Rohl, LLC v. ROHL SA, D2006-0645 (WIPO July 12, 2006).

In PPTP.NET, LLC the Complainant argues that the Respondent “has not established any corporation, trademark or service mark pertaining to or referencing the domain name [<pptp.com>].” Neither has it responded to “multiple attempts at communication regarding the domain name.” From these facts the Complainant infers that the “current domain holder ... has acted in bad faith by ... renewing the domain name registration ... despite not having a website present(sic) at all.” The Complainant is represented, although whether the person is a lawyer is not indicated. Lawyer or not, none of these arguments has any merit. A respondent whose registration of the disputed domain name predates the complainant’s trademark has no obligation to respond to a complainant, although failing to respond is a factor in considering a finding of reverse domain name hijacking, and does not need to have a corporate form or trademark to register and renew a registration.

Even if the Complainant in PPTP.NET had a trademark, which it was unable to prove, and for which reason alone it failed to state a claim, it could not have succeeded in removing the domain name from the Respondent because the right it claimed for itself commenced 13 years after the registration of the domain name. Similarly, in Mariposa Ltd. v. Stonecutter, Don Sawtelle, D2010-0200 (WIPO March 28, 2010): “While Complainant may consider that it has a 'better claim' to the term 'Mariposa' than Respondent, that is not sufficient to establish abusive domain name registration and use” (Domain name registered in 1995; trademark registered 2008).

The Policy Offers Relief for Abusive Registration of a Domain Name Not Infringement of Trademark

We have to remember that the UDRP is a proceeding of limited scope. The respondent has agreed to submit to arbitration only the issue of abusive registration. The Panel is not empowered to rule on trademark infringement, although infringement of the right secured by trademark is certainly the basis for a ruling in favor of the complainant. “Infringement” refers to the complainant’s right to exclude others from using the trademark in a domain name to gain an advantage at the complainant’s expense. The word “infringe” appears twice in the Policy at paragraph 2 and multiple times in the WIPO Final Report.

Paragraph 2 of the Policy is a representation by the respondent that “b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;” the concluding sentence of the paragraph reads that it is the registrant’s “responsibility to determine whether [its] domain name registration infringes or violates someone else's rights.” However, the WIPO Final Report states that this “is not an unqualified representation that a domain name registration does not infringe the intellectual property rights of others. It is a representation that the registration does not, to the best of the applicant’s knowledge and belief, infringe the intellectual property rights of others.” The requirement is due diligence at a reduced level of investigation.

Keeping these thoughts in mind, a trademark is one thing and not another; it is only what the holder claims on its registration or the symbol by which it is recognized. It is not a truncated (reduced to initials) or design version of the trademark, unless they too are found to be unregistered trademarks in their own right. The initials “LV” could stand for Louis Vuitton, as the Complainant alleges in Louis Vuitton Malletier S.A. v. Demand Domains, Inc., FA1003001310816 (Nat. Arb. Forum April 14, 2010), but to the Respondent it could be the ISO country code for Latvia; or, as it was found in an earlier case by the same Complainant it could be Las Vegas, Louis Vuitton Malletier S.A. v. Manifest Information Services c/o Manifest Hostmaster, FA0609000796276 (Nat. Arb. Forum November 7, 2006) (<lv.com>). There are multiple registrations for LV on the Principal Register. The Complainant’s registrations (of which there are many in different classes) consist of a design of the letters with the “L” sitting atop the “V”. The Complainant does not as such have a trademark for the two letters side by side as do a number of other registrants.

The incorporation of “lv” to form the domain name <lvmobile.com> may in fact be a trademark infringement, but not an abusive registration because “the combination [lv and mobile] does not clearly and obviously associate to the Complainant.” Whatever the truth may be “an Internet user seeing the domain name <lvmobile.com> is more likely to expect to find information on Latvian mobile phones on the connecting site, than the fashion goods / luxury accessories of the Complainant.” While

It is not that the Complainant’s iterated “lv”design on its fashion products is not instantly recognizable to the public, the problem is that it has no plain LV registered in the Class that includes mobile phones. This does not foreclose an action for trademark infringement, however.

Domain names are not literally owned. Rather, they are held for a length of time pursuant to a registration agreement that must periodically be renewed. The better analogy is to a valuable leasehold interest with an option to renew that can be lost if the registration is allowed to lapse. Trademark holders incorporating their trademarks in domain names have a greater degree of security because trademarks are property in the full sense of the term and inadvertent lapse in renewing a registration does not affect intellectual property rights. Unregistered trademark rights are not less protected in theory but in practice it depends on their classification. Where persons have earned their trademark rights as athletes, musicians, entertainers and writers their surnames are not merely generic or descriptive, but reach higher on the scale and deserve greater protection. The Complainant in Barbara Kingsolver v. Kingsolver Computer Solutions, FA1003001313077 (Nat. Arb. Forum April 13, 2010) owns an unregistered trademark in her surname as a best selling author. Her agent inadvertently allowed <kingsolver.com> to lapse.

Panels have taken one of three positions when the complainant fails inadvertently to renew its domain name: 1) favoring the fanciful and arbitrary and perhaps the suggestive; 2) disfavoring the generic and descriptive; and 3) rejecting excuses altogether. Offsetting the principle that “[n]ormally those who sleep on their rights do so at their peril” is another, that “the law generally incorporates various safeguards to avoid undue forfeitures and unjust enrichments.” Official Pillowtex, LLC v. Smadar Zangi, FA0411000366168 (Nat. Arb. Forum January 6, 2005). These equity principles can be employed where

Surname trademarks have an elevated distinction. Kingsolver may not be “famous” but she is a best-selling novelist in the English language. Registering as a domain name a surname from a different cultural community without investigation and directing the website to an English speaking audience that includes references to the complainant constitutes wilful blindness of the complainant’s rights. The Respondent in Kinsolver offered the following defenses

The fact that a respondent purchased the domain name at an auction or from a third party who registered after the lapse and passed it along with populated content to the next purchaser is not a defense. It is “the responsibility of domain name bidders and registrants to determine whether and how they may be entitled to use the domain names,” Intagent LLC v. Dominor LLC, D2008-1878 (WIPO January 29, 2009) (<intagent.net>). The second and fourth points are worth attention because of the geographical and cultural distance between the parties. If it is true that the Respondent in Kingsolver has no knowledge of the Complainant – the cultural divide being so great it may be expected that he does not – Why should he be charged with bad faith registration, in effect wilful blindness? The reason, is that the Respondent has chosen to employ the domain name to capture traffic in Kingsolver’s cultural community and not in its own, from which in using the domain name in bad faith (as evidenced from the content of the website) the Panel drew the inference that it also registered the domain name in bad faith for its trademark value. See, also Budget Rent A Car System, Inc v. Admin, Domain, D2010-0149 (March 31, 2010), Canadian Complainant; Chinese Respondent, in which the Panel concluded that the Respondent must have known, but the more logical inference is that the domain name was registered for its trademark value since it continued to address the English speaking market for rental cars in Australia and elsewhere around the world including Canada.

Domain names composed of a number of words that may include one identical to a trademark is not ipso facto confusingly similar to it. Low though the bar is, the complainant has still to prove confusing similarity where the domain name builds on a term and the composite plausibly attracts Internet users looking for a website unrelated to the complainant. This point is brought into focus in Doctor’s Associates Inc. v. Atomix, D2010-0060 (WIPO April 6, 2000) involving <mysubwayrewards.com>. The Complainant is the trademark holder of SUBWAY. It has no trademark for “My Subway Rewards” or “Subway Rewards.” A “trademark owner does not necessarily ‘own’ all combinations of marks using its principal word,” Scholastic Inc. v. ScholasticAdvising.com and Ramit Sethi, D2001-0946 (WIPO November 4, 2001) (<scholasticadvising.com>).

Representation by counsel is no assurance that a submission satisfies a party’s burden of proof. In Doctor’s Associates counsel evidently assumed that no more was necessary than to point out inclusion of the trademark in the domain name. The moral of the story is that a complainant has at the least to make a showing that the accompanying word(s) notwithstanding the composite is confusingly similar to its trademark. However, where the shared term “is bracketed between other words which could quite conceivably be used in combination to convey a meaning unassociated with the SUBWAY mark per se,” Id, “it is insufficient simply to demonstrate rights in a word that forms a part of a domain name.”

There is a distinction to be made between those compositions of words in which “the distinctive nature of a trademark [that is] wholly subsumed within a domain name nevertheless makes the domain name, confusingly similar to the mark under the Policy” and those that create a separate identity. It does not “inevitably follow[] from the fact that a domain name incorporates a trademark in its entirety that a domain name must be confusingly similar to that mark,” citing Research in Motion Limited v. One Star Global LLC, D2009-0227 (WIPO April 9, 2009), in which the panel observed that “[e]ach case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”

Where it cannot be said with certitude that the comparison of the domain name and the trademark yields confusing similarity then the complainant must do more than assume that its market penetration is sufficient. The domain name in Research in Motion is an excellent example of certitude. There is no ambiguity that in registering <unofficialblackberrystore.com> the Respondent was targeting the Complainant’s trademark. The word “blackberry” is used in its trademark sense; not in its generic, as a fruit. Because that is not clear with <mysubmarinerewards.com> the Complainant has to show how in this specific case the bracketed words are aligned in the public’s mind with the trademark. In rejecting confusing similarity, the Panel is drawing fine (and some may say very fine) distinctions. Both BLACKBERRY and SUBMARINE are well known trademarks, but the bracketed words in the former give prominence to the trademark, which is not the case in the latter.

In the 1950s Dr. Alfred Tomatis, a French ear, nose and throat specialist developed a psycho-therapeutic method that is known as the “Tomatis Method”. In 1979 he obtained a trademark on the name TOMATIS which he assigned to Tomatis International SA (TISA). After his death in 2001 TISA encountered financial difficulties and the trademark was sold by a trustee in bankruptcy to Tomatis Developpement SA, the Complainant in Tomatis Developpement SA v. Mozart-Brain-Lab, D2009-1790 (WIPO March 31, 2010). The Complainant manages public and private Tomatis centers in several countries. The Respondent’s Chairman who was trained by Dr. Tomatis and as an acolyte had a close professional relationship with him performs “research on the Tomatis method and has published scientific articles in the Journal of Neurotherapy.” The Respondent itself operates a Tomatis museum and organizes Tomatis training. It states that it uses the domain name <tomatis.com> to communicate “general facts about the Tomatis method, its origins and field of application.” As the Panel notes “[t]he circumstances of this case are unusual” in that the Respondent does not fit into “the usual template for a cybersquatter wanting to cash in on trademarks or to tarnish or dilute them.”

Nevertheless, the Complainant has a trademark and the Respondent is using it without permission. Either the Respondent has an affirmative defense under paragraph 4(c)(iii) of the Policy or the registration and use of the domain name is in bad faith. The contents of the website (although downplayed by the Respondent) indicates that the “Respondent is deriving an indirect benefit … in that is one of many purveyors of the Tomatis method.” Respondent’s Chairman stated in a declaration that he believed that “Tomatis” was a generic term. “However, a subjective belief does not excuse the fact that, in order to demonstrate good faith the Respondent should not have taken the transfer of the disputed domain name [from a prior registrant whose license it knew had been terminated] when it must surely have known of the Complainant’s trademark rights.”

The Respondent’s alternative point is frivolous, but worth noting because it emphasizes the sequence that must be followed when a claim is made that a trademark has become generic. The Respondent asserted that the “Complainant has to prove that the term is not descriptive.” This is manifestly without merit; in fact, reverses the parties’ burdens of proof. Once “the USPTO has made a determination that a mark is registrable, by so issuing a registration, as was the case here, an ICANN panel is not empowered to nor should it disturb that determination,” U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum December 9, 2003). Where the complainant has registered the trademark with “the United States Patent and Trademark Office (or a comparable foreign trademark office)”, the respondent has the burden of rebutting the presumption of validity, Town of Easton Connecticut v. Lightning PC Inc., FA0808001220202 (Nat. Arb. Forum October 12, 2008).

However, the essence of the argument that “Tomatis” has become generic for a therapeutic method and should be cancelled is not without merit if pursued in the right forum. In Pilates, Inc. v. Current Concepts Inc., et al., 120. F.Supp.2d 286 (S.D.N.Y. 2000) (which the Respondent cites and the Panel comments on) the Court “cancelled the United States ... trademark for the name ‘Pilates’ because it was a generic term used by consumers to identify a particular method of exercising.” In the Respondent’s opinion, the “same principle applies to the word ‘Tomatis’ … [because the] intent of Dr. Tomatis was to promote his therapy in order to help as many people as possible.” But in Tomatis “[t]here are no court proceedings in contemplation” and absent a judgment cancelling the trademark, the “facts in this case are not such that the Panel should decline to order transfer of the disputed domain name.”

It is not surprising that holders of trademarks on the lower end of the classification scale insist that their compositions are suggestive; something more than merely generic or descriptive which may be denied registration. They want to push their symbols up the scale; to claim for them more than their worth; to give them added value. They do this protectively, of course, because, after all, as dictionary words their trademarks are also common currency, available for use by others without permission for commercial purposes having nothing to do with the trademark holder. Marriott International Inc. and Marriott Worldwide Corporation v. Avalon Resorts Pvt. Ltd., D2010-0172 (WIPO March 22, 2010) (COURTYARD and <Avalon-courtyard.com>). The prefatory comment holds true unless there is evidence to support the conclusion that the respondent chose the disputed domain name for its association with and intending to exploit the complainant’s trademark, as in Oneworld Alliance v. Thomas Ruane, D2010-0043 (WIPO March 11, 2010) (ONEWORLD EXPLORER and <oneworldexplorer.com>).

The Complainant in Marriott International argued that “[t]he addition of a dictionary term to a trademark does not make the disputed domain name substantially different to the mark.” This is true as a general proposition, and sufficient for jurisdiction, but combining dictionary terms does not foreclose rights or legitimate interests in a domain name and is not a per se violation of the holder’s trademark rights. “Courtyard” is not removed from the public domain because it may be distinctive when applied to hotel accommodations, but that does not prevent the mark from having “any number of associations not connected with the Complainant.” A domain name comprised of a common dictionary term violates a trademark holder’s rights if the protected term alone or in combination is used in such a manner as to suggest an association reserved to the holder, but it cannot preclude other uses that create different associations.

Although there is only one COURTYARD there are many “courtyards.” The Respondent operates 52 luxury services apartments in New Delhi” under the name “Avalon Courtyard – Residences & Suites”. “Courtyard” associated with “Avalon” is not “Courtyard” associated with Marriott operated hotels. A “party seeking to establish exclusive rights carries a heavy burden of proof for removing the term from the public domain,” Lodging Kit Company Inc. v. Natalie Soffer, FA0909001283398 (Nat. Arb. Forum November 5, 2009) (the Complainant was unable to persuade the USPTO that the term LODGING KIT was anything other than “merely descriptive’ and had to settle for the Supplemental Register).

Where Marriott’s “Courtyard” aspires to the suggestive Avalon’s is purely generic. Courtyard is defined as “an unroofed area that is completely or mostly enclosed by the walls of the large building” which Respondent stated is “descriptive of its properties.” In any event, the Respondent owned the name “Avalon” and conducted a legitimate business which supported its defense under paragraph 4(c)(i) of the Policy. Rather than close the proceedings at this point, the Panel continued its analysis into the bad faith element to reject two other contentions as being without merit. First, the Complainant alleged that the Respondent was taking “unfair advantage” of its “rights in some way” (emphasis added); second, that the domain name was being held passively to redirect the Internet user to another website (<avalonhospitality.com).

The argument that “it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain featuring the Complainant’s COURTYARD mark” is dangerous because it invites the Respondent to establish its credentials. Where a respondent offers evidence legitimizing use of a word which another uses as a trademark it is “possible to conceive a plausible circumstance” different from that imagined by a complainant. The second argument is equally unpersuasive in “the circumstances of this case [because] ... the disputed domain name … cannot be properly characterized as being ‘inactive’ merely because it reverted to another web address.” In Marriott International the Respondent's domain name reverted to its home website.

Panelists hold divergent views on several legal principles as they apply to domain names and for this reason to whom the Provider assigns the matter can be determinative to the outcome of the proceedings. This is abundantly clear in the line of cases discussed in recent Notes that support the view that bad faith registration can be found retroactively despite evidence to the contrary. The theory is that a respondent has a continuing obligation under paragraph 2 of the Policy not to “infringe upon or otherwise violate the rights of any third party.” This synchronic approach to the interpretation of text flattens history by making the past a part of a continuing present. However, the UDRP expressly separates the past from the present. On this divergence of views the difference is serious because it can result in the respondent forfeiting the domain name.

There is also divergence among panelists when it comes to ruling on a complainant’s bad faith in filing a complaint which is authorized by the UDRP. It is less serious because it does not affect the respondent’s right to the domain name, yet by refusing to grant the declaration it withholds a remedy to which a respondent is entitled. It is true that the respondent has the burden of proof, but there are panelists who refuse to stain the complainant despite the Policy requirements under any circumstances. The Panel's rejection in Mosaic International, LLC v. PZ -- No Auction, FA1002001307578 (Nat. Arb. Forum April 7, 2010) fails to provide any reasoned decision under factual circumstances that warrant it.

Some panelists in this school excuse themselves by expressing the belief that the declaration of bad faith is discretionary. There is no support for this in the Policy. As applied to a Panel the word “discretion” appears in two ICANN rules: it has discretion to 1) request further statements or documents (Rule 12) and 2) decide whether to suspend or terminate the administrative hearing (Rule 18). “Discretion” does not appear in connection with the provision that addresses a complainant’s bad faith. Rather, Rule 15(e) uses “shall” in granting the remedy in favor of the respondent. In law “shall” is understood to be a command:

Rule 1 defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The facts in Mosaic are not on the border. The Respondent registered the domain name in 1995; the Complainant first made use of the term MIA in 2004. The fact that the Respondent offered to sell the domain name “for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name” is irrelevant in a diachronic construction of the Policy because for her the domain name is an asset. To exponents of a synchronic construction who see the past as the beginning of the present rather than its own period, the advertised offer to sell the domain name may fall afoul of the continuing obligation under paragraph 2 and expose her to a finding of retroactive bad faith. Perhaps the Mosaic Panel refused to file a declaration against the Complainant not because he was lazy (as one commentator noted) but because he secretly admires the synchronic construction of the Policy while uncomfortable in applying it.

If this is the case, then the Respondent was fortunate. Imagine if the National Arbitration Forum had assigned a supporter of synchronism. He (or she) would have found the Respondent guilty as charged even though the act of registration had occurred 9 years before the Complainant first commenced using the term in the marketplace. In that case the Panel did the Respondent a good turn by finding in her favor and she should not complain. After all, the Complainant did demonstrate rights in the present and since the present includes the past its rights must be deemed retroactive even before it had an existence. In this light, should the Panel not rather be praised than blamed for not declaring the Complainant in bad faith?

Orthographic variations such as adding, omitting and transposing letters suggest that the respondent’s motivation for registering a disputed domain name was to capitalize on the pre-existing goodwill associated with the complainant’s trademark. This was implicitly admitted by the Respondent in two early cases, Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, D2000-0578 (WIPO August 28, 2000) and Eddie Bauer, Inc. v. John Zuccarini aka Cupcake Party, D2001-0224 (WIPO April 26, 2001). Although this multiple named Respondent rarely made an appearance he answered these two cases with the provocative assertion that he had as much right to register typosquatted domain names “as the person who owns the correct spelling of domain name” on the theory that they were distinguishable from the trademarks. This view of the parties’ respective rights and other arguments invoking the U.S. Constitution failed to ignite the Panel or to catch hold generally and in close to a 100 cases against the same Respondent the domain names were transferred.

Because typosquatting is “inherently parasitic and of itself evidence of bad faith,” Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO January 21, 2003) it is more usual for respondents to default than appear. So it was in Academy, Ltd., d/b/a Academy Sports & Outdoors v. Roiquest.com sprl c/o Domain Administrator, FA1002001306758 (Nat. Arb. Forum March 26, 2010) involving the domain name <acadamy.org>. Challenged Internet users may be surprised that this spelling is incorrect. More surprising is that the parties are geographically distant from each other and that the term “academy” (correctly spelled) alone or with other words appears in over a thousand active trademarks registered by or pending with the USPTO. The Panel found that the Respondent’s website included links to goods “in direct competition with Complainant’s business.” Presumably, the website also contained other links of a different kind having no relation to the Complainant.

A domain name comprised of a variation of a dictionary word, however, is different from a trademark well known in the marketplace, as were Zuccarini’s targets. In those cases, there was no issue as to the targets. On the other hand, with misspelled dictionary words any one of many trademark holders can step forward and prevail if somewhere on the offending website or by a search function it can find a link to competitive goods or services. In this event the first to sue can claim bad faith even if it was not the one who the respondent was actually targeting. It would seem that the whole point of having a misspelled domain name confusingly similar to a generic or descriptive trademark is to capture the widest possible audience without thought of any one of the dozens of trademark holders who could claim to be targeted.

Passage of time can support a respondent’s defense of legitimate interest if “before any notice” it used “the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services,” paragraph 4(c)(i) of the Policy. In the case of DirecTV, Inc. v. Pimenov Pavel, FA0911001296479 (Nat. Arb. Forum February 19, 2010) the Respondent registered <directTV.com> in 1999 and operated the disputed domain name for many years before notice of the dispute. However, “not all use prior to notice of the dispute can qualify as bona fide use,” World Wrestling Federation Entertainment, Inc. v. Rift, D2000-1499 (WIPO December 29, 2000). The website in DirecTV offers services similar to those provided by the Complainant and this raises a question as to whether the Respondent’s offering is bona fide.

Whether the operation of a business is bona fide depends upon a number of factors: its history, either of operation or in preparation for it, the contents of its website and the respondent’s explanations for having a domain name confusingly similar to another’s trademark. A bona fide business operation presupposes that the respondent is using the disputed domain name to market goods or services unrelated to those offered by the complainant. In this respect, a business with a history is more likely to be bona fide than one without, but if the respondent is a direct competitor its registration of the disputed domain name falls afoul of paragraph 4(b)(iii) of the Policy. The defense has been construed to exclude competitors, but can be effective for parties that incorporate a complainant’s trademark under the four-part test formulated by the Panel in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).

The term “legitimate interest” in paragraphs 4(a)(ii) and 4(c) of the Policy refers to the respondent’s entitlement to its choice of domain name, rather than the legality of its business. A business may be lawful, but its use of the domain name mala fides as, for example, Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, D2000-0878 (WIPO September 21, 2000) (<canonink.com>, <canoninkjet.net>:

If legality of business were the standard, then “any cybersquatter that conducted a lawful business could always find refuge,” The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., D2005-1318 (WIPO February 22, 2006). The Respondent in Abu Dhabi Future Energy Company PJSC v. John Pepin, D2008-1560 (WIPO December 22, 2008) may very well have in mind a legitimate business for <masdarcity.com> and <masdarcity.net> but its registration of those domain names evidenced “exploitative intent.” On the other hand, “it would take an exceptional case to succeed where there was no malicious or exploitative intent directed at the complainant [or its trademark] at time of registration of the domain name,” Velcro Industries B. V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, D2008-0864 (WIPO July 28, 2008) (<velcroart.net>).

In DirecTV the Respondent’s “web site basically consists of a long list of links leading to websites of TV channels from over one hundred countries. According to the Response, Respondent has created a software program allowing recording content broadcasted by TV channels. This means that Respondent’s business is related to TV channels, which also happens to be Complainant’s line of business.” This and other proof offered by the Complainant led the Panel “to conclude that Respondent, who conducts a business in the same industry sector as Complainant, in all likelihood registered the domain name in dispute knowing about Complainant, its DIRECTV marks, products and services.”

Competitor’s Use of Similar Terms for Domain Name a Basis for Jurisdiction but Not a Basis for Forfeiture

Choosing a trademark composed of generic or descriptive elements has the virtue of being easily remembered but the disadvantage of being easily varied by a competitor interested in reaching the same public. When it comes to competitors, while there may be confusing similarity it is not necessarily consequential of bad faith. A competitor’s variation on a common theme is not condemned because it is confusingly similar to the complainant’s trademark. To state an actionable case involving terms on the lower end of the classification scale in the context of a party having a fair business interest, the domain name would have to be identical to the complainant’s trademark.

It follows that where the respondent is a true competitor (not simply using the domain name to offer competing goods or services) confusing similarity is only good for establishing jurisdiction. In USADATA, Inc. v. K2, Incorporated and US Data Corporation, FA1002001307329 (Nat. Arb. Forum April 1, 2010) the Complainant owned USADATA on the Supplemental Register. Ordinarily, registration on the Supplemental Register is not a sufficient basis for jurisdiction absent proof of distinctiveness. In this case the Complainant proved that the trademark had a sufficiently long presence in the marketplace to establish (at least for UDRP purposes) common law rights. In registering its domain names the Respondent omitted an “a” in forming <usdatacorporation> and <usdatawest.com>. Ordinarily, this would raise an issue of typosquatting, but in this case the implication is avoided because “US” and “data” are generic and descriptive.

The Respondent in USADATA frankly admitted that it registered and “is using the disputed domain names to COMPETE with Complainant and not to disrupt Complainant’s business.” The distinction between competing and disrupting may be overly subtle, but it is not unfair. The result would have been different if the Respondent were a domainer using the website to offer competing goods or services (a violation of paragraph 4(b)(iv) of the Policy), but as a true competitor it gains an advantage by being in the market prior to the initiation of the dispute (a defense under 4(c)(i) of the Policy). The Panel cites two cases to support this proposition from the first year of the UDRP, Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) in which the Respondent registered the domain name in connection with a fair business interest; and Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) in which the Respondent had an active website that had been in use for two years and where there was no intent to cause confusion with the complainant’s website and business. A more recent case discussed in the Note on January 25, 2010 is 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) involving AUSTIN AREA BIRTHING CENTER in which the Respondent omitted “area” and the gerund from “birthing” to form <austinbirthcenter.com>.

The Policy distinguishes between a predator competitor and a competitor with a fair business interest. The former violates paragraph 4(b)(iii) of the Policy: “[Y]ou have registered the domain name primarily for the purpose of disrupting the business of a competitor.” It denotes an intentional act by a competitor who has “registered the domain name primarily” for that purpose. InfoSpace.com, Inc. v. Tenenbaum Ofer, D2000-0075 (WIPO April 27, 2000).

For trademarks on the weaker end of the spectrum the complainant cannot simply rely on the respondent’s mode of business. Competitors are not deprived of their choices unless the evidence demonstrates adoption for a proscribed purpose. Although professional domainers may be held to a higher standard of investigation their choices do not “not automatically lead to the assumption that the disputed domain name was registered in bad faith.... At least some evidence supporting bad faith is required,” Novo Nordisk A/S v. Andrew Melcher, D2010-0095 (WIPO March 19, 2010). The higher standard applies in cases involving well-known trademarks or trademarks of businesses for which denial of knowledge suggests “willful blindness” – a concept formulated in V&S Vin & Sprit AB v. Ooar Supplies, D2004-0962 (WIPO December 27, 2004) which according to the Panel “is equivalent to intent under most jurisdictions.”

The higher standard of investigation for domainers was further developed in a trio of cases between 2005 and 2007. In Mobile Communication Service, D2005-1304 (WIPO February 26, 2006) the Panel held that “even a cursory search [by Respondent] on search engines like Yahoo! and Google would have shown that [“mobilecom”] is a trademark.” In Media General Communications, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO September 23, 2006) the Respondent failed to “indicate that it explored the possibility of third-party rights in any way before registering the Domain Name [<mcmh.com>] and offering it for sale.” Panels insist on some demonstration that the respondent has implemented appropriate safeguards against infringing a third party’s rights in its choice.

However, where a domain name identical or confusingly similar to a trademark is on the weaker end of the spectrum the respondent’s explanation will generally be assertive rather than defensive. By defensive I simply mean that the respondent’s counter positions are likely to be diversionary claims and denial of knowledge. Sometimes the diversionary claims have substance In the case of Novo Nordisk involving the term FLEXTOUCH the Respondent (who acquired the domain name in 2009 prior to the Complainant's trademark registration) pointed out that the word and variants of it such as “flexitouch” “is used by a multitude of third parties to describe various products.” This suggests that the word is so common that no claim can be made for distinctiveness.

It is not in many of these cases that the respondent’s choice is free of uncertainty. What is essential is that in marshaling its case the complainant has to understand the proof required to establish its contention. Lacking proof of intention undercuts bad faith. In Novo Nordisk the Panel added that the Complainant “did not provide any evidence that the Respondent registered the disputed domain name with knowledge of the Complainant’s right in the term.” It is not sufficient for the complainant to argue “He must have known....” without explaining “how exactly the Respondent should have known, in view of the Respondent’s claim that the term ... is not very distinctive, fanciful or arbitrary as such, is widely used by many others than Complainant and that the Respondent is unfamiliar with the Complainant and its trademarks,” EURO DATA GmbH & Co. KG v. Excel Signs, D2009-0465 (WIPO May 5, 2009) (<eurodata.com>).

The Conjunctive Requirement of Bad Faith Enforced Regardless of Respondent's Subsequent Bad Faith Use, However Egregious

In at least one respect the UDRP is a friendlier forum for respondents than the Anticybersquatting Consumer Protection Act (ACPA). This comes about because the conjunctive requirement under UDRP requires the complainant to demonstrate that the respondent’s act of registering the disputed domain name was in bad faith regardless of its subsequent use. The ACPA requires either/or proof: if the registrant either “registers, traffics in, or uses a domain name” protected as a mark, 15 U.S.C. § 1125(d)(1)(A)(ii). The Panel in BioClin B.V v. MG USA, D2010-0046 (WIPO March 22, 2010) leaves no doubt of his view about the Respondent’s conduct, but was constrained by the terms and precedent of UDRP to rule in its favor. Conversely, a respondent’s success in a UDRP proceeding is no guarantee of its winning an ACPA action. Nike, Inc. v. Circle Group Internet, Inc. (N.D. Ill. May 21, 2004) which rejected the ICANN Panel’s reasoning in Nike, Inc. v. Circle Group Internet, Inc., D2002-0544 (WIPO September 10, 2002).

A number of panelists have had second thoughts on the construction of the UDRP that allows the respondent to (egregiously) use the domain name in bad faith. There are three branches of this new construction, respectively “retrospective bad faith”, “unified concept” and “judging respondent’s conduct at renewal of registration.” The Panel in BioClin is among those who reject all three variations in favor of the consensus that holds that proof of subsequent bad faith use does not vitiate good faith registration. The new construction detailing the consequences of bad faith use following good faith registration (dating from mid-2009) represents an attempt to give a remedy to complainants under circumstances in which the respondent is clearly taking advantage of their trademarks. However, the Panel’s view in BioClin is this was not the “intention of the framers of the Policy.” This does not mean, of course, that the Policy is set in stone. On many issues the jurisprudence has evolved to accommodate changing circumstances, but in this particular circumstance the language of conjunction disallows finding bad faith registration “then” for conduct “now.”

The Panel makes it clear in obiter dicta that the complainant's remedy against a respondent’s subsequent bad faith use of the disputed domain name must issue from a court of law:

The reason why the Panel in BioClin denied that complaint is that the Complainant failed to “provide any submissions or evidence directed to the question of bad faith registration as at February 23, 2002, and the Panel has found no basis on the present record for concluding that the Respondent was acting in bad faith vis a vis the Complainant and its mark at that time” (Emphasis added). If the complainant authorizes use of its trademark in a domain name without an agreement for its return upon termination of the right or license – see the Note for March 30th, “Continuing Legitimate Interest in Domain Name After Termination of Business Relationship” – then the issue is properly one for resolution (for parties subject to jurisdiction in the United States) under the Lanham Act.

Adding a geographic term to a famous trademark is not less infringing because the trademark also happens to be a dictionary word. The addition neither avoids confusing similarity nor in the case of famous trademarks a finding of abusive registration. The question is whether the domain name – confusingly similar though it may be to the trademark – is distinctive in its own right. The Respondent in Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany, D2004-1068 (WIPO April 18, 2005) for example, was unable to make such a case for adding geographic terms to “vogue” such as <newyorkvogue>; similarly, Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum March 27, 2007) adding “Cancun” to the trademark CHEAPTICKETS.

Some dictionary words are common in an industry and their concurrent use neither surprising nor necessarily indicative of bad faith. Nevertheless, where the respondent is a competitor, as it is in Interactive Data Corporation v. Maharaja Global c/o Tamal Das Gupta, FA1001001305447 (Nat. Arb. Forum March 29, 2010), it must explain its addition of a geographic location. Complainant is the trademark holder of ESIGNAL registered by the USPTO in 2001 and ESIGNAL PRO registered by the USPTO in 2006; the respondent registered the disputed domain name <esignalindia.com> in 2005. Although the Respondent provides a similar, although less expensive service than the Complainant it is nevertheless in competition with it. The service is legitimate but that does not legitimize the use of the domain name as a defense under paragraph 4(c)(i) of the Policy. Because the Respondent is not commonly known by the domain name and is exploiting the domain name for commercial gain it cannot prevail under paragraphs 4(c)(iii) and 4(c)(iii).

The question, then, comes down to the twin issues of reputation and timing. “The fact that both parties are competitors, while sufficient to establish Respondent’s lack of rights or legitimate interest in the domain name, does not show that Respondent has registered and used that domain name to disrupt the business of Complainant.... Complainant has not established that its ESIGNAL trademark is so well known that Respondent can be presumed to have been intended to trade on Complainant’s reputation and goodwill in registering and using the domain name in dispute.” The problem for complainants with trademarks composed of what are essentially colloquial or familiar expressions is that they are common currency. As such, the evidence of bad faith registration particularly where the use is consistent with the domain name cannot rest on speculation.

As the Panel emphasizes in Interactive Data “[l]ack of rights or legitimate interest under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii).” Mere assertion of bad faith is no more than a feather on the scale. The Respondent’s business is limited to the stock exchanges in India. It is not sufficient merely that parties are in competition in using an unsurprising expression as its Internet moniker for the services offered. The general rule is that without supporting facts or specific examples to supply a basis for drawing a conclusion the respondent cannot be deprived of its choice of domain name.

Registration of a domain name inadvertently allowed to lapse is more likely to be recaptured if the complainant acts quickly, but not otherwise. A lengthy delay supports the concusion that the loss was intentional. Radio Italia S.p.A. v. Mdnh Inc, Brendhan Hight, D2010-0329 (WIPO May 14, 2010). The Complainant owned <radioitalia.com> until 2000. The domain name was acquired by a company that was itself acquired in 2005 by the parent corporation of the current Respondent. The business model of these acquiring companies is to “buy[] up expired domain names that have strong incoming links and traffic, and then sign[] up those domains as search affiliates.”

“Strong incoming links and traffic” suggests that the domain name may have been associated with a trademark. There is developing a body of law that holds that high volume registrants are held to a higher standard of investigation. It is particularly applicable to domain names identical or confusingly similar to trademarks well-known in the marketplace; less applicable to trademarks composed of generic terms and descriptive phases that can be exploited for their dictionary meanings or cultural associations. “Radio Italia” is not in the class of arbitrary or fanciful trademarks, but also it is “not totally descriptive and devoid of distinctive character.”

The earliest expression of this standard is set forth in Red Nacional De Los Ferrocarriles Espanoles v Ox90, D2001-0981 (WIPO November 21, 2001) (<renfe.com>). The Complainant is responsible for the commercial exploitation of much (if not all) of the Spanish railway system, which explained its traffic volume and should have triggered investigation. The Panel held that “where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, [that conduct] constitutes registration of that domain name in bad faith.”

In Red Nacional De Los Ferrocarriles Espanoles, however, the Complainant acted quickly to recover the domain name. This was also true of the Complainant in ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010) and also of the Complainant in Intagent LLC v. Dominor LLC, D2008-1878 (WIPO January 29, 2009) (“While it is understandable that Respondent considers it unfair that a domain name registrar may auction an expired domain name the use of which may be encumbered by trademark rights, such auction of expired names is consistent with the registration system adopted and implemented by ICANN. It is the responsibility of domain name bidders and registrants to determine whether and how they may be entitled to use the domain names.”)

In contrast, Radio Italia acted after 9 years only when it was unsuccessful in purchasing the domain name from the Respondent. It offered no explanation for its loss of the domain name for “reasons which the Complainant describes as a mistake.” Elapsed time is more likely to confirm abandonment of the domain name. Even if at the time of the Respondent’s acquisition “it had turned its mind specifically to this domain name ... it may well have concluded the Complainant was not interested in the disputed domain name any longer.” As far as the Respondent's use of the domain name, “it seems equally plausible ... that it may have been registered for its descriptive significance as for its trademark significance.”

The line separating issues within from those outside the scope of the Policy is not always clear. Contract disputes relating to parties’ relationships are generally outside the scope, but facts can bring them within. For example, Arma Partners LLP v. Me, Victor Basta, D2009-0894 (WIPO August 26, 2009) involved the rights of a withdrawn partner to maintain ownership of the domain names. He had signed deeds transferring the intellectual property and domain names to the Complainant. Those deeds were made part of the record. “[S]ince by those agreements both the disputed domain names became beneficially owned by the Complainant and since the Complainant also became entitled to the ARMA PARTNERS name and trademark, the Respondent cannot claim rights to or legitimate interests in either of the disputed domain names.” This, despite the fact that the domain names had originally been registered by the Respondent in good faith. “It is ... clear from clause 18.9 of the LLP Deed ... that on resignation as a Member from the Complainant the Respondent was obligated to transfer all property to the Complainant. The disputed domain names were clearly business assets of the Complainant ... and, as such, were the Complainant’s property for the purpose of clause 18.9 of the LLP Deed.”

Contracts are also involved in Mitchell Madison Group v. Jim Quallen, FA1004001317575 (Nat. Arb. Forum May 21, 2010). But, in this case, the Panel dismissed the complaint on the grounds that the claim was outside the scope of the Policy. The parties had previously entered into an arbitration settlement agreement in connection with an employment dispute that provided that “any and all claims that were available at the time of arbitration would later be barred from legal proceedings.” The proof supported the Respondent’s contention that the Complainant had known about the disputed domain name prior to the settlement agreement and chose not to deal with it in the arbitration.

The Panel in Mitchell Madison cites Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) for the proposition that cases that “hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty” are outside the scope of the Policy. This generalization does not fit all sizes, however. It is not that the parties in Mitchell Madison “differ[ed] markedly with respect to the basic facts ... [or that] there is no clear and conclusive written evidence.” The facts were clarion, but the Complainant offered no evidence and had no explanation to rebut the arbitration settlement agreement.

In contrast to Arma Partners that established the Complainant’s beneficial ownership of the disputed domain names, the parties in Mitchell Madison had expressly ruled out further legal proceedings. In essence, the Complainant’s claim was barred by the doctrine of collateral estoppel. The Complainant had the opportunity to deal with the domain name issue and elected not to pursue it. The UDRP cannot be used to circumvent the parties’ agreement in either party’s favor.

Fan clubs generally come into existence without express permission and sometimes over the (frequently delayed) objection of the honoree to celebrate his or her life work and achievements. The WIPO Overview poses the following question: “Can a fan site constitute a right or legitimate interest in the disputed domain name?” (paragraph 2.5). There are two views, denominated View 1 (an active, noncommercial fan site may be a legitimate interest) and View 2 (a fan has no right or legitimate interest in a domain name that infringes a celebrity’s trademark). View 1 reads

Even fanatics – “the flip side of critics” as one panelist noted – have a right to establish a fan site. However, the respondent has a heavy burden to establish that the site is pristine; devoted purely to the celebrity without any commercial aspirations. The Panel in Richard Dawkins v. J. Gabriel, FA1004001317157 (Nat. Arb. Forum May 21, 2010) held that the “mixture of links negates the argument of ‘fair use’.” This standard also applies to criticism sites. In neither case can the respondent argue lack of knowledge of the target or celebrity. The sole issue is whether the respondent meets the elements set forth in paragraph 4(c)(iii) of the Policy.

The tolerance expressed in View 1 is defeated if the alleged fan site is neither genuine nor active. In Freddy Adu v. Frank Fushille, D2004-0682 (WIPO October 27, 2004) in which the Panel found that Respondent attempted to cash in on athlete’s success in the guise of a fan club. In Stevland Morris a/k/a Stevie Wonder v. Enrique Matta, FA0805001189962 (Nat. Arb. Forum July 9, 2008) the Panel stated that “[a]lthough the disputed domain name may be non-commercial, it has never acted as a fan site and it therefore fails the second of the requirements for legitimacy set by the WIPO Overview.” Similarly with the domain name registered by the Respondent in Eddy Merckx Rijwielen Cycles NV vs. Irfan Khalil, D2009-0074 (WIPO March 12, 2009)(eddymerckx.com). It is not a defense that the Respondent “has not had the time and the money to create the website but that it is still in the planning process.” Worse yet, the “factual circumstances in this matter are that the website attached to the Disputed Domain Name points to a parking site which largely ... offer[s] goods and services that compete with those of the Complainant.”

The term “commercial gain” is construed broadly against the respondent even where the celebrity may receive some incidental benefit of publicity. The website must also be limited to the celebrity honored and not used “to promote other celebrities and, predominantly, advertising of third-party products,” Tom Cruise v. Network Operations Center / Alberta Hot Rods, D2006-0560 (WIPO July 5, 2006) (<tomcruise.com>). The “fan” in Richard Dawkins argued that his honoree “was ill-known or little known, particularly in the U.S. in 1999, when the Respondent established the domain name.” Although a complainant’s reputation at time of domain name acquisition is an important element, it is not decisive; particularly not decisive in the case of writers, musicians, television personalities, athletes (Freddie Adu), etc. whose reputations grow in time.

This is not to say that a domain name dedicated to the achievements of a writer such as Dawkins should be taken from the fan and awarded to the honoree if the contents demonstrate the respondent's good faith intent, Swissbike Vertriebs GmbH v. Executive Standard Limited, D2008-0498 (WIPO June 19, 2008) (<raleighbikes.com>) in which the Complainant offered no evidence to rebut the Respondent’s contention that the website is a non-commercial forum targeting fans of Raleigh bikes. The Panel members in Dawkins are subscribers to View 2, the intolerant position.

The twin bete noires of the market are confusion and deception, which (as one legal mechanism) the UDRP is designed to combat. Domain names are invitations; they either identify the person behind the door or announce the subject or business therein promoted. In the case of trademarks, their reputations precede them. Business thrives on volume. The Respondent in yesterday’s Note [Cisco Technology, Inc. v. Nicholas Strecha, E-Careers LTD, D2010-0391 (WIPO May 7, 2010)] offered IT Training to help students understand and use Cisco technologies, but it registered a domain name that except for the addition of “uk” was identical to the Complainant's trademark. Geographic additions to the dominant word of the trademark do not create a distinctive mark. Bad faith in that case was predicated on the Respondent using a trademark as its barker to compete with the Complainant for students in the primary market.

In Rockwell Automation, Inc. v. Jose Hernandez, FA1004001316859 (Nat. Arb. Forum May 20, 2010) the Respondent added “products” to the Complainant’s trademark, ALLEN BRADLEY to aggregate offers to sell Complainant’s products. Respondent is a member of the eBay Partner Network. The Complainant, formerly known as the “Allen-Bradley Corporation,” manufactures factory automation equipment under its trademark. “At his website [<allenbradleyproducts.com>] the Respondent displays auctions for products that are not genuine Allen-Bradley products.” In “some cases the text regarding the specific auction on eBay states that the product being sold is manufactured or produced by another vendor, but this information only becomes available to the Internet user after clicking through to <ebay.com> from Respondent’s website.”

Cybersquatters are “people who register domain names knowing them to be the trade marks of others and with the intention of causing damage or disruption to the trade mark owners and/or unfairly exploiting the trade marks to their own advantage,” Tomatis Developpement SA v. Jan Gerritsen, D2006-0708 (WIPO August 1, 2006). In Cisco Technology the Respondent’s business is genuine, but its appropriation of the Complainant’s trademark on its door to promote itself on the Internet is intended to deceive the public in a typical bait and switch ploy. It offers courses designed and given by itself not the trademark holder. In Rockwell Automation the Respondent has no business. Its website is designed for the sole purpose of attracting and redirecting Internet traffic to e-bay to collect pay-per-click partner fees.

Every respondent challenged on its registration wants to associate its offering with a brand without leaving the impression that the domain name will lead to the official website of the trademark owner or is sponsored by it. Disclaiming association with the complainant while using the complainant’s trademark to attract traffic is a double dose of duplicity. First, the respondent pretends to be who is isn’t; then it pretends that its use of the complainant’s trademark was not intended to convey the impression of an association with the complainant.

Silence with knowledge that a respondent has incorporated a trademark in its domain name can support legitimacy if the respondent has brought itself within the safe harbor of paragraph 4(c)(i) of the Policy. However, mere delay in prosecuting a claim for infringement – silence without intention to give approval – is not a defense. Equity theories are not formally recognized as UDRP defenses but failure to protect a right through contract (or laxness in one's communications) and tardiness in acting on information have consequences for legitimacy. Another kind of silence (this time unintentional) is at the core of Cisco Technology, Inc. v. Nicholas Strecha, E-Careers LTD, D2010-0391 (WIPO May 7, 2010). The Respondent registered <ciscouk.com> in 2005 and based its legitimacy on the Complainant’s acquiescence. The Respondent offered documentary proof that it had given notice of its registration to the Complainant’s attorneys who inadvertently had not passed the information to their client. Acquiescence, however, connotes knowledge; a knowing waiver.

It is possible for a legitimate interest to come into existence without complainant’s approval – offering goods or services on the secondary market, Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001) – or with silent approval which is sometimes ambiguous and can be read as acquiescence in respondent’s use of a disputed domain name. A number of early cases revolved on complainants’ failure to protect themselves by contract. It is difficult, for example, to find “a violation of the Policy when there is no specific prohibition on a dealer’s registration of domain names incorporating the mark of the products it is allowed to sell,” Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, D2002-0936 (WIPO December 16, 2002):

In Urbani Tartufi s.n.c. v. Urbani U.S.A., D2003-0090 (WIPO April 7, 2003) (<urbani.com>) the Respondent registered the domain name “with the evident consent of Complainant at a time when Complainant and Respondent were in a business relationship.” On the other hand, termination of right or for cause, terminates whatever right the respondent may have had for continued use of the domain name.

The question in Cisco Technology is whether notice to an agent prejudices the rights of its client. “After Respondent raised the question of earlier knowledge in its Response, Complainant submitted its unsolicited Reply, attaching a declaration of Complainant’s trademark law firm” in which trademark counsel “conceded that Respondent’s use of the domain name surfaced in 2005 correspondence over other unauthorized use of Complainant’s marks, between Respondent and Complainant’s trademark firm. However, “[d]ue to an inadvertent filing error by the law firm, counsel declares, Complainant was never alerted to the use of the domain name.”

The Respondent in Cisco Technology is in the business of training students in the use of various computer platforms including applications produced by the Complainant. There are cases in which respondents have brought themselves within the Oki Data safe harbor as consultants. In SAP AG v. UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (<unisap.com>) the Respondent offers consulting services for the software products sold by the Complainant. In Cisco Technology the Respondent is not a reseller, distributor or consultant. Instead, it competes in the primary market to enroll students for IT training. “These are pivotal facts that defeat Respondent’s claim to a legitimate interest and render the authority cited by Respondent inapplicable.”

Parties should be reminded that the UDRP is not a trademark court even though it adjudicates rights to trademark infringing domain names. The limited jurisdiction of the UDRP does not authorize the Panel to determine the issue of a trademark’s validity, so that when an allegation of invalidity is presented as a defense (as it is from time to time) Panels must work with what they have. What the Panel had in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Lucan Toh and Max Wright, D2007-0249 (WIPO May 25, 2007) was a trademark for CASINO DE MONACO that issued in 2005 with a priority date of 2002 and concluded that the registrations were abusive.

Although not often, some old cases return for judicial adjudication. What Société des Bains won at UDRP it lost in the District Court for the Southern District of New York, In re Casino De Monaco Trademark Litigation, 07 Civ. 4802 (DAB) (S.D.N.Y. 3-31-2010). The judge “vacated” the UDRP decision. Was the UDRP Panel misguided in not giving weight to the Respondent’s allegation that the trademark was invalid? That is not the Panel's call. It has limited authority which does not include determining a trademark’s validity. Trademark registration creates a rebuttable presumption that the mark is distinctive. The Panel in Société des Bains focused on the elements necessary for the Complainant to prove its case and found abusive registration. The district court, on the other hand, focused on the issue of validity.

Under UDRP jurisprudence, once “the USPTO has made a determination that a mark is registrable, by so issuing a registration, as was the case here, an ICANN panel is not empowered to nor should it disturb that determination,” U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum December 9, 2003). Since registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning it “is not for the Panel to decide whether the registration of the marks should or should not have been granted,” Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum September 16, 2002). Panelists lack authority to ignore valid trademark registrations that have been subject to examination and opposition. The Cyberbingo Corporation v. 207 Media Inc. D2005-0714 (WIPO October 4, 2005) (Canadian parties).

To the extent a respondent wishes to challenge the USPTO’s determination of any of a complainant’s federally registered marks, there are “appropriate administrative and/or judicial avenues available [for that purpose] such as by filing an action in the USPTO to cancel that registration or alternatively instituting federal litigation,” Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, D2005-0636 (WIPO August 18, 2005).

Upon the Order of transfer the Respondents commenced a federal action in Arizona that was removed and consolidated with another action in the Southern District of New York. The Judge determined that Société des Bains failed to prove that CASINO DE MONACO had ever been used in commerce anywhere in the world. Its

The District Court stated that “WIPO did not address the validity of Société des Bains' trademark and its decision is to be given no deference here,” citing Barcelona.com, Incorporated v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 625-26 (4th Cir. 2003). Since the trademark is invalid and unenforceable the Counterclaimants (former Respondents in the UDRP proceeding) could not be in violation of the Anticybersquatting Consumer Protection Act.

As a general rule placing a disclaimer on the website is not effective to legitimize a disputed domain name, although a legitimate reason for one cannot be ruled out. Disclaimers have been found appropriate in two circumstances, legitimate use of trademark for a bona fide offering of goods or services, car parts for example, DaimlerChrysler A.G. v. Donald Drummonds, D2001-0160 (WIPO June 18, 2001) (<Mercedesshop.com> and for noncommercial, fair use and free speech, Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, D2004-0206 (WIPO April 30, 2004). Respondents in both cases placed clear disclaimers of any association or relationship with the Complainant which were found appropriate.

But, in other circumstances, disclaimers merely bolstered respondents’ bad faith because their uses were inconsistent with their professions that they were offering bona fide goods or services. Including a disclaimer “actually proves the knowledge of the Complainant’s mark,” Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry-Succession Saint Exupéry - D’Agay v. The Holding Company, D2005-0165 (WIPO June 9, 2005). And, adding a disclaimer after receipt of the complaint does not cure a respondent’s acts “because the appropriate behavior to consider is Respondent’s behavior prior to its receipt of notice from the Complainant,” Vide Universal City Studios, Inc. v. G.A.B. Enters., D2000-0416 (WIPO June 29, 2000) .

Two recent examples of disclaimers bolstering bad faith are Sanofi-Aventis, Aventis Pharma SA, Aventis Pharmaceuticals Inc. v. Syragon LLC., D2010-0331 (WIPO May 3, 2010) (<masacortnasalspray.com>) and AM General LLC v. CDC, FA1004001316858 (Nat. Arb. Forum May 14, 2010) (xhumvee.com>). In both cases the Respondents believed that they were doing the Complainants a favor. The Sanofi-Aventis Respondent “consider[ed] [offering information] both fair to the Complainants and generally helpful to the public.” The AM General Respondent alleged that the domain name “actually enhances the good will of Complainant by generating interest in a product to the private sector which cannot ordinarily acquire [refurbished and customized Humvees] from AM General.”

To succeed with these arguments the truth has to be matched with evidence. The Respondent in AM General made extravagant assertions about its business but evidentiary support there was none. When a party asserts a reputation or stakes out a position it owns it; it has to show that what it alleges really exists; that there is reality not bluster. The Sanofi-Aventis Respondent diverted Internet users to commercial sites offering the Complainants’ product, but there were also links to competing products. In these contexts, disclaiming is merely form not substance. Only when the disclaimer is consistent with the message is it successful. It is never successful when it is nothing more than persiflage.

Concurrent uses of lexical elements that also happen to be trademarks are not necessarily the result of abusive registration and are not improbable where the parties 1) operate in different markets and offer goods or services in different classes, 2) there is no evidence that the respondent had prior knowledge of the complainant or its trademark, and 3) the lexical elements form a common word or descriptive phrase. The parties in G DATA Software AG v. Geologic Data Systems, D2010-0389 (WIPO May 10, 2010) offer completely different services but the Respondent uses <gdata.com> as a domain name and e-mail address while the Complainant is the registered trademark owner of G DATA.

The UDRP recognizes that two parties can equally be entitled to the use of lexical elements where the respondent’s use of the domain name is unrelated to goods or services offered by the trademark holder, Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) (<autocar.com). On the other hand, a respondent who is also a competitor has a heavier burden than one offering different goods or services and its conduct is more likely to be found opportunistic, Life Extension Foundation, Inc. v. PHD Prime Health Direct Limited, FA0910001289603 (Nat. Arb. Forum November 25, 2009) (<lifeextensionfoundation.com>).

The Complainant in Forex Club International Limited v. INO.com, Inc., FA1003001316362 (Nat. Arb. Forum May 17, 2010) argued that the Respondent was a competitor because both offered services in the financial area. The dispositive issue, however, concerned the Respondent’s purchase of <forexclub.com> when it came onto the secondary market in 2005. The domain name had apparently been owned by the Complainant or an earlier incarnation of it between 2002 and 2005, but its U.S. trademark was not issued until 2008 with a disclosed first use in commerce date in 2005. It apparently had an earlier market presence in Europe. However, it offered no explanation whether its loss of the domain name was due to inadvertence or abandonment. In 2009 it made contact with the Respondent in an attempt to purchase the domain name, was unsuccessful and commenced the UDRP proceedings.

Good faith registration is reinforced where a respondent establishes that it operates a genuine business contemporaneously with the complainant and has a history preceding a notice of dispute and commencement of the proceeding [paragraph 4(c)(i) of the Policy]. Respondents in G Data and Forex Club made offers of proof that they had both rights and legitimate interests in the disputed domain names. This is sufficient to withstand forfeiture.

Knowledge of Complainant and its Trademark Not a Prerequisite to Forfeiture of Domain Name

Ordinarily, bad faith rests on a finding that the respondent is targeting the complainant, which implies (or at least an inference can be drawn) that it is aware of the complainant and its trademark. However, there are circumstances under which the respondent may genuinely have no knowledge of the complainant or its trademark and nevertheless lose its registration to the complainant. This is illustrated in ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010). The Complainant inadvertently allowed its domain name, <raceglaze.com> to lapse which it had owned since 1998. The Respondent purchased the disputed domain name at an auction in January 2010. The parties reside on different continents, therefore its denial of knowledge was plausible. However, the Respondent populated the website with sponsored links to manufacturers in competition with the Complainant. In such a case it is reasonable to say that the website “speaks” for the respondent and its testimony is conclusive against the respondent even though the respondent has no knowledge of the complainant or its trademark.

The Respondent in ChemRite argued three unpersuasive points. First, the silliest, involved a non sequitur, that since the Complainant had registered the domain name in 1998 it (that is, the domain name) “could not have been registered in bad faith.” Second, the Complainant had the opportunity but failed to “enter [the] auction,” allegedly thereby choosing “instead ... to save money and tr[ying] to blackmail the Respondent into giving him the domain name for free.” Third, the “Complainant was sending emails to [an] obviously mistyped email address yet added the bounced email into its Complaint to make the Respondent look bad.” The third is interesting mainly because the Panel identified it as a factor “even though not conclusive” that the Respondent’s “failure ... to reply to the Cease and Desist Letter ... is a further indication of bad faith.”

Clearly, proving knowledge does not require evidence that the respondent had “actual” intelligence of a complainant or its trademark. Proof can be in the conjuncture of trademark registration and country in which the respondent resides, Perfetti Van Melle Benelux BV v. MBALogy, Gaurav Sharma, D2010-0370 (WIPO May 3, 2010), or, as in ChemRite the content of the website. Purchase of a domain name at auction even if in ignorance of the complainant or its trademark is not a complete defense and cannot shield the respondent because a suggestive or arbitrary signifier would have no value used in a non-trademark sense. That is to say, although each word has a dictionary meaning the combination of “race” and “glaze” is meaningless apart from its referent. That is why for the website to yield any financial return from Internet traffic the respondent has to populate it with links to the same categories of products manufactured by or services offered by the Complainant.

It is not simply that “the [ChemRite] Respondent is unfairly gaining a benefit at the expense of the complainant through the ‘click-through’ income generated as a result of these links.” Rather, the domain name and the website to which it resolves are misleading Internet users into believing that there is an association between the Complainant and the domain name owner “by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location” [paragraph 4(b)(iv) of the Policy]. It is bad faith to use a complainant’s trademark to offer similar goods or promote similar third party services not connected with the complainant for the respondent's commercial gain; from that use is inferred bad faith registration.

To violate paragraph 4(b)(ii) of the Policy the complainant has to prove that the respondent engaged in a “pattern of conduct.” Pattern suggests a customary practice rather than an isolated act. It can involve frequent single or multiple registrations spread out over a lengthy period or multiple registrations of domain names over a short period. Abusive intention is inferred from the composition of the domain names and their content. The paragraph is directed to respondents who “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” (emphasis added). Since it is unlikely that complainants would consider registering domain names confusingly similar to their trademarks (as their primary Internet location), the paragraph is not (could not be) construed literally. Engagement in a pattern to target trademarks is a violation of paragraph 4(b)(ii) whether or not the respondent literally intended to shut the complainant out of its rightful place on the Internet.

Confusing similarity subsumes purposeful typographic variations that displace, transpose, add or omit letters from the trademark. This was the case in Avid Dating Life, Inc. v. Private Whois Service, FA1004001318204 (Nat. Arb. Forum May 13, 2010) in which the Respondent registered 101 “disputed domain names that are confusingly similar, misspelled versions of Complainant’s mark.” The term also includes domain name variations that simply combine trademarks with a dictionary word. In Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, D2009-1661(WIPO January 19, 2010), for example, the Respondent registered 1,542 domain name variations of which 10 were found to be distinguishable because they incorporated only part of the trademark that in combination were found not to be confusingly similar. The Respondent in Research In Motion Limited v. Georges Elias, D2009-0218 (WIPO April 27, 2009) registered 111 domain names of which 10 joined “berry” with a dictionary word that distinguished the domain name from the trademark and were not included in the transfer of registration to the Complainant.

“Pattern of conduct” requires proof that the respondent has a history of registering domain name variations to capitalize on trademark reputations and to capture traffic. A respondent’s history (not just in respect to domain name variations) is probative of bad faith. “Its probative value may be one of weight, but it is a matter, which can be taken into account in assessing the implications of all of the information that an administrative panel has at hand.... Conduct that reveals a scheme or plan, a course of operations, is not irrelevant,” Collections ETC., Inc. v. Cupcake Patrol, D2001-0305 (WIPO May 10, 2001).

In Avid Dating and Research in Motion the Respondent targeted a single company. In Inter-Continental the Respondent targeted a conglomerate having a multiple of branded hotels. Non-use of the domain names is irrelevant since inactivity is not a defense. According to the Panel in Smokey Mountain Knife Works v. Deon Carpenter, AF-230 (a, b) (eResolution July 3, 2000). Such a pattern of abusive domain registrations can occur along two distinct dimensions:

Respondents found to have horizontally or vertically violated a complainant’s rights by their multiple registrations are also in violation of paragraph 4(b)(iv) of the Policy. But that, of course, is the purpose of the exercise, to appear to be associated with the complainant, the better to capture Internet traffic intended for the complainant.

The Four Non-Exclusive Examples of Bad Faith Determined by Past and Present Acts

Abusive registration of a disputed domain name presupposes past and present acts by the respondent inimical to the complainant’s trademark rights. Obvious examples are appropriations of well known or famous trademarks to capture Internet traffic for commercial gain. President and Fellows of Harvard College v. Domains By Proxy, Inc., Online Property LLC., D2010-0263 (WIPO May 3, 2010) (<harvardonline.com>). But lesser known trademarks are also targeted. Paragraph 4(b) of the Policy introduces the elements for satisfying the requirement of bad faith under paragraph 4(a)(iii). It reads: “For the purposes of Paragraph 4(a)(iii), the following circumstances [set forth in the subdivisions of the paragraph], 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...” (Emphasis added). Acts past or present all involve the respondent taking advantage of the complainant or its trademark. Contrast with trademarks that have current reputation, but none when the domain name was registered, Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010); or only regionally known, CNRV, Inc. v. Vertical Axis Inc., FA0912001300901 (Nat. Arb. Forum May 3, 2010). Application of the paragraph comes into play when the respondent fails to marshal a defense for rights or legitimate interests in the disputed domain name. The four listed circumstances of bad faith do not presume to cover the universe of bad faith.

Panelists early concluded that the four listed circumstances are “intended to be illustrative, rather than exclusive.” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000). “[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [paragraph 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.” Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO March 7, 2000). Unidentified are other abusive practices covered under the catchall phrase “in particular but without limitation.” This may include, among other practices, imitating complainant's website and pretending to be the trademark holder for phishing expeditions and hijacking domain names and fraudulently transferring them to new Registrars and Registrants. “It does not matter that the facts ... may not fall within any of the circumstances described at paragraph 4(b) of the Policy.” Fox News Network, LLC v. Sam Solomon, D2005-0022 (WIPO March 25, 2005).

If not any one of the four examples of bad faith the Panel can rule on the “totality of circumstances.” Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000). “Additional factors can also be used to support findings of bad faith beyond those enumerated.” Wendy Ida v. Farid Azam, FA0901001240643 (Nat. Arb. Forum February 27, 2009). An example of bad faith registration and use “is not a limitation.” Mattel, Inc. v. Unknown c/o Dora Marks, FA0506000490083 (Nat. Arb. Forum July 11, 2005).

Of the four listed examples of bad faith the first three are written in the past tense and focus on the respondent’s intention in registering the domain name for a particular purpose. Past and present tenses are discussed by the Panel inTrade Me Limited v. Vertical Axis Inc, D2009-0093 (WIPO April 7, 2009). In contrast, the fourth example of bad faith [paragraph 4(b)(iv)], is written in the present tense, but implies a continuum of (if not current) predatory conduct in using the domain name.

When challenged for abusive registration respondents’ privacy veils are lifted for the duration of the UDRP proceedings and the WHOIS database will so reflect. Proxies if they are truly the registered owners of record and not another name for a privacy service are a different matter. Beneficial owners can remain anonymous, in which event the respondent’s right or legitimate interest will be tested against the proxy's (fictitious) registration and use of the disputed domain name. A recent example is Audigier Brand Management Group, LLC v. Private Whois Service, FA1003001313253 (Nat. Arb. Forum May 3, 2010). The genesis of the WHOIS database was ICANN’s periodic Memoranda of Understandings with the U.S. Department of Commerce (under which ICANN was created) which presently is embodied in the Affirmation of Commitments effective September 30, 2009. Under these agreements ICANN committed itself to preserving a publicly accessible database of domain name registrants. Paragraph 9.3.1 of the Affirmation reads:

ICANN achieves this commitment through agreements with accredited Registrars under the RAA which requires Registrars to collect and provide free public access about the registration of the domain name “sufficient to contact a responsible party for a particular gTLD domain name who can resolve, or reliably pass on data to a party who can resolve, issues related to the configuration of the records associated with the domain name within a DNS name server” [GNSO Counsel, April 12, 2006.]

Developments in the use of privacy and proxy services have chipped away at the openness of the directory, but Registrars have an obligation to identify a masked registrant when they receive notice that a complaint has been filed. Anonymity carries a strong negative inference that the intention for registering and paying for a proxy was to take advantage of the complainant and its trademark. In United Computer Products, Co. Inc. v. Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc Domain Name Proxy, Inc., D2008-0017(WIPO February 22, 2008) for example the Registrar released only the proxy information on a complaint for fraudulent transfer of the disputed domain name. Not surprisingly, the Proxy did not appear.

The Whois database serves a number of different functions, from due process to law enforcement. It has come under attack for invasion of registrants’ privacy but it also has defenders. In the current policy debate it does not appear likely that it will be eliminated, even if some changes are mandated. The ICANN Registrar Accreditation Agreement requires the Registrar to provide a “free public query-based access to up-to-date ... data concerning all active Registered Names sponsored by Registrar for each TLD in which it is accredited.” This includes the name and postal address of the Registered Name Holder; the name, postal address, e-mail address, voice telephone number, and (where available) fax number of the technical contact for the Registered Name; and the name, postal address, e-mail address, voice telephone number, and (where available) fax number of the administrative contact for the Registered Name. RAA Section 3.3.1. See also See ICANN, Registrar Advisory Concerning Whois Data Accuracy, May 10, 2002, available at <http://www.icann.org/en/announcements/advisory-10may02.htm>.

Providing false and misleading contact information to the Registrar is a violation of the Policy and constitutes a breach of the “Representations and Warranties” clause of the Registration Agreement and Paragraph 2 of the Policy. Failure to maintain the Whois data or deliberate manipulation of the information provided has consequences. Use of phony names and fictitious addresses or contact information is evidence of bad faith registration and use. The inference in these cases is that Respondent either has a “foul intent” or has no affirmative defense to abusive registration.

Bad faith under paragraph 4(b)(i) of the Policy requires proof that the respondent’s registration of the disputed domain name was for the “primary purpose” of selling it to the complainant. By definition a trademark not in existence at the time of the registration or a trademark in existence but unknown to the respondent could not yield a conclusion of bad faith. A corollary would be a situation in which in response to a complainant’s request to purchase the domain name the respondent demands more than the complainant is willing to pay. At the request of the complainant a respondent who has a superior right to the domain name can sell or hold at its option. Willingness to discuss selling a disputed domain name that is an alienable asset at the complainant's request is not evidence of bad faith. Skyhook Wireless Inc. v. John L Productions, Johnny Williams, D2010-0359 (WIPO April 23, 2010). It is

A respondent cannot, of course, create a legitimate interest by merely registering a domain name or by estoppel. But, if it acquires a “right” in a domain name by being the first to register without knowledge of another’s trademark it has an alienable asset. In Skyhook Wireless “the Respondent did not approach the Complainant to sell the disputed Domain Name, and the fact that the Respondent later considered the Complainant’s request to purchase the disputed Domain Name does not establish that this was the Respondent’s motivation for acquiring the disputed Domain Name in 2006.”

Skyhook may have had a presence in the marketplace prior to 2006, but “[i]t is likely, as the Respondent asserts, that [it] did not reach the attention of the Respondent in Alabama, operating a business in the field of election campaign services.” Moreover, “these circumstances undercut the Complainant’s inference that the Respondent registered the disputed Domain Name primarily to sell it to the Complainant.” The Respondent acquired the domain name for a purpose having nothing to do with the Complainant.

There is no consensus on the standards of proof to be applied in reaching a finding of reverse domain name hijacking. It is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule 15(e) authorizes the Panel to make a finding

The definition and the Rule which enlarges the definition by noting examples mark out the boundaries of abusive conduct. Noting two examples implies there could be more acts of bad faith.

Some panelists, however, demand certitude of a complainant’s intention impossible to marshal. This is seen in the so-called “malice aforethought” standard and applied in Ammar Jarrous, MD v. Amarillo Cardiovascular & Thoracic Surgery, FA1002001306970 (Nat. Arb. Forum May 5, 2010). It is certitude coupled with the Panel’s refusal to draw inferences that sinks the respondent’s request for RDNH. Other panelists apply an “utterly clear” standard as illustrated in CNRV, Inc. v. Vertical Axis Inc., FA0912001300901 (Nat. Arb. Forum May 3, 2010).

What constitutes RDNH is not writ in stone. The two examples noted have a familial relationship, but even though they are generally merged into a finding of RDNH each act is utterly distinct. The “malice aforethought” standard is all or nothing; there is no shifting to complainant the burden of proof upon respondent’s showing of a prima facie case for RDNH. The “utterly clear” standard returns the burden to the complainant, in essence to rebut an allegation of bad faith. RDNH is warranted under this latter standard upon a finding that the “Complainant must have known it could not demonstrate bad faith registration and use.”

“Clearly,” (as the Panel in Ammar Jarrous has it, citing Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000) “the launching of an unjustifiable Complaint with malice aforethought qualifies.” That is true, but bad faith is also demonstrated if the complainant pursues a complaint in “reckless disregard of the likelihood that the Respondent had rights or legitimate interest in the name,” OnePhone Holding AB v. IndiGO Networks, D2007-1576 (WIPO December 22, 2007). Such reckless disregard was found in Altru Health System v. Altruism Network c/o Doug West, FA0805001195584 (Nat. Arb. Forum July 15, 2008). The Panel held that while at “first sight” it may appear as though the Complainant “had fair reasons to file the Complaint,” on second sight it did not because it made false statements about its trademark which it compounded by making “deliberately false accusations of Respondent’s commercial activities” at the website to which the domain name resolved. What finally outraged the Panel was that

The “malice aforethought” standard is too rigid. Although the Panel in Ammar Jarrous agreed that “the Respondent had made a convincing case to the effect that the Complainant should have known that the Respondent had a legitimate interest (in the sense of the Policy) in the disputed domain name,” he rejected the Respondent’s request because “he has not provided any evidence of malice aforethought or harassment by the Complainant in the sense of the Policy.”

Malice aforethought as the sole measure of bad faith misconstrues Smart Design which held that it is also bad faith to pursue “a Complaint after the Complainant knew it to be insupportable.” This second part of the formulation is found in CNRV in which the majority held “that ‘bad faith’ ... extends also to a person who, while maybe not knowing an allegation to be insupportable, makes the allegation reckless as to whether it is supportable or not.” In contrast, bad faith does not extend to those complaints “not well founded” but which contain no “fabrications or manifestly unsustainable positions,” Skyhook Wireless Inc. v. John L Productions, Johnny Williams, D2010-0359 (WIPO April 23, 2010).

Referent for Identical or Confusingly Similar to Trademark is Domain Name Not Any Post-Domain Path

UDRP is not an all-purpose forum for resolving infringement claims. The Policy is limited to abusive registration of domain names. What happens if the infringement occurs in a post-domain path (that takes the Internet user to an interior page of the website)? The Complainant in Romantic Tours, Inc. v. Whois Privacy Protection Service, Inc., FA1003001316557 (Nat. Arb. Forum April 28, 2010) complained that the Respondent had incorporated into its post-domain path a string that infringed its trademark, HOT RUSSIAN BRIDES.

It is not illegitimate for a respondent to operate an online advertising portal from a domain name even if (under certain circumstances) it is identical or confusingly similar to a trademark. Romantic Tours argued for transfer of the Respondent’s domain name because of the post-domain path: “Respondent has no rights or legitimate interests in its registered <jimslists.com> domain and for its <jimslists.com/agencies/hotrussianbrides> post-domain.” Upon receiving the complaint, however, the Respondent deleted the post-domain path. However, what if “Jim’s List” were simply an advertising portal that included a section on “foreign brides” with links to Complainant and its competitors?

It is not targeting in a cybersquatting sense to include reference to a trademark holder in a general purpose directory. Targeting implies registering a domain name that crosses a threshold. Even with domain names that are identical or confusingly similar – using generic words or descriptive phrases in their ordinary or dictionary meanings – unless targeting appears evident it is legitimate to operate an advertising portal, First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO May 1, 2001). “Neither the current UDRP nor current ICANN registrar contracts preclude” the practice of registering domain names in connection with an advertising venture, Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA98813 (Nat. Arb. Forum October 8, 2001); pay-per-click websites constitute a bona fide use (absent targeting), Terana, S.A. v. RareNames, WebReg, D2007-0489 (WIPO June 7, 2007); Fratelli Carli S.p.A. v. Linda Norcross, D2006-0988 (WIPO October 4, 2006); or paid link farm services, Aquascape Designs, Inc. v. Vertical Axis, Inc c/o Domain Adminstrator, FA0601000629222 (Nat. Arb. Forum March 7, 2006) (<aquascape.com>) (Complaint dismissed).

If domain names for advertising websites that are similar or confusingly similar to trademarks can be legitimate then a fortiori it is not abusive to register a domain name dissimilar to the lexical units of the trademark. Although a post-domain can arguably be a trademark infringement it cannot be a UDRP violation any more than aggregating competing providers of goods and services would be in a print on paper business directory. Romantic Tours’ argument is unpersuasive precisely because the domain name is not identical or confusingly similar to the complainant’s trademark. The domain name, “<jimslists.com> ... is neither identical nor similar with the Complainant’s trademark as it bears no resemblance to [it].” The “UDRP does not offer relief for infringements via use of registered trademarks in post-domains and that the proceedings under the UDRP may be applied only to domain names.”

Paragraph 4(b)(iii) of the Policy has specific reference to the acts of a competitor. If for its “primary purpose” a respondent registered the disputed domain name to disrupt the other’s business it is evidence of bad faith. The Respondent’s narrative in SunSpots Productions Inc. v. John Laprad, D2010-0184 (WIPO April 26, 2010) claims bona fides in using “sunspots” for his business identity concurrently with the Complainant or possibly antedating the Complainant’s use and registration of SUNSPOTS, thereby putting the parties in a duel of priority. Complainant appears to have a wider range of business but both parties compete in offering voiceovers. The Respondent appears to be a one-man operation who “can currently be heard in a popular series of radio advertisements” on local radio stations in Worcester, Massachusetts.

A successful defense requires a party to offer both narrative and evidence. In SunSpots, the Respondent failed to “provide any evidence or exhibits in support of his response.” His narrative, however, was partly corroborated by evidence supplied by the Complainant who “provided a copy of a Business Certificate in which Respondent registered as ‘Sun Spots Productions’ in 1980, along with the Massachusetts statute that provides that such certificates, unless renewed, expire after four years.” It is not expiration of the business certificate that is dispositive in disproving a right but whether following non-renewal the Respondent continued to use the unregistered trademark or abandoned it.

The Complainant obtained a certification of registration for its trademark on the Principal Register in 2003, claiming first use in commerce 1988. The disputed domain name, however, was registered in 2006. The Respondent chose not to respond to the Complainant’s supplemental submission to “the Panel Procedural Orders” (authorized under Rule 12) leaving the record ambiguous as to its right to an unregistered trademark and corresponding domain name by reason of priority of use in commerce. The Complainant offered no evidence that its reputation was such in 2006 that the Respondent “knew or ought to have known” of it and its trademark. The Panel found

The Respondent in Sun Spots forfeits the disputed domain name not because the Complainant has a registered trademark but because the Respondent and its counsel failed to support the narrative. The absence of evidence in the exclusive control of the Respondent “leads the Panel to draw adverse inferences about whether such evidence exists or what it might show.”

Narrow Trademark Rights Confined to Geographic Area in Which Holder Does Business

Complainants whose unregistered trademarks consist of generic words or descriptive expressions may have standing to maintain the UDRP proceeding, but they have narrow rights confined to the geographic area in which they do business. CNRV, Inc. v. Vertical Axis Inc., FA0912001300901 (Nat. Arb. Forum May 3, 2010) disputing over <adventurerv.com>. The Complainant’s business in located in the Eastern part of Tennessee near Gatlinburg and the Smoky Mountains National Park. The Respondent has a substantial collection of domain names incorporating “adventure” which it uses in connection with “Yahoo auto-generated pay-per-click (PPC) advertisement related” to recreational activities.

The majority agreed that the Complainant had standing. Although extensive third party use of words and expressions claimed by a complainant as its badge to the world may overrate itself in believing that the public distinguishes it from the others, nevertheless it “would not be fatal to the Complainant’s contentions if its alleged common law mark were only recognised within a certain geographical area,” Nexmedia Pte Ltd. v. Heavy Lifting LLC, et al., D2010-0059 (WIPO Mar. 9, 2010). In both CNRV and Nexmedia the Respondents adduced evidence that the words or expressions were used by a number of other companies.

The dissent, however, noted that there is “nothing to suggest that the expression has ever been claimed by Complainant as a trademark or applied to be registered by it as such although the registration of trademarks is apparently available in the State of Tennessee for a fee of $20.” He cites a decision from the Supreme Court of North Carolina in which the Court stated:

The Complainant offered no evidence that the literal meanings of “recreational” combined with “rv” had become connotative in the public’s mind to identify it as the “unique source” for goods or services outside of its geographic area. “Indeed, the same majority of the Panel [that found for standing] also notes that ‘US ADVENTURE RV’ has been registered by a third party as a trademark in the United States (interestingly, without a disclaimer of the word ‘adventure’ and without the requirement of showing secondary meaning under Section 2(f) of the Lanham Act).”

U.S. law recognizes that identical or similar trademarks may co-exist if each are used in discrete geographic areas, as concurrent uses. This is evidently the case with in the RV market for the name “Adventure RV.” All three panelists concur on the issue of reverse domain name hijacking. Two of them make explicit reference to the geographic limitation of the trademark. The “Complainant must have known it could not demonstrate bad faith registration and use, given the weakness of its trademark ... and the inherent unlikeliness that Respondent could have had Complainant in mind when registering the Domain Name, given the narrow geographic scope of Complainant’s activities and the many concurrent users of the same name.”

One of the three specified defenses to a claim of abusive registration is proof that “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” (Paragraph 4(c)(ii) of the Policy). In Sandra Andy v. Alessandro Balzarin, D2010-0348 (WIPO April 21, 2010) the Respondent presented evidence that he uses personally and in business his nickname “Sandro” and, thus, had a right and legitimate interest in <sandro.com>. That he does not actively use the website “beyond the showing of a picture of a sunflower [is] of no relevance ... given that this is not a required condition under paragraph 4(c)(i) and (ii) of the Policy.” However, the Policy is construed to “require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail,” RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001).

A trademark holder only preempts a respondent who uses the domain name to extract value from the complainant or its trademark. To illustrate with contrasting examples. The Respondent in Harrods Limited v. Harrod Exclusive Realty Service, D2006-1061 (WIPO November 6, 2006), Lisa Harrod offers a range of real estate services for Florida based properties and registered <harrodsproperties.com>, but she is not “Harrods.” “There is” said the Complainant “a distinction between the name of a proprietor of the Respondent ‘Lisa Harrod’ and use of a domain name featuring the plural ‘Harrods’.” More damagingly, Respondent diverted traffic to another website. In contrast, another Harrod, Brenda L. Harrod, one of the Respondent principals in Harrods Limited v. HDU Inc., D2004-0093(WIPO April 27, 2004) operated a beauty salon business registered in Ohio known as “Harrod's Designs Unlimited, Inc.” The domain name <harrodssalon.com> represented the Respondent’s presence and offered her own services.

A complainant’s argument that a domain identical to its trademark is not a proper surname is not proof that it “was likely adopted by Respondent for the purpose of asserting rights in the domain name,” Mattel, Inc. v. Gopi Mattel, FA0411000372847 (Nat. Arb. Forum February 15, 2005) (<mattel.org>). The Panel held that it was not for “Complainant to deem what is a ‘proper’ surname simply because it owns a trademark on the same name in conjunction with the sale of certain wares.” A similar conclusion was reached in Ken’s Foods Inc. v. kens.com, D2005-0721 (WIPO September 11, 2005) (<kens.com>):

So it goes with the Complainant in Sandra Andy. The “Respondent had a legitimate reason for choosing that term as his domain name in 1997 given that it corresponded to the nickname of his first name.” The evidentiary problem is that the Complainant failed to offer evidence of its international or national activities when the Respondent registered the domain name. This supported an inference that “the Complainant has probably assessed too generously the brand recognition of the Trademark in other countries, particularly in Germany ... in 1997.” Not all nicknames, however, get a pass. The Respondent in RedBull GmbH v. Gutch, D2000-0766 (WIPO September 21, 2000) claimed that he registered <redbull.org> because he had been known as “Red Bull” since childhood. Bull, indeed!

Refiling a complaint against the same respondent is not permitted as “of right.” I pointed out in the Note for April 28 that some panelists openly invite complainants to refile a complaint when the factual circumstances change and the new record supports a claim for abusive registration. When the factual circumstances remain the same the earlier adjudication bars a recommencement of proceedings under the doctrine of res judicata. VRSim, Inc. v. John Makara, FA1003001314947 (Nat. Arb. Forum April 30, 2010), refiling to reopen a dismissed claim in VRSim, Inc. v. Makara, FA 1233521 (Nat. Arb. Forum Jan. 2, 2009).

The grounds for recommencing a proceeding were first set forth in Grove Broad Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO November 10, 2000) in which the Panel applied well settled principles established in courts of law. A refiling against the same respondent may be granted under certain circumstances but it does not include denial of the first complaint for insufficiency of evidence or a determination on the merits since that would simply be a repetition of the same facts upon which the previous complaint was based.

Grove Broadcasting held that to reopen a decided case the complainant must show 1) serious misconduct by a judge, juror, witness or lawyer; 2) perjured evidence being offered to the Court; 3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and 4) a breach of natural justice /due process. “The integrity of the ICANN Policy and procedure requires that if a reconsideration of the same Complaint is to be entertained, there should be proof that one of the strict grounds discussed in this decision has been made out.” Ground 3 is the usual battleground in a UDRP case. The Panel in Grove Broadcasting concluded that where the complainant initiated proceeding without proper documentation or proof ... [it] has to take the consequences.”

The Grove Broadcating test was further refined in Creo Products Limited v. Website in Development, D2000-1490 (WIPO January 19, 2001) in which the Panel held that 1) the burden of establishing grounds for entertaining a Refiled Complaint rests on the complainant; 2) that burden is “high”; and 3) the complainant should clearly identify the grounds for entertaining the Refiled Complaint. The Panel held that a complainant can satisfy its burden by including evidence of “both new acts of the Respondent occurring since the first decision and fresh evidence not available prior to the first decision.” This is what the Panel in Jetfly Aviation SA v. Jens K. Styve / Domains by Proxy, Inc. and Happy Landings S.A., D2010-0244 (WIPO April 5, 2010) had in mind in laying the foundation for a refiling. A judgment in a court of law establishing a party’s right to a trademark decision is “evidence which could not have been reasonably foreseen or known” in the earlier proceeding. Issuance by the USPTO of a certificate of registration for the trademark has been found to support a refiling, Alpine Entertainment Group, Inc. v. Walter Alvarez, D2007-1082 (WIPO December 4, 2007).

In the refiled VRSim the Complainant (whose trademark is on the Supplemental Register) “presented nothing that would support entertaining this second complaint. The Panel finds that this proceeding is barred by the earlier decision.” This can be interpreted to mean that the Complainant offered no new material evidence that could not previously have been offered.

It is useful to pause in dissecting cases and addressing evidentiary issues to outline for those unfamiliar with the UDRP the mechanism that compels a respondent to answer for its choice of domain name. The authority for hauling a domain name registrant into a UDRP proceeding in response to a trademark holder’s complaint that the registration is abusive is found in a contract provision incorporated in the respondent’s registration agreement. The provision requires the registrant/ respondent “to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that the respondent’s” domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights” (Paragraph 4(a) (i) of the Policy).

More likely than not, the arbitration panel is either sitting in a different country or remote from the registrant’s home state. “The Policy is of international scope and the framers required it to be capable of practical application by a panelist that might be drawn from any jurisdiction (and more often than not a panelist who would not be drawn from the jurisdiction of either of the parties to a dispute),” Aubert France SA v. Tucows.com Co., D2008-1986 (WIPO March 17, 2009).

Why should an arbitration be mandatory where the parties are strangers to each other? The question is important because as a matter of law no party can be compelled to arbitrate disputes. Arbitration has to be consensual. Parties must mutually agree to waive the right to be heard in a court of law. What is unusual with the UDRP is that while arbitration is a non-negotiable feature of the registration agreement it is not a bilateral contract with the trademark holder. Trademark holders aggrieved by violation of their rights are third-party beneficiaries to a weave of contracts between ICANN and the Registrar on the one hand and the Registrar and the Registrant on the other. The terms incorporated into the registration agreement are dictated by ICANN to its accredited Registrars who alone are authorized to register domain names pursuant to a Registrar Accreditation Agreement.

The registrant agrees to the procedure for weighing partyies' rights to a disputed domain name as a condition of registration. It expressly represents and warrants that its choice of domain name “will not infringe upon or otherwise violate the rights of any third party” and agrees to“submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider” that the respondent acquired the disputed domain name in bad faith. If the respondent is found to have registered and is using the disputed domain name in bad faith the penalty is either cancellation of registration or forfeiture of the disputed domain name to the complainant. The sole recourse for the unhappy party – in 15% of the time this is the complainant – is to challenge the Panel’s order in a court of law. In this respect the UDRP differs from the typical ADR model in which the decision is final (although challengeable under the Federal Arbitration Act and the Revised Uniform Arbitration Act).

Paragraph 4 of the Policy describes the arbitral procedure as a “mandatory administrative proceeding.” The term “mandatory” should not be misunderstood as meaning that the registrant must participate in the proceeding – indeed respondents default approximately 85% of the time. Due process dictates that the respondent be given notice of the complaint, but it is the disposition of the domain name that is in issue, whether or not the respondent appears. The term mandatory administrative proceeding refers to the respondent’s contractual agreement to submit the claim to an impartial or neutral arbitrator to determine the merits of the complaint. “It is these Rules with which all applicants for the registration of domain names agree to be bound,” Cimcities, LLC v. John Zuccarini D/B/A Cupcake Patrol, D2001-0491 (WIPO May 31, 2001). Respondent is also bound by its representations and warranties to the Registrar, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, D2002-0806 (WIPO October 16, 2002).

Actionable Opportunism Does Not Include Registering a Domain Name Before Complainant’s Acquisition of Trademark and Offering to Sell it for its Commercial Value

UDRP jurisprudence requires the complainant to plead and prove that the respondent registered and is using the domain name in bad faith. It implies opportunism in the first instance projected into future use. The two “bad faiths” must exist jointly. Country code policies are constructed on a different theory; a disjunctive rather than conjunctive requirement. Opportunism under those policies in either registering or using is sufficient to satisfy the bad faith requirement. The Panel in Editions Milan v. Secureplus, Inc., D2010-0606 (WIPO June 10, 2010) notes that the “disjunctive approach to bad faith demonstrated by the Nominet and similar Policies, used for ‘.uk’ and ‘.nz’ disputes for example has much to recommend it.” However, this approach is not importable into the UDRP. It is “not for this Panel to in effect alter the wording of the existing UDRP.” The Panel is emphatic in rejecting the Octogen line of cases that construe the Policy to hold respondents retroactively liable for subsequent opportunistic conduct.

The disjunctive approach (whether in country code policies or the Octogen construction) is insular rather than international. It protects complainants against subsequent opportunistic use of domain names that take advantage of later acquired or little known trademarks that subsequently establish themselves in the marketplace. Under UDRP jurisprudence a variant of the disjunctive approach has caught hold in one area of construction, namely against UDRP high volume respondents for failing to perform due diligence on trademarks. In these circumstances, a respondent’s disclaimer of knowledge of the trademark is insufficient to rebut a finding of opportunism.

This was emphasized recently by the majority in Oregon Freeze Dry, Inc. v. Vertical Axis Inc., FA1003001316531 (Nat. Arb. Forum June 10, 2010): “The profitability of PPC links engendered by a well-known name must, over time, increase the saleability, and therefore, the price, of the disputed domain name.” The majority found acquisition of the domain name opportunistic because although the Respondent was using the domain name for PPC revenue which is a bona fide use, it was also offering the domain name for sale. It was the latter that persuaded the majority to find conjunctive bad faith. Nevertheless, the decision gives the plaintiff a boost by reducing its burden of demonstrating actual knowledge of the trademark when it acquired the domain name.

The Panel in Editions Milan, on the other hand, reaffirms the precedential view in balancing parties’ rights. A complainant of a later acquired trademark does not have an actionable claim against a respondent for its retroactive registration (how could it?). This applies whether or not the respondent puts the domain name to active use. To hold passively a domain name in which the respondent has a “right” does not transform good faith into bad. “[I]f [the Respondent is] found to have registered the disputed domain name in good faith, then it can be said to have rights or legitimate interests in the disputed domain name.” In fact the analysis can go further. In such a case the respondent can be said to have both “rights” and “legitimate interests.” A respondent with a “right” has the power to alienate the domain name for its market value, which is certainly “in excess of [its] documented out-of-pocket costs directly related to the domain name.” The Panel stated

While there is certainly opportunism in selling an earlier acquired domain name to a complainant of a later acquired trademark, it is not of the actionable kind. In fact, to commence a proceeding under those circumstances is sanctionable.

Holders of trademarks composed of given or surnames compete for space and attention with persons who are known by those names. On the silly side of the ledger are respondents who successfully claim to be known by their nicknames, such as “Penguin” and “Jollibee” who are found to have legitimate interests (if not rights) superior to the more well known (internationally in the case of the first) complainants. Conventionally, however, names are treated no differently than generic words. Competing for space and attention with a trademark holder to use one’s own name for one’s own project does not rise to an infringement.

This is even more so where use of a country code extension such as “.us” is limited to certain classes of registrants. The Respondent in Arnoldo Mondadori Editore S.p.A. v. Grazia Solazzi, FA1005001323771 (Nat. Arb. Forum June 23, 2010) showed not only that as a “Grazia” she was entitled to her choice of <grazia.us> but that the Complainant, an Italian woman’s magazine has no nexus with the United States even though it holds a United States trademark for GRAZIA. The rules promulgated by the designated registrar for “.us” TLDs (Neustar, Inc.) require registrants for usTLDs to have a substantial nexus with the United States. The Respondent pointed out that the mark is not immediately associated with the Complainant in any event since it is multiply registered in a variety of Classes.

Under the terms of the “.us” TLD, a foreign entity or organization must “certify” that it has a “bona fide presence in the United States” on the basis of “real and substantial lawful connections with, or lawful activities in, the United States of America.” The Respondent contended that this requirement “is intended to ensure that only those individuals or organizations that have a substantive lawful connection to the United States are permitted to register for usTLD domain names.” The Respondent further contended that the Complainant is

The Complainant contended that the Respondent was “leveraging on [its] reputation.” Generally, this is a potent argument, but here the Panel did not penalize the Respondent for having her website parked with links to fashion magazines. That piece of evidence is offset by another, that she presented strong evidence of demonstrable preparations for the website dedicated to food reporting [paragraph 4(c)(i) of the Policy.] In addition, the Panel found “through Respondent’s use of her name in reference to her journalistic activities and projects that Respondent has become commonly known by the disputed domain name,” a defense under paragraph 4(c)(ii).

The domain community is well aware of the UDRP, but other registrants are less familiar with the contractual matrix that binds them to a mandatory arbitration. At the request of the Provider upon receiving a complaint the Registrar is required to confirm the following basic information: “the domain name is registered with it; the Respondent is listed as the registrant of the domain name; the current contact details for the respondent are as given in the Complaint; and [English or another language] is the language of the registration agreement.”

The authority for hauling a domain name registrant into a UDRP proceeding to answer a trademark owner’s complaint that the registration is abusive is found in a contract provision incorporated in the respondent’s registration agreement. By signing the registration agreement the respondent assents to a mandatory administrative proceeding to determine rights to a disputed domain name where a trademark complainant asserts a claim of abusive registration. More likely than not, the arbitration panel is either sitting in a different country or remote from the registrant’s home state. “The Policy” (as the Panel in Aubert France SA v. Tucows.com Co. noted) “is of international scope and the framers required it to be capable of practical application by a panelist that might be drawn from any jurisdiction (and more often than not a panelist who would not be drawn from the jurisdiction of either of the parties to a dispute).”

Why should an arbitration be mandatory where the parties are strangers to each other? The question is important because as a matter of law no party can be compelled to arbitrate a dispute. Ordinarily, parties must mutually agree to waive the right to be heard in a court of law. What is unusual with the UDRP is that while arbitration is a non-negotiable feature of the registration agreement it is not a bilateral contract with the trademark holder. Trademark holders aggrieved by violation of their rights are third-party beneficiaries to a weave of contracts between ICANN and the Registrar on the one hand and the Registrar and the Registrant on the other.

The terms incorporated into the registration agreement are dictated by ICANN to its accredited Registrars who alone are authorized to register domain names pursuant to a Registrar Accreditation Agreement (“RAA”). The latest version of the RAA dated May 21, 2009 is available at <http://www.icann.org/en/registrars/ra-agreement-21may09-en.htm>. The RAA contains two provisions as conditions for registration of a domain name. In the first, “The Registered Name Holder shall agree that its registration of the Registered Name shall be subject to suspension, cancellation, or transfer pursuant to any ICANN adopted specification or policy” [Art. 3.7.7.11]. The second requires the Registrar to “have in place a policy and procedures for resolution of disputes concerning Registered Names ... [which u]ntil different policies and procedures are established by ICANN under Section 4, Registrar shall comply with the Uniform Domain Name Dispute Resolution Policy” [Art. 3.8]. Acceptance of the provisions in the registration agreement that incorporates the UDRP is a condition for registering a domain name.

The registrant’s agreement to submit to a mandatory proceeding is joined with a representation and warranty provision that its choice of domain name “will not infringe upon or otherwise violate the rights of any third party” [Para. 4 of the Policy]. The UDRP is designed to determine whether the registration does infringe upon or otherwise violate the rights of the trademark holder and if it does the respondent forfeits the disputed domain name.

Broad Interpretation of the UDRP For Standing and What Constitutes Valuable Consideration

Standing to maintain a UDRP proceeding is not limited to persons actually having a trademark. It is “well-established” notes the Panel in The Old Course Limited v. Patrick Woods, D2010-0682 (WIPO June 6, 2010) that “a high profile announcement of a new corporate name can generate goodwill in that name ... and [is] recognised as sufficient for the purposes of the first element of the UDRP.” The principle is set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions at paragraph 3.1 as a consensus. It reads

The “potentiality” principle was initially applied against domain names combining trademarks of merger partners. This is made clear in the WIPO Overview: “This often occurs after a merger between two companies, before the new trademark rights can arise.” All the early cases cited in the Overview were of this type. For example, combining MONSANTO and PHARMACIA [Pharmacia & Upjohn AB v. Monsantopharmacia.com Inc., D2000-0446 (WIPO August 1, 2000)]; combining MAERSK and SEALAND [A.P. Møller v. Web Society, D2000-0135 (WIPO April 15, 2000)]. However, the final clause of the Overview extended the principle to include a circumstance in which “the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.”

In The Old Course the Panel applies the principle to the Complainant’s change of name of its hotel from “Hamilton Hall” to “Hamilton Grand.” “The Panel notes that the Respondent registered the Domain Name and the corresponding ‘.co.uk’ domain name the day after the exhibition at which the Complainant announced its intention to renovate Hamilton Hall and rename it ‘The Hamilton Grand’.” No mystery here that the Respondent saw an opportunity to cash in on a nascent trademark.

Opportunistic registrations generally involve paragraph 4(b)(i) of the Policy, that the domain name was acquired primarily for the purpose of exchanging it for “for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Panels have also interpreted the Policy in the broadest possible manner. “Valuable consideration” can include demands for assistance in developing a business for example. The Respondent in The Old Course fits this mold. “On April 19, 2010, the Respondent wrote by email to the Complainant, referring to earlier telephone calls, and stating that he owned the website domains <thehamiltongrand.com> and <thehamiltongrand.co.uk>, which (he said) Kohler Group should really own on the basis that the new Hamilton building in St. Andrews was going to be called ‘The Hamilton Grand’.” The Respondent was not so crass (he insists) as to “want money for handing over these websites to you.” But he wanted something in exchange. Rather, what he wanted was “to discuss how Kohler can help me to build my business in St Andrews.” Very entrepreneurial!

Status of Respondent’s Right or Legitimate Interest When Trademark (Of Which it is the Assignee) is Cancelled Under Section 8 of the Trademark Law

Domain names identical or confusingly similar to trademarks are not for that reason infringing another's right. It is basic UDRP law that preexisting or concurrent rights (there being no evidence of opportunism) are sufficient to defeat a claim of abusive registration. This is not undermined by a respondent failing to comply with its statutory deadline. It continues to enjoy its benefits regardless of having its trademark cancelled for failure to submit a Section 8 affidavit. It affects a respondent only to the extent that it loses (if it has one) its trademark registration . Otherwise, its right or legitimate interest in a domain name is not dependent on its having a trademark but in its using the domain name for a bona fide offering of goods or service “before notice” from the trademark holder [paragraph 4(c)(i) of the Policy]. Trademarks and domain names have in common pithy lexical arrangements that sometimes conflict but also allow for co-existing rights.

“Before notice” applies to respondents whose legitimate interest accrues by reason of their business activity on the Internet (which is the more usual application of the defense) as well to those respondents having a registered or unregistered trademark priority in the disputed term – a legal right rather than or in addition to a legitimate interest. The Respondent in Denis Freiden v. 411WEB Directory, FA1005001323356 (Nat. Arb. Forum June 18, 2010) for example appears to have both a “right” (as assignee of a registered trademark MYCITY) and a “legitimate interest” in the disputed domain name. Complainant nevertheless argues that its newly registered trademark MYCYTY (a deliberate misspelling of “city”) trumps the Respondent’s <mycity.com> because it has a present trademark and the Respondent (presently) does not. The parties are in competition in the online directory business. A current application by the Respondent has been indefinitely suspended.

On the issue of the Respondent’s “trademark right” as alleged assignee of MYCITY, while the facts are not entirely clear it is certain that there was a registration for that trademark, although now cancelled. The USPTO records show that the trademark holder for MYCITY (name of the assignee not disclosed) failed to file a Section 8 affidavit of continuing use between the 5th and 6th years (15 U.S.C. 1058(a)). Although the Respondent offered no evidence to prove that it was the assignee of the trademark (it only asserted that fact), the Complainant at least “acknowledge[d] that the Respondent’s rights [if it had any] date back to 1995 through the lapsed Trademark Registration.”

At worst, therefore, the Respondent in Denis Freiden is operating its business without a registered trademark, which it does not need. However, it established its right or legitimate interest from its use of the domain name “as early as October 31, 2004 [before the first use in commerce of the Complainant’s MYCYTY], and [it] showed that the use continues to the present day with the same mark and logo displayed at <mycity.com>.” The Respondent had both a preexisting as well as (arguably) a concurrent right to the domain name

Domain names composed of common foreign words (allegedly without knowledge that they are identical or confusingly similar to complainant’s trademark) are generally treated as generic terms. Dictionary words like “mariposa”, “mirabella” and “clara” have been unsuccessfully challenged by domestic and foreign trademark holders. Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010) (<clara.com>, meaning “clear” in Spanish); Mirabella Beauty Products, LLC v. Mrs Jello, LLC., D2009-0673(WIPO July 29, 2009) (<mirabella.com> meaning “look beautiful” in Spanish); and Mariposa Ltd. v. Stonecutter, Don Sawtelle, D2010-0200 (WIPO March 28, 2010) (<mariposa.com”, meaning “butterfly” in Spanish). Bad faith registrations in this kind of case turn on the use to which the domain name is being put; that is, does the website exhibit any signs that the complainant or its trademark is known to the respondent?

Where the content of the website is derivative or runs parallel with that which the Complainant offers or upon which its reputation rests the domain name is more likely than not to be found abusive. The Respondent in Vaga-lume Midia Ltda v. Kevo Ouz d/b/a Online Marketing Realty, FA0910001287151 (Nat. Arb. Forum December 7, 2009) simply dropped the country code extensions used by the Complainant who projects itself on the Internet through <vagalume.com.br> (and other country code extensions in South America). The majority concluded over a vigorous dissent that the registration and use of <vagalume.com> (which means “firefly” in Spanish) constituted abusive registration. The majority found that the Respondent was essentially capturing the Complainant’s audience; had, in fact, acquired the domain name for its traffic generating power. A foreign word equally common in its own language but less familiar to the targeted Internet users coupled with an English pronoun raises an alarm of abusive registration. Such was the case in Teva Pharmaceutical Industries Ltd. challenged Protected Domain Services / Dworld c/o Basil Administrator in D2010-0532 (WIPO May 28, 2010) for <myteva.com> in which “teva” means beauty in Hebrew but has no meaning in English.

A more subtle variant involves a trademark that has no meaning in any language but by happenstance is similar to a common word in a foreign language. The Complainant in West Corporation v. Domain Admin c/o Mrs Jello, LLC., FA1004001321540 (Nat. Arb. Forum June 14, 2010) cries foul because the disputed domain name <entrado.com> is “confusingly similar” to its trademark INTRADO. However, “intrado” is a made up word while “entrado” is a common word in Spanish meaning “coming in” or “entrance.” The Panel agreed that the domain name was confusingly similar to the trademark, but rejected the contention that the Respondent lacked rights or legitimate interests in it or that the domain name was registered in bad faith. A trademark holder’s failure to consider similar (in fact, confusingly similar) linguistic constructions in other languages is at the root of the problem. “Complainant’s use and registration ... of a mark similar to the common term constituting the disputed domain name cannot prevent others from using the term in a wholly different context that is aligned with the term’s common descriptive meaning.”

The extended or figurative meaning of “entrado” appears to include a sexual reference. However offensive this may be to the Complainant it is an unintended consequence of its choice of trademark. The “mere fact that a domain name resolves to a website featuring adult content does not per se render the registrant devoid of rights or legitimate interests in the domain name.” There was no evidence that the domain name was registered to capture the Complainant's traffic.

A number of panelists have expressly granted permission to complainants or paved their way to refiling complaints on grounds that would not ordinarily be permitted under the test announced in Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd. D2000-0703 (WIPO November 10, 2000). The Panel in Umpqua Investments, Inc. v. Private Registrations Aktien Gesellschaft, FA1005001324718 (Nat. Arb. Forum June 15, 2010) for example denied the complaint with the surprising ruling that it was “without prejudice” without any discernible basis for inviting the Complainant to refile. The question is, Under what circumstances and on what proof is a complainant permitted to renew its claim? “Without prejudice” is arguably appropriate for certain situations, where the trademark is being currently contested administratively or judicially. In Family Watchdog LLC v. Lester Schweiss, D2008-0183 (WIPO April 23, 2008) for example the Complainant’s trademark registration was being contested before the Trademark Trial and Appeal Board in a cancellation proceeding. In such circumstances, Panels have invited complainants to refile a UDRP complaint once the issue has been resolved, Jonathan Ive v. Harry Jones, D2009-0301 (WIPO May 5, 2009).

The Grove test as refined in Creo Products Limited v. Website in Development, D2000-1490 (WIPO January 19, 2001) is a simple formulation that limits reargument or renewal of a prior application for relief to 1) serious misconduct by a judge, juror, witness or lawyer; 2) perjured evidence being offered to the Court; 3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and 4) a breach of natural justice/due process. “The integrity of the ICANN Policy and procedure” (the Panel in Grove Broadcasting stated) “requires that if a reconsideration of the same Complaint is to be entertained, there should be proof that one of the strict grounds discussed in this decision has been made out.” Ground 3 is the usual battleground in a UDRP case.

The more rigorous answer to the issue of refiling is provided in Fondazione Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH), D2009-1421 (WIPO May 31, 2010) (citing Creo Products), attempting to reopen and reargue D2001-0566 (WIPO June 25, 2001). The Complainant contended that it had received a decision from the Verona Tribunal in which the Tribunal held that its “trademark rights” existed “long before the disputed domain name was registered.” Evidently, the Verona Tribunal’s jurisdiction is limited. It appears not to resolve the issue of rights to a disputed domain name.

Having a trademark (or a right assimilable to it under Italian civil law) is not conclusive. In the earlier case the Panel “avoided making a determination regarding whether Complainant had established rights in a trademark.” Rather, it determined that the Respondent had “established rights or legitimate interests in the disputed domain name through a bona fide offering of services prior to notice of a dispute.” “[E]ven though the litigious designations are confusingly similar and that Complainant may have well established rights in the designation ‘Arean di Verona’” the Complainant could not prevail in a UDRP proceeding.

The Complainant offered the Verona Tribunal decision as a change of circumstance, but no other basis to support reopening the case. In rejecting the complaint, the Panel made two points that are relevant to an understanding of this issue. First, the “Verona Tribunal does not have some form of appellate jurisdiction regarding legal or factual determinations made by an administrative panel operating under the Policy” any more than “does an administrative panel operating under the Policy ... [have] authority to intervene in the processes or decisions of an Italian civil court.” Second, and more to the point, “this Panel finds that Complainant has not presented any materially changed fact postdating the decision by the prior panel in 2001.”

Domain names and trademarks alike can be lost by termination or cancellation if registrations are not renewed (UDRP) or affirmed (Trademark Act) and once lost are retrievable, if at all, with effort. Under U.S. law, a trademark “shall be canceled” (15 U.S.C. 1058(a)) unless the registrant takes affirmative steps between the 5th and 6th years to maintain its currency by filing “an affidavit setting forth those goods or services recited in the registration on or in connection with which the mark is in use in commerce” (Id. 1058(b)(1)). For domain names, timing of renewal depends on the number of years for which they were registered and while registrars have notice procedures in place to forewarn of imminent termination lapses continue appearing on the UDRP dockets.

A lapse, however, an inadvertence to perform an administrative task, is not fatal if the trademark holder acts reasonably quickly to remedy the oversight. Zevex, Inc. v. Isaac Goldstein, FA1005001323005 (Nat. Arb. Forum June 15, 2010). On the other hand, a lengthy passage of time gives credence to the argument that the domain name has been abandoned. Radio Italia S.p.A. v. Mdnh Inc, Brendhan Hight, D2010-0329 (WIPO May 14, 2010). The Complainant owned <radioitalia.com> until 2000. A moderate passage of time can be offset by the complainant showing that the respondent is taking advantage of the trademark by populating the website with links to the complainant’s industry and its competitors.

Panelists have essentially rejected the view expressed in Corbis Corporation v. Zest, FA0107000098441 (Nat. Arb. Forum September 2, 2001) involving <digitalstock.com> that losers should be weepers and finders keepers (“There is an element of “finders keepers, losers weepers” in this decision. We believe that is as it should be.”) Nevertheless, the complainant should take care. When a domain name comes onto the market registrants have no way of knowing that it belonged to a trademark holder who inadvertently allowed it to lapse. Berenson & Company, Inc. v. Berenson Corp. c/o Babij, Terry, FA0909001283183 (Nat. Arb. Forum October 23, 2009). The Respondent was innocent of bad faith; it benefitted from the fortuity of the Complainant’s lapse.

It may to the respondent appear unfair that it can be deprived of the domain name. The Panel noted in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum February 10, 2003) that while “it is understandable that Respondent considers it unfair that a domain name registrar may auction an expired domain name the use of which may be encumbered by trademark rights, such auction of expired names is [] consistent with the registration system adopted and implemented by ICANN.”

Inadvertently allowing a registration to expire “does not mean that any Registrant is permitted to swoop in and acquire the registration.” This was the circumstance in Zevex and recently in ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010). Both these Complainants had owned their respective domain names for a long period of time and acted quickly to redeem what they had lost. The Zevex Respondent registered the disputed domain name on April 1, 2010, one day after Complainant’s redemption period ended. “Zevex” has no meaning in the English language so the term could not be used in any dictionary sense. The Panel inferred bad faith registration from bad faith use in populating the website with links to the pharmaceutical industry and Complainant’s competitors.

Although “trade names perform the same ‘origin function’ as trademarks, indicating the source or nature of the business entity they represent, and perform the same investment or advertising function” they are not (or not formally) accorded protection under the UDRP (Second WIPO Report, para. 311). Interjecting “not formally” is meant to emphasize that Panels have (to some extent) lowered the proof demands for protection of unregistered trademarks under common law principles reflecting perhaps the majority of commentators referred to in the Second Report who supported protection of trade names in the DNS “equivalent to that accorded to trademarks.” (id.) Nevertheless, the proof requirements are significant and the evidence for unregistered marks must be given the attention demanded to make a case for standing.

Trade names may be protected as common law trademarks, but only where the complainant offers sufficient proof that the public associates the mark as a source of goods or services. The Complainant in Glasgow Signs v. 1st Signs Limited trading as Sign-A-Rama, D2010-0409 (WIPO May 4, 2010) alleged that it had traded under the name “Glasgow Signs” since 2004. However (the Panel pointed out) “a person claiming rights in a descriptive term must show that the term has acquired a secondary meaning denoting its business.” Thus, although there may be a likelihood of confusion as the Complainant alleges the Panel stops his analysis on standing. The complainant either has trademark rights or it does not. If it does not the UDRP complaint must be dismissed.

WIPO’s recommendation two years into UDRP, “[d]espite the majority opinion that protection should be extended to trade names within the DNS, we do not consider that it is appropriate to modify the UDRP so as to allow complaints for the bad faith and misleading registration and use of trade names as domain names.” Among the reasons, was the following:

In Glasgow Signs, “the Complaint fail[ed] at first base” for the reason that “the Complainant has not provided any specific evidence as to the extent of its use of the descriptive term, ‘Glasgow Signs’ in which it claims rights.” The specific evidence referred to by the Panel that would support unregistered trademark rights includes “the value of [the Complainant’s] sales using the alleged mark or of its expenditure on any advertising or other promotion under the mark. Nor has it disclosed the nature of any advertising or promotion.”There also was “no evidence showing that customers or suppliers of the Complainant have been taught to regard or have come to perceive the term as a brand.”

The Second Report does note in paragraph 320 that “[i]n the case of ccTLDs, we believe that much greater scope exists for allowing complaints under a dispute-resolution procedure for abusive registrations of trade names. Within the ccTLD, the problem of diversity does not exist in the same way and there is greater scope for applying the relevant national implementation of protection of trade names.” Thus, the Australian and New Zealand Policies, for example, protect trade names as well as trademarks. The Panel in Supre Pty Ltd v. Paul King, DAU2004-0006 (WIPO December 22, 2004) explains that “unlike the Uniform Domain Name Dispute Resolution Policy, the .au Domain Name Dispute Resolution Policy prohibits identity or confusing similarity with a ‘name’ as well as with a trade or service mark. ‘Name’ is then defined to include a complainant’s registered company name. So, in the present case, the Respondent has chosen a domain name, which is confusingly similar to the Complainant’s company name.”

Under UDRP, however, Complainant's use of a trade name, without any showing of secondary meaning associated with it, insufficiently demonstrates that Complainant has rights that support standing to complain about likelihood of confusion.

Prevailing Against One Respondent Does Not Guarantee Proving Bad Faith Against Another

There are many repeat complainants policing their trademarks in UDRP proceedings. Those of well known brands invariably prevail against defaulting, but not always against appearing respondents. Pharmaceuticals (Sanofi-Aventis), banks and finance (Citigroup, Inc., MasterCard International Incorporated) , fashion (Christian Dior Couture), retail (Harrods Limited, Burberry Limited), hotels and travel (Sheraton International Inc.), automobiles (Bayerische Motoren Werke AG (BMW AG)) and toy manufacturers (LEGO Juris A/S) are frequent targets. Lesser known brands composed of common words or descriptive phrases prevail some of the time. The demand for proof is inversely proportional to the strength of the mark. The less the strength, the more persuasive the proof required.

Aspen Holdings, Inc. owns the trademark 1ST QUOTE on the Principal Register. In the past year it has policed its trademark against three different respondents for the second level domain with the numeral spelled out, “first quote.” “1ST” and “first” are phonetically identical. The Complainant prevailed in the two earlier of the three cases, Aspen Holdings Inc. v. Christian P. Vandendorpe, D2009-1160 (WIPO October 16, 2009) (<firstquote.net>) and Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, D2009-0776 WIPO August 20, 2009) (<firstquote.org>). The Respondent defaulted in the first case and appeared in the second. In the most recent case, the Respondent also appeared and its defense was persuasive, Aspen Holdings, Inc. v. Isaac Goldstein, D2010-0576 (WIPO June 3, 2010) (<firstquote.com>).

Why does the Complainant lose when its experience has been to prevail? Or, turned around, what proof has the new Respondent offered that differs markedly from other records? The resolution of all cases depends on the factual circumstances supported by concrete evidence. Victoria Woo known by her stage name “Kianna Dior” prevailed over Christian Dior while other Dior respondents forfeited the disputed domain names. When a respondent defaults it is permissible to draw an adverse inference from its failure to defend its registration. It does not change the complainant’s burden to prove bad faith, but default is generally conclusive on the issue of right or legitimate interest in the disputed domain name. The Panel in the case of Aspen against Goldstein wants to make sure that she clearly distinguishes the facts before her from the record in the earlier two cases. “In this Panel’s assessment, the present case needs to be distinguished from previous - though not binding - cases decided under the UDRP.”

In Aspen Holdings against Vandendorpe the Panel found that while the word “quote” was frequently used in connection with financial products, the phrase “first quote” called for some explanation that was not forthcoming. The domain name – <firstquote.net> – “was registered only 5 days after the Complainant had first started using the term 1STQUOTE in commerce. As the respondent in the case had been involved in an earlier UDRP proceeding, and as he had not replied to the Complainant’s contentions, the panel in that case decided that these ‘factors when combined together are sufficient to tip the scales in the Complainant’s favour on the balance of probabilities’.”

In Aspen Holdings against Natsch the Respondent is a high volume registrant of domain names. I have mentioned in earlier Notes that Panels have reached near consensus that more is expected from this class of respondents. “The Panel notes that paragraph 2 of the Policy implicitly requires a registrant to make some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.” Moreover, citing cases that hold respondents accountable for their choices under the retroactive bad faith construction of the Policy, “the obligations imposed by paragraph 2 are an integral part of the Policy applicable to all registrants, [which] cannot be ignored.”

In contrast to the two earlier cases, the Respondent in Aspen Holdings against Goldstein “gave well-founded reasons why he was unaware of any known corporations operating under the brand name ‘first quote’ when acquiring the disputed domain name. Moreover, brought evidence to the Panel’s attention that numerous insurance companies are advertising under the term ‘first quote’.” The plethora of uses argues against any monopoly absent proof that the Respondent is taking advantage of the trademark rather than using the expression in its lay meaning. “To sum up .. compelling facts and circumstances on the record of this case do not suggest that the disputed domain name was registered in bad faith.”

Application of the Willful Blindness Standard to Registration and Use of an Expired Domain Name

Ordinarily, registration and use of dictionary words singly or combined to form a descriptive phrase are available to the first to register on the principle that common words cannot be monopolized. This principle, however, is not without qualification. It does not mean in every instance that a respondent is entitled to register common words that have achieved (by registration or common law) trademark status. On one side of the divide there are clearly common words available on a first come first served basis. Closer to the divide are combinations of common words. In many instances the difference between good and bad faith depends on the reputation of the trademark and the location of the parties. It also depends on the status of the respondent. There is a developing consensus that high volume purchasers and users of domain names are more accountable for their choices.

The existence of trademarks with a reputation in the marketplace cannot simply be ignored because they are composed of common words. Where the respondent is a domain name reseller it must show the steps it took in good faith to avoid registering domains which correspond to trademarks. “In mVisible Techs., Inc. v. Navigation Catalyst Sys., Inc., D2007-1141 (WIPO Nov. 20, 2007), a distinguished Panel underscored, as have other Panels, the notion that a sophisticated domainer cannot be ‘wilfully blind’ to whether a particular domain name may violate trademark rights.” Asserting ignorance of a complainant’s “trademark is not enough to avoid a finding of bad faith registration.”

The Complainant’s in Oregon Freeze Dry, Inc. v. Vertical Axis Inc., FA1003001316531 (Nat. Arb. Forum June 10, 2010) owns the trademark EASY MEAL which it acquired in 1984. The Respondent purchased <easymeal.com> after the prior registrant (not the Complainant) allowed it to expire in 2006. The Panel was divided. The case is in the murkier area of the divide. The majority based its finding of bad faith registration and use on a combination of facts. First, that as a high volume registrant the Respondent had a duty to investigate; second that it was offering the domain name for sale; third, that the website contained hyperlinks to the Complainant’s competitors.

While the general rule does not require a respondent to search trademark registers, in Oregon Freeze Dry the “Respondent has obvious and close links with the United States and is in the business of looking for opportunities generated by domain names becoming available for registration.” The dissent saw the circumstances differently: “To argue that a registrant who chooses descriptive terms and then must be held accountable because it later discovers them to be trademarked by some relatively obscure mark owner is completely the opposite of the UDRP principle.” The trend is toward greater accountability. The fact that undercuts the dissent’s position is the content of the website. Was it mere happenstance, or were the contents created to take advantage of the trademark? Actual knowledge is not required; willful blindness is not tolerated.

Panels have reached consensus on content. “The Respondent cannot say it does not bear responsibility for the sponsored links appearing on its website. It cannot disclaim responsibility for those links which concern the field of commercial activity in which the Complainant is a major player.” Indeed, “[t]he profitability of PPC links engendered by a well-known name must, over time, increase the saleability, and therefore, the price, of the disputed domain name. It is no excuse to say that the offer to sell is standard on a particular PPC website.”

Implausibility of Defensive Proof to Complainant’s Demand for Transfer of Domain Name

It is incongruous to combine words drawn from different languages to create a domain name in which the dominant word is identical to a complainant’s trademark. In Teva Pharmaceutical Industries Ltd. v. Protected Domain Services / Dworld c/o Basil Administrator, D2010-0532 (WIPO May 28, 2010) the Respondent combined the English word, “my”, with a transliteration of a Hebrew word, “Teva” to form <myteva.com>. Generally, combinations preceded by “my” have not fared well. Some explanation is expected if the respondent is to prevail. For example, Southwest Airlines Co. v. Cattitude a/k/a LJ Gehman, D2005-0410 (WIPO June 12, 2005) (<mysouthwest.com>): “a complainant’s adoption of a common geographically descriptive term for its service mark “faces a greater risk that the combination of that term with another common term will in fact distinguish the new combination.”

While “Teva” is a common term in Hebrew, its currency appreciates in its transliterated form as a trademark. In defense, the Respondent in Teva Pharmaceutical tried a number of tacks: that it had no knowledge of the Complainant or its trademark when it registered the domain name; that the dominant word corresponded with the manufacturer of sandals; that the dominant word was the name of a sporting event; that the transliteration was a common dictionary word meaning “nature.” In the Panel’s view

The Respondent’s explanations were inconsistent. The content of the Respondent’s website is entirely in English. It “provided no evidence of it having any connection with ‘the Teva Mountain Games’, or any demonstrable preparations to use the disputed domain name in connection with shoes, notwithstanding the fact that as of the date of this Decision, the disputed domain name resolves to a website which concerns Teva footwear.” Indeed, the reference to Teva footwear was clearly an afterthought invented for the occasion because it only appeared on the webpage after the Respondent received the complaint. Images of the webpages captured prior to the change displayed sponsored links relating to the pharmaceutical industry, the Complainant’s industry. “The Respondent’s assertion in its Response that the website at the disputed domain name is the ‘original site that was developed in 2008' is without factual support and does not overcome the Complainant’s prima facie case.”

The Respondent complained that “it made no meaningful financial gain from pay-per-click revenue.” This is both irrelevant, nonsense as a defense and, curiously, an admission that the Respondent’s purpose was to create a stream of income which would violate paragraph 4(b)(iv) of the Policy.

Favoring Complainant in Pornosquatting Case Where Respondent Lacks Rights or Legitimate Interests in the Domain Name

Respondents have a heavy burden in proving rights or legitimate interests in domain names for purveying pornographic content identical or confusingly similar to a trademark. Correspondingly, the complainant’s burden is lightened in proving bad faith. The question in these cases is whether the respondent had the complainant or its trademark in mind when it registered the domain name; and even if it did not, whether the use of the domain name for that purpose establishes bad faith registration? With international brands and famous names, evidence of targeting is manifest in the trademark chosen. There is a telling observation in David Green v. cafeinternet.com E-mail Services, NA NA, D2010-0425 (WIPO May 25, 2010) that “the textual string of the disputed domain name <cafeinternet.com> does not call to mind any generic or descriptive association with an adult-content website.” This is an ironic analogue for expressing the often stated principle applied to domain names composed of generic words or descriptive phrases that it is bad faith to register and use domain names for their trademark value.

Generally, regardless of the subject matter of the website and as long as there is no infringement of the complainant's rights, “[domain names] registered because of their attraction as dictionary words, and not because of their value as trademarks [do not contravene the Policy],” The Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum August 6, 2004) (<landmarks.com>). This principle carries over into pornographic websites. As the Panel in Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, D2005-0636 (WIPO August 18, 2005) states, “display of pornographic imagery on a web page, without more, no matter how offensive, repulsive or antithetical to contemporary society mores – and some of Respondent’s imagery certainly falls within that rubric – does not as such constitute bad faith under the Policy.” Indeed, “adult sex sites are perfectly legal and constitute bona fide offerings of goods or services,” Motorola, Inc. vs NewGate Internet, Inc., D2000-0079 (WIPO April 20, 2000).

The split decision in David Green -- some commentators have found the majority's reasoning puzzling -- is understandable because the record did not unequivocally and concretely establish that in registering the disputed domain name the Respondent had the Complainant’s trademark in mind; the website had also been operating for 13 years without objection which made the having in mind connection less than convincing. Even so, the dissenting member recognized that “this was a close call.” For the majority, the facts that tipped the scale lie not in or not specifically in the commonness of the name “café internet” but in the Respondent’s failure to comply with its registration duties to maintain accurate disclosure of its identity. “Respondent has failed to provide details of its true name or identity.... These facts suggest that Respondent provided a false name and false contact details in an effort to make identification and communication impossible, thereby supporting a finding of bad faith in this particular case.” The dissent did not condone Respondent's failure but rested his conclusion on the paucity of the record.

Lacking right or legitimate interest in the disputed domain name and, according to the majority in David Green, “linking [it] to adult-oriented websites is a widely accepted evidence of use in bad faith.” While the decisions cited by the majority for this proposition are hardly conclusive it is true that a pornographer has to demonstrate a clean record even in equivocal circumstances where it may even have registered the domain name before the trademark, that it is in compliance with its registration duties and is using the domain name in its dictionary sense. For example, the Respondent in CHRISTIAN DIOR COUTURE v. Paul Farley, D2008-0008 (WIPO February 2, 2008) (she “offers bondage, discipline and sado-masochism services ... to customers in the San Francisco Bay and Washington D.C. areas of the United States”) is known by her stage name "Anna Dior", hence she passes her legitimacy test for <annadior.com>.

There can be two independent reasons for unawareness of a complainant or its trademark. One is the trademark’s lexical composition – generic through fanciful; the other is geographic distance. A lexically unrecognized trademark outside its territorial market is less likely to be known to a domain name registrant. Both these reasons are present in GoFit LLC v. Dom Administration, DI S.A. and International Services Company SA, D2010-0367 (WIPO May 19, 2010). The disputed domain name <gofit.com> and the trademark “GOFIT.NET” is (as the Respondent alleges) an expression in common use, meaning “getting fit” or relating to “fitness.” The parties are respectively in the United States and Europe. They could also be in different states of the United States, CNRV, Inc. v. Vertical Axis, Inc., FA01300901 (Nat. Arb. Forum May 3, 2010).

The Panel held that the domain name in GoFit was confusingly similar to the trademark, but the Complainant offered “no evidence that the Respondent used the disputed domain name in bad faith or that there is any [likelihood of] confusion.” The case illustrates the uphill battle for a holder whose trademark interest is later in time, not the only user of the registered term and whose market reach is limited. “In addition it appears from the evidence before the Panel that the term ‘GoFit’ is in common usage with 1443 domain names incorporating the term which suggests that even had the Complainant undertaken some degree of Internet or trademark searching at the time of registration it would have found numerous co-existing users of marks or domain names incorporating ‘GoFit’.”

The Respondent argued and the Panel agreed that “this is not a case of cybersquatting which the Policy was designed to address but is rather an example of a Complainant deciding after the fact that it wishes to obtain a domain name which was not available when it initially chose its domain name and brand.” The Panel held that in its view

The argument that the Respondent (a transferee of the domain name) should have known of Complainant’s right based on its trademark when it registered the domain name was properly rejected. While there may be circumstances invoking willful blindness – it must be carefully calibrated – there is no imputation of knowledge under the UDRP. If constructive knowledge is applied at all it would be where both parties are U.S. citizens. The argument that the Respondent “allows [the domain name] to defer to a parking page featuring ... links” associated with the everyday understanding of “go fit” would be relevant only if the Respondent “has actively sought to trade off the Complainant’s trade mark rights or to profit from the Disputed Domain Name at the expense of the Complainant.”

The argument that a respondent rejected a complainant’s offer to buy the domain name is rather evidence of good faith than bad. The “Respondent evidences its intention to continue to use the domain name as it has” which affects the Complainant only in the sense that it covets the domain name. Otherwise, the “Respondent’s parking page does not appear to be in direct competition with the Complainant’s business and overall there are insufficient circumstances in evidence before the Panel to support a finding of use in bad faith.”

There is a struggle going on in the community of UDRP panelists. One group of panelists would expand the circumstances for bad faith registration; they argue for a unified construction that eliminates the conjunctive requirement in those egregious circumstances in which respondents having speculated on dictionary words, common combinations or descriptive phrases which target later acquired trademarks that achieve wide marketplace currency. I have discussed this phenomenon in earlier Notes. The formative analysis was presented in a pair of cases from the same Panel, 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 e-Solutions, D2009-0786 (WIPO August 19, 2009). He coined the phrase “retroactive bad faith.” This is one side of the argument.

A number of other panelists jumped on the new construction and an equal number have rejected the approach, preferring stare decisis, a Latin term meaning “ to abide by decided cases.” Courts aim for consistency; so should UDRP jurisprudence. That is the other side of the argument. The two sides are present in Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois, D2010-0217 (WIPO June 1, 2010). The majority prefers continuity of construction. The dissent, the inventor of “retroactive bad faith” (the sole panelist on Octogen) is passionate for the new approach. While his argument was unpersuasive to the majority in Tata Communications, one member (the Presiding Panelist) was nevertheless ready to concede that circumstances may warrant a finding of bad faith registration based on a “willful blindness” analysis:

This introduces a new thought that attempts to bridge the gap between what at first glance appears to be two irreconcilable constructions. “[T]hose ‘certain circumstances’ have concerned respondents who were clearly aware of the complainant in advance of the registration of its mark, [but] there is also substantial panel authority for the view that a respondent need not be specifically aware of a complainant when it registers a disputed domain name. ‘Willful blindness’ can be sufficient for a finding of registration in bad faith.”

Panelists in agreement that the expansion of business models must be countered by a new paradigm have suggested that a unified theory is supported by the language of the UDRP; and, if this is not acceptable, then bad faith registration should be assessed from the date of its renewal, Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010). There is clearly an attempt by the Presiding Panelist in Tata Communications to find the right jurisprudential language that will not offend precedent and is compatible with it.

“The majority” (as the dissent sees it) “apparently believes that it was the intent of the draftspersons of the Policy that a registrant is free to profit from the goodwill inherent in the trademark belonging to another and to mislead the public, so long as the registrant did not intend to do so at the time it registered the mark.” This construction (the dissent believes) fails to keep pace with monetizing models that undermine trademark law. The “Policy was created at a time when cybersquatters were individuals with one or a few domain names identical to trademarks who would attempt to sell the domain names to trademark owners.” In the beginning, “[t]here was no use of robots.txt, no parking or landing pages, no pay-per-click ads, no bulk registrations, no privacy services, no IDNs.”

The “purpose of trademark law is to prevent the public from being confused as to the source of goods and services with which the trademark is associated.” Hence the rationale for a “unitary, rather than binary, concept,” which means that bad faith use (which in Tata Communications all members of the Panel agree is evident) is conclusive of bad faith registration. There must be “flexibility to apply the Policy to situations that were never contemplated by the draftspersons.”

To what extent the dissent’s flexibility call will be answered is not entirely clear, but it can be argued that language to meet the challenge is being tested. This is evident from the Presiding Panelist’s (unusual) interjection (dicta) of his own thoughts “that the Policy does not necessarily preclude bad faith registration in circumstances where a respondent speculatively registers a domain name in the hope of exploiting some future trademark value it might have, in addition to any other value.”

Nominative fair use and initial interest confusion are opposite propositions, but they have in common unauthorized use of a complainant’s trademark. In both, the Internet user may initially believe that the domain name will take him to a website sponsored by the trademark holder. Yet, the first qualifies as a defense and the second signifies abusive registration. The Respondent’s use of <america-steinway.com> in Steinway, Inc. v. Carey Simon, FA1004001418229 (Nat. Arb. Forum June 2, 2010) is ruled to be nominative fair use. The Respondent in Gibson, LLC v. Jeanette Valencia, D2010-0490 (WIPO May 22, 2010) is found to have registered and is using <moderncowgirls.com> in bad faith.

Differentiating nominative fair use and initial interest confusion hinges on use; whether the respondent’s business is distinguishable from and noncompetitive with the complainant’s. When the Internet user arrives at <america-steinway.com> he finds a company dedicated to refurbishing and reselling Steinway pianos with an appropriate disclaimer that it is not the maker of pianos. At <moderncowgirls.com> the Internet user found a website selling goods competitive with the Complainant. Initial interest confusion websites may also contain a disclaimer, but their offerings of goods or services are not bona fide because they are using the trademark to compete with the complainant.

As the Panel notes in Steinway, the “prevailing view in other UDRP cases is that a reseller of goods has a right to incorporate a manufacture’s mark in an offering of goods and services” when it passes a test originally formulated in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). The list of businesses legally entitled to use a complainant’s trademark without authorization has grown beyond resellers, discussed on June 1, “Selling a Service Based on Goods Produced by Trademark Holder.”

It is useful in understanding application of the opposite propositions to revisit a case in which the UDRP complaint was denied on the ground that the Complainant failed to prove that the Respondent registered the disputed domain name in bad faith. The Panel in Volvo Trademark Holding AB v. Volvospares / Keith White, D2008-1860 (WIPO February 10, 2009) does not refer to nominative fair use, but the domain name <volvospares.com> suggests an independent business providing spares for Volvo vehicles and the Respondent claimed to be a “reseller”. The facts recited by the Panel appear to support a legitimate business in used parts. However, while the website captured in December 2007 on Archive.com appeared to offer spare parts, the Complainant alleged that it had attempted to make purchases from the website without response, supporting the inference that the website was a fake created solely to attract Internet users for traffic.

Upon issuance of the adverse decision in Volvo Trademark the Complainant commenced an ACPA action in the United States District Court for the Eastern District of Virginia. The Court by Order dated April 1, 2010 granted summary judgment to plaintiff and directed transfer of the disputed domain name. (I would like to thank Christian Lavers, Esq. for bring the federal action to my attention in the Firm's blog.) The defendant (respondent in the UDRP proceeding) did not formally appear. Had it done so, it could have offered evidence (if it had any) that its registration and use was nominative fair use. Although the Respondent evidently satisfied this burden for the UDRP Panel (perhaps was given the benefit of the doubt) it was otherwise in federal court. There, it would (had it not defaulted in appearance) be put to the test of actually producing evidence that it truly was what it represented itself to be, namely a legitimate business offering used spare parts for Volvo vehicles. Instead, it offered (informally) only the UDRP decision which “is neither admissible, nor entitled to any deference.” The defendant’s other argument (again only informally in a letter to the Court) was without merit, namely that its registration of "volvo” paired with a generic term, “spares” preceded Volvo doing likewise.

In assessing infringement of trademarks generic additions do not create a new distinctive mark. If there is no business (it cannot be passively held) there is no nominative fair use.

The timing of notice can be a critical factor in determining parties’ respective rights to a disputed domain name. A cease and desist letter is important for establishing an outside date. It stops the clock on the paragraph 4(c)(i) defense. MBO Partners, Inc. v. MyBizHomepage, Inc., FA1004001319466 (WIPO June 1, 2010). While a complainant’s delay in initiating a proceeding against a respondent who has registered and is using the domain name in bad faith does not create a right or legitimate interest that does not otherwise exist – there is no laches defense as such – delay in giving notice may be consequential if in the interim between registration and notice the respondent establishes its bona fides. Paragraph 4(c)(i) of the Policy. Delay favors the respondent. For this reason it is in the complainant’s interest to act promptly after knowledge of a potential infringement.

It has been noted that “[a]lthough ... a [cease and desist] letter is not strictly necessary, replies and/or subsequent conduct by a Respondent can often help to prove or infer bad faith registration,” “21” Club Inc. v. 21 Club, D2000-1159 (WIPO November 22, 2000). Correspondence can also prove determinative, in complainant’s favor when the respondent makes admissions against interest and in respondent’s favor when complainant initiates negotiations to purchase the domain name. If notice is given by a cease-and-desist letter the complainant should move promptly to challenge the registration. Tardiness may support acquiescence. Sun Studio Entertainment, Inc. v. Memphis Recording Service, FA0805001189842 (Nat. Arb. Forum June 19, 2008) (domain name identical to the U.S. trademark in MEMPHIS RECORDING SERVICE).

In MBO Partners, neither party addressed the fact that there was no notice of a dispute between the parties in 2005 when Respondent registered ... <mybizhomepage>.” Rather, the “notice of the dispute arose years later when Respondent attempted to register the disputed domain names as trademarks with the United States Patent and Trademark Office.” In consequence, “the evidence shows that for several years prior to the dispute, Respondent made a bona fide offering of goods or services.”

The Respondent in MBO Partners genuinely conducted business “before any notice of the dispute.” Equivocal circumstances, however, will favor the complainant. To successfully invoke the 4(c)(i) defense a respondent cannot rely on any post-notice actions. The defense is limited to actions taken prior to receipt of the notice. “To allow Respondent’s claim that he has made post-filing changes to his website to alter the outcome of this dispute would open the door for all future respondents ... to avoid the consequences of their actions,” Hewlett-Packard Company v. Alvaro Collazo, FA0302000144628 (Nat. Arb. Forum March 5, 2003); Poker Host Inc. v. Russ "Dutch" Boyd, D2008-1518 (WIPO December 1, 2008) (“If use following complaints were taken into account, the Policy could be rendered wholly ineffective by respondents rapidly posting websites which ostensibly constituted fair use of disputed domain names.”)

Although a domain name registrant has no obligation to respond to the complainant’s cease and desist letters, there are cases in which Panels have found that a twin failure to reply to the complainant’s cease and desist letter and to file a response to the complaint are conclusive that the respondent has no right or legitimate interest in the domain name and registered and is using it in bad faith. The finding is based on the notion that if the respondent had a right or legitimate interest it would have responded. On the other hand, no such inference can be drawn when the respondent answers the complaint.

Asserting a Right or Legitimate Interest Requires Respondent to Offer Verifiable Proof

Parties controlling evidence must produce it to establish their contentions. Non production leads to the conclusion that the asserted proof does not exist. Just as it is expected that a complainant prove it has a trademark right to maintain a UDRP proceeding, the respondent must demonstrate it has a right or legitimate interest in the domain name. The Respondent in Referral Experts LLC v. Cornerstone Marketing Group, D2010-0439 (WIPO May 17, 2010) did not formally respond to the complaint, but it answered a cease and desist letter through counsel in which it stated “that the principal of the Respondent company had carried on business in Canada as an image consultant providing advice on matters such as self esteem, personal style, wardrobe selection and career consulting, and had done so since 1988 under the name and style ‘Looking Your Best.’ The letter stated that the Respondent’s website was created in approximately 2002.” The Complainant has a trademark for LOOKINGYOURBEST.COM issued by the USPTO in 2005 and LOOKING YOUR BEST in 2010. The disputed domain name is <lookingyourbestinc.com>.

If the facts set forth in the answer to the cease and desist letter are true, the Respondent in Referral Experts appears to have priority in the common phrase incorporated into the domain name. However, an attorney’s letter is not evidence of the truth of the statements made therein. While defaulting in response to the complaint is not dispositive of bad faith, it may be (and in the case of Referral Experts is) conclusive with respect to rights or legitimate interests in the disputed domain name. The respondent must appear and put its evidence on the table if it expects to counter the affirmative evidence in the record.

The addition of “inc” to the trademark does not distinguish the domain name. “It is well established that in the determination of confusing similarity under the Policy, additional words or letters such as ‘inc’ are not usually distinguishing” and functional affixes (“www”) and suffixes (any generic TLD) are disregarded. Nevertheless, “the Respondent has asserted, in effect, although without any reference to the Policy or to any impending proceeding under it, that it has used a name corresponding to the disputed domain name for a bona fide offering of goods or services since before notice of the dispute, such as might satisfy paragraph 4(c)(i) of the Policy. It also asserts in effect that it has been commonly known as a business by the disputed domain name or a similar name.”

Priority in commercial use of a term later registered as a trademark will defeat the complainant. Assertions of fact are merely preface to evidence. This is what I claim; this is the evidence that supports it. But, the Respondent in Referral Experts was silent on the record. “Neither in [the letter responding to the cease and desist] nor to this proceeding has the Respondent adduced any evidence, such as original telephone or business directory entries, photographs, brochures, correspondence or invoices, of matters that it asserted vigorously and that one might expect to have been factually verifiable.” Failure to offer verifiable proof controlled by the party is tantamount to admitting that the proof does not exist.

While the Respondent may indeed operate a legitimate business for the supply of goods and services “assisting people to ‘look your best’ it is not entitled to use the Complainant’s trademark to divert Internet users to another website that offers competing services. This violates paragraph 4(b)(iv) of the Policy. “It may reasonably be anticipated that a proportion of Internet users looking for the Complainant’s trademark, through a search engine or otherwise, may find their way to the website corresponding to the disputed domain name, and may be confused initially into believing it to have the endorsement of the Complainant.” Since the Respondent’s redirected website is commercial the registration and use of the domain name are in bad faith.

No person is entitled to a monopoly over words that are common to all. Trademarks composed of generic terms or descriptive phrases lack the strength of those composed of suggestive or arbitrary signifiers. If words and phrases in everyday use that have been granted trademark status are to be forbidden – taken out of the public domain – the complainant must show that the registrant chose the disputed domain name intentionally to piggyback on the reputation of its trademark and is using it for commercial gain. Use of the choice is a significant factor, but so is the timing of the registration.

The Complainant in PETSENSE, Inc. v. Wendy Garrett, D2010-0506 (WIPO May 17, 2010) owns registrations for PET ¢ENTS for “rawhide chews for dogs” (issued in 1997) and for PETSEN$E and PETSENSE (issued in 2006 and 2007) for “retail pet supply store services.” The domain name was registered prior to the trademark, although transferred contemporaneously with the issuance of its registration. The Complainant “operates an Internet web site at ‘www.petsenseoutlet.com,’ where it promotes PETSENSE products and services. Consumers associate the term ‘petsense’ in a domain name with Complainant’s services.” The last assertion cannot mean that all consumers everywhere associate the name with the Complainant.

In Petsense the Panel stated that it “is cognizant of other decisions (including those of this Panel) finding that including advertising to third party sites, including those that compete with a complainant, did not constitute to a bona fide offering of goods and services.” Hyperlinking to merchants offering competitive products is a factor in determining a respondent’s good faith. However, a finding as such is not conclusive and must be weighed together with other factors. It is not surprising that common lexical elements chosen alike by domain name registrants and trademark holders telegraph what the Internet user sees on the website and the goods or services the consumer can expect the trademark holder to deliver.

The Complainant in Petsense offered no evidence that the Respondent (or her predecessor) had the Complainant in mind – operating initially under its PET ¢ENTS trademark – or that its business was known to the Respondent in 2005 (before issuance of certificate of registration). “[U]nder the circumstances presented here, the Panel finds that Respondent’s use of the domain name prior to this dispute, when considered in combination with the current, actual and principal use of the web site to display content, do[es] constitute bona fide use.”

Even where the registration of the domain name follows the trademark the underlying theory is that parties who utilize common terms as trademarks or service marks cannot use the UDRP to bar others from using them separately or in combination with other common words as long as the complainant or its mark is not targeted. “It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them,” Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum February 13, 2001) (<groceryoutlet.com>). The burden in these cases for establishing exclusive rights is lighter when the mark in issue is a coined or fanciful term and heavier when it is not. In Petsense, the Complainant fails in proof on two counts; first, that the domain name was registered before its establishment of the PetSense Company; second, that the Respondent is using the domain name specifically in the sense conveyed by the domain name.

A respondent’s choice of a domain name incorporating a trademark for the purpose of identifying its business rather than competing with the holder can be a legitimate use. The general rule is that a respondent may permissibly register and use a domain name that is confusingly similar to the complainant’s trademark if it is descriptive of the business conducted under the domain name. Although no express permission is required it presupposes that the parties are engaged in entirely different enterprises and not competitors for the same consumers. A domain name used in such manner may be confusingly similar to the complainant’s trademark without there being a likelihood of confusion. The general rule is traceable to Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).

One side of the general rule was illustrated in the case of Cisco Technology, Inc. v. Nicholas Strecha, E-Careers LTD, D2010-0391 (WIPO May 7, 2010) (<ciscouk.com>) discussed in the May 24 Note. The other side of the general rule is illustrated in Human Resource Certification Institute v. Tridibesh Satpathy, Edusys, D2010-0291 (WIPO May 7, 2010). The Complainant is described as “an internationally recognized certifying body for the human resources industry.” It does not offer preparatory courses to students seeking to obtain certification from the Complainant. The Respondent in Cisco Technology registered <ciscouk.com>; the Respondent in Human Resource Certification Institute registered <hrcistudy.com>. In the first case, the registration and use is abusive; in the second, it is fair under the nominative fair use principle.

The application of the general rule is “finely balanced” [Alstom v. Industrial Tests, Inc., D2009-1702 (WIPO February 6, 2010)]. It provides space for companies operating in the secondary market to offer goods or services without impinging on the trademark holder’s rights. The examples of bad faith set out in paragraph 4(b) of the Policy “all have in common that the choice of domain name for the ‘use’ in question was governed by a desire on the part of the registrant to cause damage to the complainant or derive an unfair profit.” But, the Panel in Human Resource Certification Institute “venture[d] to suggest that it would only be in the most exceptional of circumstances that a domain name registration would be condemned without a finding of mala fide intent on the part of the registrant.”

There is no dispute that the Respondent Human Resource Certification Institute offered courses designed to prepare students for the certification examination. In Cisco Technologies, the Respondent was in competition with the Complainant for students, thus in violation of one of the tenets of the general rule. In Human Resource Certification Institute the Respondent had a simple explanation. He uses “the Domain Name <hrcistudy.com> ... to attract to his website those Internet users looking for study courses for the Complainant’s examinations.” The incorporation of the trademark simply describes the services offered. It does not pretend to be associated with the trademark holder.

The “nominative fair use” test formulated by the U.S. Circuit Court of Appeals for the Ninth Circuit finds a non-infringing, nominative fair use if the following three requirements are met: “[1] the product or services in question must be one not readily identifiable without use of the trademark; [2] only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and [3] the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder,” New Kids on the Block v. New America Pub., 971 F.2d 302, 308 (1992).

The greater the geographic distance between parties the more plausible the respondent’s denial that at the time it registered the domain name it had any knowledge of the complainant or its trademark. Plausibility is bolstered by the commonness of the words comprising the trademark and complainant’s failure to submit any evidence of its reputation in the respondent’s country that would support an inference of prior knowledge. The Complainant in Juicy Details B.V. v. Another.com, D2010-0809 (WIPO July 15, 2010) acquired a Benelux trademark in the same time frame that the respondent registered the domain name <juicydetails.com>, but operates in a different market than the Respondent.

“Juicy” in combination with “details” is a metaphor colloquially “denot[ing] gossip or titillating information.” The Complainant, on the other hand, uses the phrase in its literal sense, for its operation of “juice bars.” Knowledge of a trademark registered in a foreign jurisdiction is not established by assertion; the UDRP does not embrace the theory of constructive knowledge. In Juicy Details, “[t]here is no evidence in the record that the Complainant operated or advertised in the United Kingdom, where the Respondent is located, in 2002.” Thus,

But, charging a respondent of an awareness of foreign trademark applications assumes more than the record allows. There is no legal requirement to examine foreign trademark databases. The WIPO Final Report at paragraph 103 states that “the performance of a prior search for potentially conflicting trademarks should not be a condition for obtaining a domain name registration.” In Juicy Details, the Panel “does not read the Policy as requiring such an investigation,” at least where the disputed domain name involves common words used in their metaphoric sense. The Respondent states that

This is more plausible than the Complainant’s “improbable theory that the Respondent was aware of the Complainant’s new mark in May 2002 and sought to exploit it.” The Complainant’s problem is one frequently seen in these UDRP proceedings. Later acquired reputation is not evidence of respondent’s bad faith when the complainant had none. Unless there is evidence that the complainant’s reputation had actually traveled to the respondent’s market and its trademark recognized by the purchasing public as the source of good offered it falls short of undermining the respondent’s good faith registration (however the website may be used).

Conceivably, a respondent on one continent could register a domain name confusingly similar to a trademark actively used on another and plausibly deny knowledge of the existence of the complainant or its mark. Plausibility dissolves, however, when the domain name resolves to a website populated with advertisements “directed solely to US.-based businesses,” AutoZone Parts, Inc. v. Konstantinos Vardakastanis, FA1006001331739 (Nat. Arb. Forum July 27, 2010) and “100 percent of the content located at the Domain Name is in English.”

Respondent waxes indignant at being targeted by the Complainant, although he admitted to the Complainant’s outside counsel that “he earns more than $500 per month [amended in a nonconforming email to the Provider to $50 per month] from ‘link sales, publisher networks, etc’.” The Panel in World Wrestling Entertainment Inc. v. Israel Joffe, D2010-0860 (WIPO July 1, 2010) noted in connection with that case that the Respondent’s request for time “appears to be yet another attempt by a respondent to keep its domain names a bit longer, for whatever reason.”

The Respondent in AutoZone takes a further step in risibility. He “seems to admit the sole purpose of the web site is to generate ‘click through’ revenue,” although concludes his nonconforming email with “Give me a break here.” “First of all” (he says):

Naturally, “[a]ll the money spend [sic] in this procedure must be covered from the complainant despite the final verdict. In any other different case I declare that I do not understand any of this documents send to me and that I am not aware of any information as a result no deadline of 24/June/2010 and timeframes exist.”

Setting aside the fact that the Respondent in AutoZone offers no defense or explanation for the registration, as a general rule minor additions to a trademark are not sufficient to create a distinctive name. Adding “the” as affix and an “s’ to AUTOZONE to form <theautozones.com> is not transformative; rather, it is confusingly similar to the Complainant’s trademark. When used “as a directory of links to third-party competitors of Complainant on a website resolving from a confusingly similar domain name” it supports a finding of bad faith registration and use.

Predators and Parasites come in a variety of shapes and sizes as are abundantly illustrated in these ongoing Notes. Some specialize in omitting or adding letters to a complainant’s trademark; others, adding affixes or suffixes to the second level domain; still others, appropriating the whole trademark and running with the domain name until forfeiture. Some are strangers; others are contractually related. Trademarks whole or altered (but confusingly similar) have demonstrable power to attract traffic, which is the summum bonum of the exercise. The “website is used only for two purposes: advertising hyperlinks to Complainant’s competitor pandemic preparedness providers and purportedly selling fake pig noses,” MM Herman & Associates, LLC v. Black Knight Publishing c/o Black Knight, FA1005001324437 (Nat. Arb. Forum June 16, 2010).

The underlying premise of the UDRP is protecting existing trademarks from predators and parasites. The UDRP is available only to holders whose trademarks are incorporated in whole or in part by respondents who have no right or legitimate interest in the domain name and are shown to have registered it in bad faith. Cybersquatters are “people who register domain names knowing them to be the trade marks of others and with the intention of causing damage or disruption to the trade mark owners and/or unfairly exploiting the trade marks to their own advantage,” Tomatis Developpement SA v. Jan Gerritsen, D2006-0708 (WIPO August 1, 2006). The “notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights,” WIPO Final Report, paragraph 135 [ii]). In defining the proscribed conduct WIPO chose to use the encompassing term “abusive registration” rather than “cybersquatting”. It explained that “[i]n popular terms, ‘cybersquatting’ is the term most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks and service marks”, Report, paragraph 170. However,

Therefore, (the Final Report continues) “[b]ecause of the elastic meaning of cybersquatting in popular terminology, we have ... chosen to use a different term––abusive registration of a domain name––in order to attribute to it a more precise meaning.” The term “abusive registration” describes a range of deceptive practices that adversely impacts the rights of trademark holders. Theories encompass violation of statutory prohibitions and rights; torts (wilful and negligent), such as misappropriation, conversion and breach of fiduciary duty; and criminal conduct, such as larceny and identity theft (phishing).

However, a case can be made that instead of being more precise the term “abusive registration” opened up opportunities to include by construction abusive conduct as a distinct category of bad faith within the scope of the Policy. Elasticity more invites expansion than contraction. It can reasonably be argued that since its inception there has been an incremental broadening of the UDRP. Issues and factual circumstances that in early decisions were thought to be outside the scope of the Policy have been brought within.

UDRP complaints must be answered within 20 days [Rule (5a)] or by an extended date on proof of exceptional circumstances [Rule 5(d)]. The Rules were amended effective March 1, 2010 to permit service of papers electronically. Prior to the amendment respondents were technically in default if their electronic service was timely but their hard copy by postal service or overnight courier was not. The consensus excused this type of default on the theory that cases should be decided on their merits.

This tolerance was not extended to untimely responses for which the consensus is less forgiving. The Panel in Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006) held that in order for a late response to be considered the circumstances for its lateness must be “exceptional”, hewing to the literal prescription in Paragraph 5(d) of the Rules of the Policy. “An ‘exceptional’ case, by its very nature” (the Panel held) “must be the exception, not the rule,” (emphasis in original). Moreover, according to the Mobile Communication Panel, the decision should not be influenced by the possibility that the late response might have dictated a contrary result.”

A third group of untimely responding respondents is the respondent who asks for more time. This is governed by Rule 5(d) which reads, “At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response.” There is little if any tolerance for respondents who request an extension as though it is permitted as of right. This is illustrated in World Wrestling Entertainment Inc. v. Israel Joffe, D2010-0860 (WIPO July 1, 2010). A request to the Provider cannot succeed without the respondent providing evidence of exceptional circumstances. In the absence of evidence “it appears to be yet another attempt by a respondent to keep its domain names a bit longer, for whatever reason.”

Respondents genuinely needing an extension must act promptly. The World Wrestling Panel Respondent suggests that “it is “generally desirable for any respondent seeking an extension first to apply to the complainant or its representative before approaching the Center for an extension.” (The second sentence of Rule 5(d) reads: “The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider.”)

The Respondent in World Wrestling waited two weeks before making a request to the Provider and in its “communication to the Center Respondent gave no reason for the requested extension.” It later stated in its attenuated response that his “lawyer’s wife [was] having a baby.” The Complainant objected to the extension, noting that it “saw nothing ‘exceptional’ about this case.” The Panel agreed

The Respondent’s argument rested on a mis-interpretation (really a lack of understanding) of the law as pronounced in the ACPA, to which the Panel noted that this “single contention” is “defeated” by the language of paragraph 4(b) of the Policy.” Neither the ACPA nor the Policy limits a finding of abusive registration to proof of the registrant’s intention to sell the disputed domain name to the trademark holder. Offering to sell a domain name to the trademark holder is one of several nonexclusive grounds for bad faith.

In Benchmark Brands, Inc. v. Sky Blue Marketing, FA1006001331227 (Nat. Arb. Forum July 23, 2010) the Respondent admitted that there was “no dispute over the domain names complained about and they have already offered to transfer the names.” The Panel concluded that all it needed to do was “state its basic finding on these issues. Indeed these basic findings give it the jurisdiction to order transfer of the Domain Names under the Policy.” This is true, but Rule 17(a) addresses only mutual agreement. It reads: “If, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.” More typically the respondent pleads nolo contendere (as in Benchmark Brands) and agrees to relinquish its registration. But, in Benchmark Brands there is no indication that the Complainant has stipulated to termination without a finding of bad faith.

A unilateral consent raises a challenging issue as to the respondent’s motivation and how to assess it. The Panel in The Cartoon Network LP, LLLP v. Mike Morgan, D2005-1132 (WIPO January 5, 2006) identified at least three possible courses of action for the unilateral consent:

Whether to accept respondent’s consent even in the face of the complainant’s refusal to stipulate depends upon the genuineness of the offer. In The Cartoon Network the Panel concluded that the Respondent’s offer was genuine and that such unilateral consent “provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements.” Termination benefits the respondent because it does not constitute an admission of bad faith. The consent in fact may be accompanied by a strong denial of any violation, “for example, where a domain name was registered in error.”

A decision to terminate is questionable where there is a credible basis for concluding that the consent is offered to avoid a holding of bad faith. Indeed, for some respondents the purpose in consenting to transfer is to avoid a finding that it has violated the Policy. In this event, panelists view the offer more skeptically. For example, in Messe Frankfurt GmbH v. Texas International Property Associates, D2008-0375 (April 29, 2008) in which the Respondent has been found by prior Panels to be a serial cybersquatter in violation of paragraph 4(b) of the Policy with over a hundred claims against it. The Panel in rejecting the Respondent’s request to terminate the proceedings without a decision, stated:

Foregoing the “lengthy traditional UDRP analysis and order[ing] an immediate transfer of the Disputed Domain Names” is to give the respondent a pass. In Benchmark Brands there is no question that the Respondent intentionally registered the disputed domain names, <footsnart.com> and <gootsmart.com>. The names are simply typographic variants of the trademark FOOTSMART and the registration is a clear case of typosquatting. The conduct should have been called for what it is as did another Panel involving the same Complainant decided the same date, Benchmark Brands, Inc. v. Anunet Pvt Ltd c/o Jyoti Mehta, FA1006001331154 (Nat. Arb. Forum July 23, 2010). Typosquatting is not an innocent registration for which the “lengthy traditional UDRP analysis” should be discarded.

Respondent’s Registration of Domain Name Contrary to Complainant’s Instructions

Employees, vendors and agents perform services and act on instructions of employers and principals. That a respondent in one of these classes registers a domain in his own name and refuses to transfer it on his employer’s or principal’s request is in violation of the UDRP. Sommerpine Books LLC v. Henton Enterprises, Hank Roberts, D2010-0805 (WIPO July 7, 2010). A distinction is made between respondents who register for their own accounts and those instructed to register for their employer’s or principal’s account.

Panels have refused to find bad faith registration where the respondent registered the domain name on consent or at the request of the trademark owner and it was understood that the domain name belonged to the respondent and not the complainant. Prior business relationships in which respondents legitimately hold domain names for their own accounts defeat a claim for abusive registration. See, e.g., ITMetrixx, Inc. v. Kuzma Productions, D2001-0668 (WIPO August 2, 2001); The Thread.com, LLC v. Jeffrey S. Poploff, D2000-1470 (WIPO January 5, 2001). A respondent with no prior business relationship who registers the domain name “to try to force Complainant to use his independent web-hosting service is a classic form of cybersquatting except that he sought work rather than cash,” Westfield Corp. v. Graeme Michael Hobbs, D2000-0227 (WIPO May 18, 2000).

In contrast, “[i]n cases where respondent has registered the domain name in its own name contrary to instructions received from complainant, panels have consistently held such a practice to constitute bad faith registration and use,” citing Champion Innovations, Ltd. v. Udo Dussling (45FHH), D2005-1094 (WIPO December 16, 2005) (“in this case, the Complaint suggests that Respondent was expected to register the Domain Name in the name of Complainant. In that circumstance, the Respondent’s refusal to follow his employer’s instruction and his registration of the Domain Name in his own name constitutes bad faith registration.”); Robilant & Associati Srl v. POWERLAB snc (ROBILANT6-DOM), D2006-0991(WIPO October 5, 2006).

The Sommerpine Respondent has a business relationship with the Complainant as a vendor performing services. In pre-arbitration e-mails it admitted that “Henton held the domain names in trust for Complainant, because the disputed domain names were hosted on Respondent’s server.” However, the Respondent went one step further in rejecting the Complainant's demand to transfer the domain name. It insisted that it had intellectual property rights in the content of the web site and that transfer of the domain name was contingent on an agreement that recognized that interest. However, this confuses two different regimes of interest.

There is no law or rule for domain names equivalent to a garage lien that authorizes an owner to withhold delivery of a vehicle pending payment of accrued fees. A respondent cannot hold for ransom a domain name without falling foul of paragraph 4(b)(i) of the Policy. It may have counterclaims for unpaid fees but the respondent has no remedy under the UDRP.

Good Faith Registration Overrides Lack of Rights or Legitimate Interests and Bad Faith Use

It is seen as a deficiency by some that a complainant is remediless under the UDRP for blatant bad faith use of a domain name registered in good faith. There have been a number of interpretative suggestions to rationalize a construction of the Policy to circumvent the paragraph 4(a)(ii) requirement for bad faith in the conjunctive. None of these constructions has gained any serious support. In RapidShare AG and Christian Schmid v. The holder of the domain name rapidshare.net, D2010-0598 (WIPO July 9, 2010) the 3-member Panel held that it “must apply the UDRP as it is, not as the Panel thinks it should be.”

The wistful coda to the sentence, “it should be” is an acknowledgment that the UDRP cannot reach as far as country code policies or of the Anticybersquatting Consumer Protection Act that require proof in the disjunctive. Bad faith use is a legal basis for forfeiture. “If, as the Panel suspects, the Respondent’s present use began only after the Complainant’s use became widely known, it could be inferred that this use has not been in connection with a bona fide offering of goods or services, but rather that it has been in bad faith to divert Internet users seeking the Complainant’s website.”

Under the UDRP the complainant succeeds only by showing bad faith in the conjunctive, “as cumulative conditions which must both be satisfied for a complaint to succeed.” The RapidShare Panel made it clear (whatever its preference for a different outcome) that is was following precedent. It adopted the reasoning of three recent cases that forcefully rejected a unitary construction of the Policy, Camon S.p.A. v. Intelli-Pet, LLC, D2009-1716 (WIPO March 12, 2010), Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, D2010-0470 (WIPO May 19, 2010), and Editions Milan v. Secureplus, Inc., D2010-0606 (WIPO ). The Panel in Camon noted that

A transferee, of course, is answerable for its own conduct, so that from bad faith use bad faith registration can be inferred. In RapidShare there is an apparent discrepancy raising “some doubt as to whether there may have been a transfer since the Domain Name was originally registered.” However, “the Complainants must prove their case, as the UDRP specifies in its paragraph 4(a). The Complainants have not asserted, let alone substantiated, that the Domain Name has been transferred in bad faith.” Had there been an intermediary transfer, the result would have been different, based on the theory that transfer=new registration.

A credible witness has a better chance of persuading the Panel than one who fails to present his case properly. “It is possible,” states the Panel in Maurice Sporting Goods, Inc. v. American Sportcase, LLC, D2010-0689 (WIPO June 29, 2010) “to theorize a different story” but the story presented is “supported by some circumstantial evidence ... and the owner of the Respondent is a well-established entrepreneur operating substantial businesses that demonstrate significant industrial capacity.” The timing of the domain name registration which is ordinarily the starting point of analysis is offset by the Respondent's plausible showing. It has established credibility of means of manufacture which assists in proving its own business purpose and undermines the contention that the registration was intended to take advantage of the Complainant or its trademark.

The second level domain in Maurice Sporting Goods is identical to the Complainant’s trademark, READY2FISH, published for opposition by the USPTO on December 7, 1999. The disputed domain name, <ready2fish.com> was registered December 10, 1999. The different story that could have been theorized, however, involves a series of “might have beens.” The Respondent “might have been aware of Complainant’s asserted common law use ... in early 1999 ... [and] might of been aware of Complainant’s application for trademark registration in April 1999 ... [and] might of been sufficiently impressed ... to seek to take unfair advantage.” But, there is no “tangible basis for concluding that Respondent knew or should have known of common law rights asserted by Complainant in early 1999.”

Respondent supported its “plausible story” with evidence sufficient to establish that he “is a well-established entrepreneur operating substantial businesses that demonstrate significant industrial capacity.” At the same time that it registered the disputed domain name it also registered two other domains (<ready2golf.com> and <ready2ski.com>) as part of its business strategy of “manufacturing a line of products (i.e. molded plastic cases) for use with fishing, golfing and skiing equipment.” In the Panel’s view “[r]egistration of the three similar domain names circumstantially supports Respondent’s story, and plausibly supports a claim of demonstrable preparations to use the disputed domain name for a bona fide offering of goods prior to notice of a dispute.”

In order to prove today an adversary’s intention when it registered the domain name requires production of “meaningful evidence.” In Maurice Sporting Goods there was at best suspicion arising from the timing of the two registrations but unaccompanied by any“meaningful evidence that Respondent sought to take unfair advantage of Complainant or its trademark” at any time since it registered the domain name 10 years earlier. The evidence does not undermine the Respondent's contention that there was a legitimate business purpose even if not realized.

A successor in interest related to a predecessor who acquired the disputed domain name in good faith is not a new registrant whose right is vulnerable to forfeiture to a well known trademark holder. It not only succeeds to its predecessor’s good faith registration, it holds the domain name as an asset to use (consistent with trademark law and the Policy) or sell as it determines. It cannot be compelled to sell it, which was the thrust of plaintiff’s case in Southern Grouts & Mortars, Inc. v. 3M Company, 575 F.3d 1235 (11th Cir. 2009). 3M had come into possession of <diamondbrite.com> legally by acquiring the company that owned it years earlier. Its offense (as the plaintiff saw it) was not that it was using the domain name, but that it wasn’t. Southern Grouts “accuse[d] 3M not of a design to sell a domain name for profit but of a refusal to sell one.”

There is some similarly between Southern Grouts and Genomatix Software GmbH v. Intrexon Corporation, D2010-0778 (WIPO July 8, 2010), although in the latter while the Complainant was an interested purchaser it was unwilling to pay what the Respondent demanded. In an exchange of e-mails in which the Complainant offered $10,000, the Respondent replied “that it would not be interested in any offer which was not substantially in excess of this sum.” This is not a violation of paragraph 4(b)(i) of the Policy. “Where several years and a corporate reorganisation and rebranding elapse between the registration of a domain name and a discussion of its possible sale, it cannot be inferred that it was registered at the outset for the purpose of sale to the Complainant or a competitor of the Complainant.”

If the related respondent “merely intends to continue to do what [its related predecessor] has always legitimately done, then it is difficult to see how that continued use could be characterized as use in bad faith,” ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., D2009-0785 (WIPO August 5, 2009). But, in that case, the Panel found that the original registrant did not continue to use the domain name legitimately, “[i]nstead, he effectively abandoned his own prior use and actively sought to associate the Domain Name with the Complainant’s business.” In that event the related successor cannot rely on the original good faith registration but inherits its predecessor’s subsequent bad faith.

In contrast, no inference of bad faith can be drawn against the successor in interest where its predecessor operated a bona fide business. “The Panel finds on the evidence that the Domain Name was registered by the Respondent’s predecessor in business Genomatix Ltd for the purpose of bona fide use in connection with a bona fide business carried on under the mark GENOMATIX and the name Genomatix Ltd. The Panel also finds that the transfer of the Domain Name to the Respondent, at that time called Genomatix Corporation, was made in good faith.” “These findings” (the Panel continued) “cannot be negated by any subsequent willingness of the Respondent to sell the Domain Name for a substantial price.”

The Complainant acquired its trademark in Genomatix Software prior to the registration of the domain name. Ordinarily, this could signal a problem for the Respondent, but here the parties operate in different streams of commerce. The Respondent is a biotechnology company. “[T]he Complainant emphasises that it has prior rights to the ‘Genomatix’ name, that it has remained active since its foundation in both Europe and the USA, and that (in contrast) the Respondent’s use of the ‘Genomatix’ name in its business ceased a long time ago.” However, there is no evidence that the commercial use of the Domain Name and corresponding mark by the Respondent and its predecessor was in bad faith to take unfair advantage of the Complainant’s rights.” Nor that “its commercial use at any time between then [1998] and the filing of this Complaint nearly 12 years later in May 2010 suggests that this use was not regarded as infringing whatever rights the Complainant may have had.”

There are clearly circumstances under which a trademark can be incorporated into a domain name without permission from the trademark holder. Just as clearly there are domain names alleged to be used with fair intent that exploit the trademark’s value and infringe on the holder’s legal rights. The tension is palpable. A domain name containing a mark cannot be nominative fair use if it suggests sponsorship or endorsement by the trademark holder, Toyota Motor Sales USA Inc. v. Tabari, dated July 8, 2010. The 9th Circuit held, however, that an injunction issued by the district court “is clearly overbroad.” It noted that the “nominative fair use doctrine allows such truthful use of a mark, even if the speaker fails to expressly disavow association with the trademark holder, so long as it's unlikely to cause confusion as to sponsorship or endorsement.” Thus, “[e]ven assuming some form of an injunction is required ... the proper remedy for infringing use of a mark on a site generally falls short of entirely prohibiting use of the site's domain name, as the district court did here.” Further,

“Forced relinquishment of a domain is ... extraordinary.” In either proving cybersquatting (Interstellar Starship, 304 F.3d 936, 948 (9th Circ. 2002)) or infringement that warrants injunctive relief “Toyota must bear the burden of establishing that the Tabaris' use of the Lexus mark [in <buyorleaselexus.com and buy-a-lexus.com>] was not nominative fair use.”

It is interesting to compare the 9th Circuit’s reasoning with that from a recent UDRP decision, Haas Automation, Inc. v. noKOutmma, FA1005001326071 (Nat. Arb.Forum July 14, 2010). The Panel granted the complaint and ordered <usedenchaas.com> transferred to the Complainant. On first pass, it appears that the “[f]orced relinquishment of [the] domain ... is extraordinary.” Of course, the UDRP offers only two remedies, cancellation or transfer of the domain name. Toyota requested a permanent injunction.

Nevertheless, on the surface there are some similarities with Toyota. The Respondent alleged that it used HASS “only for nominal purposes .. To describe the products that the Respondent is legitimately selling.” Like Tabaris it placed a disclaimer on the web page. However, while the Tabaris' disclaimer “stated, prominently and in large font, ‘We are not an authorized Lexus dealer or affiliated in any way with Lexus’,” the Respondent’s disclaimer in Haas Automation “is in small print at the very bottom of the page, after a display of Respondent’s products and services. It is quite possible that Internet users would not see the disclaimer. Under these circumstances, the disclaimer is insufficient to prevent a likelihood of confusion.”

The Respondent in Haas Automation offends the Policy in other ways. While recognizing that “reselling products may be a legitimate and bona fide offering of goods and services,” the Panel found that the “Respondent uses more than reasonably necessary of the HAAS trademark.” The “more” is that the Respondent “uses the same color scheme and font as the HAAS trademark and official website,” thus creating a likelihood of confusion [paragraph 4(b)(iv) of the Policy]. The Tabaris had a similar problem, but in their case they “submitted images of an entirely changed site at the time of trial: The stylized mark and ‘L’ logo were gone, and a disclaimer appeared in their place.” “This makeover of the Tabaris’ site is relevant because Toyota seeks only forward-looking relief.”

In Haas Automation, of course, the Panel is working with an undeveloped record, but the reasoning of the 9th Circuit suggests nominative fair use UDRP disputes are not quite as open and shut as the Panel makes it appear. The above quotation from Toyota that “the only winners would be companies like Toyota” is equally applicable to balancing rights under the Policy.

Where two parties in the same geographic area offer the same range of goods to the general public it might appear that in registering a domain name identical to the complainant’s trademark the Respondent had an impure motive. What if the domain name was registered before the complainant established its business? Although the respondent had knowledge of the complainant’s business plans? But, there was no proof that the general public associated the trademark as the source of goods from the complainant? The Consensus is that “when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right,” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1. The Overview continues, however, with an exception, that “[i]n certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”

In Paragon Micro, Inc. v. Julian Pretto, D2010-0721 (WIPO July 1, 2010) the “Complainant states that it was incorporated in 2003 and began using its mark in 2006. Yet, the <paragonmicro.com> domain name was apparently registered in 2001, which would have been some time before Complainant was formed.” Generally, the exception has been applied in cases involving well known entities either merging or acquiring other entities, opening resorts or hotels before obtaining trademark rights or announcing a new corporate name. A recent example was The Old Course Limited v. Patrick Woods, D2010-0682 (WIPO June 6, 2010).

Paragon Micro, however, illustrates the difficulty in applying the exception and the heavy burden the complainant must satisfy. The Respondent in Paragon Mico is holding the domain name inactive, thus it “cannot presently be said that it is using the disputed domain name to attract visitors for commercial gain.” But, argues the Complainant “the Respondent could ‘at any time’ begin using the disputed domain name in a manner that would disrupt its business and cause confusion as to the source of the parties’ respective goods and services.” This fails because bad faith (registration and use) cannot rest on the possibility that the respondent will activate the domain name in the future to disrupt the complainant’s business or confuse the purchasing public.

If the Respondent opportunistically anticipated the Complainant’s trademark, it is not proved by asserting as a fact, speculation. “Evidence of such an exception has not been provided here; indeed, the Complaint nowhere even acknowledges that the registration predates Complainant’s trademark rights.” The record apparently contains one piece of information unexploited by the Complainant (unless it is a typographical error) consisting of a copyright notice on its own website page that reads “1995-2010.” If this notice accurately reflected the Complainant’s length in business it failed to “provide any other evidence regarding length of use and provides no information concerning sales, nature and extent of advertising, consumer surveys, or media recognition that would establish rights in a mark that is not registered.”

Similarity in some respects, either of one of two common words or some identical syllables within a word, does not add up to confusing. The threshold test is simply “comparing the disputed domain name with the mark relied upon, both visually and phonetically, and by comparing the respective meanings which each conveys,” RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov, D2010-0696 (WIPO June 22, 2010). “The limited nature of the exercise does not call for any consideration of extraneous material, such as what might appear on a website at the disputed domain name,” citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, at para 1.2: “the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity ...”).

The domain name <rapidbay.net> is not confusingly similar to RAPID SHARE; <caisinos.com> is not confusingly similar to CASINO.COM [Mansion (Gibraltar) Limited and Provent Holdings Ltd. v. Agens PSC, D2010-0584 (WIPO June 22, 2010). The only common feature in the first is “rapid” and in the second “sino”.

The Respondent in the second case avoided a finding of typosquatting because it appeared and explained the additional “i” and the reason for pluralizing the domain name. Using the word “casino” or “casinos” for a gaming website is not evidence that the Respondent had any knowledge of the Complainant. The explanation for the “cai” is that “Respondent’s client, CAI, holds rights to a Community Trademark for CAISINOS.” The disputed “trademark shows a wordplay between the three letters ‘CAI’ of ‘Casinos Austria International’ and the generic term ‘casino’.” In view of the explanation, “the Panel [did not] find it necessary to decide [the threshold] element under the Policy.”

In RapidShare, the “only relevant right they have proved is a right in the expression ‘rapidshare’. The issue is whether the use of the word ‘rapid’ in both RapidShare’s mark and the Domain Name, is enough to get the Complainants over the line on the ‘confusingly similar’ issue. On balance, the Panel is not satisfied that it is.” The reason for this is that

In order to get to the issue of bad faith registration and use “the Complainants had to ‘get to first base’ by making out their case under Paragraph 4(a)(i) of the Policy,” RapidShare. Neither Complainant in these cases got to “first base” although for different reasons. Rapid Share because the Complainant could not prove that the linguistic combination of the disputed domain name suggested its trademark in the public’s mind; and, Casino.com, because the Respondent’s explanation of the first syllable “cai” (as identifying itself to the public) showed that it was a distinctive entity operating within the gaming niche. At best there is similarity of parts but not of the whole.

The Panel in Lawrence Gurreri v. To Thai Ninh, FA1006001328554 (Nat. Arb. Forum July 12, 2010) states that “the alleged theft of a domain name falls outside the narrow scope of the UDRP policy” and cites two cases that address scope but not theft. While the conclusion is inconsistent with a number of other decisions that hold the complainant entitled to recapture the domain name, the principal reason for denying the complaint in Lawrence Gurreri follows well settled law, namely that a victim does not have standing to maintain the administrative proceeding unless he has a trademark. The Complainant in Lawrence Gurreri did not have a registered trademark in “international circuit” and offered insufficient evidence of secondary meaning to qualify for a common law trademark. Had it been otherwise, precedent holds that theft or fraudulent transfer or hijacking are within the scope of the UDRP Policy. Narrow though the scope may be it is not that narrow.

What the Panel determined was that the “Complaint [was] within the framework of the Policy” and ordered the disputed domain name transferred to the Complainant.

Not unexpectedly, respondents accused of hijacking rarely make an appearance. In CC Computer Consultants GmbH and WAFA Kunststofftechnik GmbH v. APG Solutions & Technologies, D2005-0609 (WIPO August 1, 2005) the Panel found that the Respondent was in default of its registration obligation to maintain current information. It “provided a false name as administrative contact for the domain name and a non-existent fax number.” While it was “not clear ... exactly how the Respondent technically registered the domain name ... it does seem clear that the registration was irregular, and that it was done without the permission of Complainant.”

In Edward G. Linskey Jr. v. Brian Valentine, D2006-0706 (WIPO September 18, 2006) a three-member Panel denied the complaint for the same reason as in Lawrence Gurreri, but they were uncomfortable with the Respondent. In response to the Respondent’s contention that “this case is unsuitable for determination by the Panel ... because of the parties' competing views of the circumstances of the case” one member in a concurring opinion joined by the other two stated

In cases that raise these issues and show that the domain name was unlawfully transferred the complainant is entitled to relief, the dictum in Lawrence Gurreri notwithstanding. “However it happened” ( stated the Panel in 8x Entertainment, Inc., Gener8Xion Television, Inc., Gener8Xion Entertainment, Inc. v. EXC International AG, D2005-1126 (WIPO December 28, 2005)), “the fact is that someone unlawfully took control of Complainants’ e-mail account and used it to fraudulently represent to Network Solutions and OnlineNic, Inc. that Complainants had authorized a transfer of the domain name in dispute, when in fact Complainants had not.” The range of abusive conduct is not circumscribed by the four examples set forth in paragraph 4(b) of the Policy.

ICANN’s decision to approve the .xxx suffix for websites with pornographic content is essentially a zoning resolution. It has the same intention, namely to confine adult content to its own district to prevent its contaminating better neighborhoods. Offering pornography is not condemned under the Policy. “The mere fact that a domain name resolves to a website featuring adult content does not per se render the registrant devoid of rights or legitimate interests in the domain name,” West Corporation v. Domain Admin c/o Mrs Jello, LLC, FA1004001321540 (Nat. Arb. Forum June 14, 2010).

Condemned is associating “adult content” with the complainant’s trademark and piggybacking on its reputation. V&S Vin & Sprit AB is not amused when ABSOLUT is coupled with “porn” to produce <absolut-porn.com>, V&S Vin & Sprit AB v. VCN - Whois Protection Service Panama, D2010-0715 (WIPO June 25, 2010), or “escorts” to produce <absolutescorts.com>, V&S Vin & Sprit AB v. N/A, D2010-0717 (WIPO June 14, 2010). Adding a common word to a trademark does not create a distinguishable name, and since the parties are in different industries there is no defense of fair use, nominative or otherwise.

The unregistered trademark in Workers United Union v. Wesley Perkins, D2010-0738 (WIPO June 20, 2010) barely passes the threshold test. The Complainant was only formed in 2009, but has over 150,000 members. Nevertheless, the Panel found that it had standing because it had “used the name WORKERS UNITED as the common trade name or trade mark for the trade union.” More significantly, the Complainant had owned and inadvertently allowed its domain name to lapse. “[E]very case” (the Panel noted) “must be considered on its own facts and merits.” In this particular case

The Complainant in Workers United approached the Respondent “immediately after realizing that its domain name had expired... [M]any of its 150,000 members were probably still trying to contact on its email address using the Disputed Domain Names.” The Respondent freely admitted “that he acquires domain names for the purposes of trading” and in this particular case demanded $28,000 to transfer it. “Meanwhile, every time that the Complainant’s members tried to log onto its original website they were deferred to a blatantly pornographic website.”

Particularly with adult oriented websites Panels give lesser known trademarks more leeway (as long as they are not composed of dictionary words). Moreover, threats to offer (no less displaying) pornography through the disputed domain name, the trademark well known or not, is a sufficient basis for finding bad faith use; from which bad faith registration is inferred. Threatening and offering can be seen as tantamount to a demand for ransom, which would be an additional basis under for finding bad faith.

There is no provision under the UDRP for an administrative appeal from an adverse order granting or denying the complaint. Rather, the loser’s recourse is to commence a de novo law suit under the national law of its jurisdiction, which in the case of the United States would be a claim under the Anticybersquatting Consumer Protection Act, [specifically, §1125(d) of the Lanham Act]. If the Panel rules in favor of the complainant the respondent must act within 10 days of the issuance of the order to take advantage of the Policy’s automatic stay of cancellation or transfer [paragraph 4(k) of the Policy]. While a respondent’s failure to act timely does not affect its right to contest the UDRP order it will lose control of the domain name to the complainant pending the outcome of the litigation.

The Policy provides that either party may commence an action “in at least one specified Mutual Jurisdiction. Rule 1 of the UDRP defines Mutual Jurisdiction as

Statistically, judicial challenges by losing complainants are likely to be successful. The most recent decision is illustrative. The plaintiff in Volvo Trademark Holding AB v. Volvospares, 1:09 cv 01247 (E.D. Va. Apr. 1, 2010) (formerly the Complainant Volvo Trademark Holding AB v. Volvospares / Keith White, D2008-1860 (WIPO February 10, 2009)) won summary judgment transferring the domain name. Challenges by respondents are likely to be unsuccessful, although there are exceptions. Unsuccessful: Lahoti v. Vericheck, C06-1132JLR (WDWA, 2007), aff’d __ F.3d __ (9th Cir. 2009), after losing in Vericheck, Inc. v. Admin Manager, FA0606000734799 (Nat. Arb. Forum August 2, 2006); Yung v. Bank of America Corp. (S.D.N.Y. 2-16-2010), after losing one of two domain names in Bank of America Corporation and Merrill Lynch & Co., Inc. v. Webadviso, FA0903001254121(Nat. Arb. Forum May 15, 2009) (district court awarded both domain names to plaintiff).

Respondent exceptions: Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 626 (4th Cir. 2003), summary judgment in favor of plaintiff, formerly Respondent in Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc. D2000-0505 (WIPO August 7, 2000); 3 member Panel in XM Satellite Radio Inc. v. Michael Bakker, FA0612000861120 (Nat. Arb. Forum February 27, 2007) unanimously decided to transfer <xm.com>; de novo action in The Regional Court in Cologne held in Respondent’s favor: “[a]s the (US based) Complainant did not have any trademark rights for ‘XM’ in Germany (where both the Respondent and the Registrar were located) the court rejected any claims under applicable trademark law” Case no. 33 O 45/08, 16 June 2009, translation adr.eu.

It has been held that “a federal court's interpretation of the ACPA supplants a WIPO panel's interpretation of the UDRP,” Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 28 (1st Cir. 2001); again, “because a UDRP decision is susceptible of being grounded on principles foreign or hostile to American law, the ACPA authorizes reversing a[n] [arbitration] panel decision if such a result is called for by application of the Lanham Act,” Barcelona.com, supra.; again, that a UDRP decision is not an “arbitration” as envisioned by the FAA, Parisi v. Netlearning, Inc. 139 F. Supp. 2d 745 (E.D.Va. 2001; again, the “[r]eview [] must be de novo and independent of any WIPO panel conclusion,” Parisi, Id. at 752. Sallen, supra. 273 F.3d at 20: “[T]he UDRP explicitly contemplates independent review in national courts.”

Respondent’s Exposure to Future Claim Following Exoneration of Abusive Registration

There is a notion that a respondent adjudicated as having a legitimate interest in a disputed domain name can be exposed in the future if it changes its content to take advantage of the complainant’s trademark. There is disagreement on the issue (the Octogen line of cases and variants of that thinking), but the consensus is that bad faith use following good faith registration is not abusive as the Policy is presently constituted. There is no exposure to the original registrant without an amendment to the Policy.

Nevertheless, the notion is by no means resolved. It is directly challenged in a Separate Opinion (concurring in the result to deny the complaint) in Charter Communications, Inc. v. CK Ventures Inc. / Charterbusiness.com, D2010-0228 (WIPO June 25, 2010). The challenged statement by the majority reads: “if Respondent in the future used the Domain Name at issue to resolve to a web site which targeted Complainant’s trademarketed services, then Complainant would presumably be entitled to bring another UDRP proceeding on that basis.” The statement is clearly not necessary for the holding, thus theoretically is no more than dictum. Nevertheless, even as dictum it exceeds the Panel’s authority (says the separate Panel):

There have been a scattering of decisions in which Panels have either implicitly suggested that the complainant can return, Umpqua Investments, Inc. v. Private Registrations Aktien Gesellschaft, FA1005001324718 (Nat. Arb. Forum June 15, 2010) (in which the Panel ended his ruling with the statement that it was “without prejudice”); explicitly invited complainants to refile if in the future the respondent crosses the line, Cluett, Peabody & Co., Inc. v. Sanford Bus. Writing Serv., FA 95842 (Nat. Arb. Forum December 12, 2000) (the panel allowed a complaint to be refiled because the previous Panel had “expressly reserved the right of Complainant to recharge bad faith registration and use of the domain name in issue”) ; or to correct a deficiency in pleading, Jones Apparel Group Inc. v. Jones Apparel Group.com, D2001-1041 (WIPO October 16, 2001) (refiling allowed because the previous panelist gave the “green light in the clearest possible way to refiling the Complaint to correct [the previous Complaint’s omissions].”

Complainants whose trademarks consist of common words alone or in combination with other common words cannot claim the highest protection unless there is dispositive proof that the trademarks preceded the domain names and the domain names are being used to target the complainants’ trademarks. The disputed domain name in Charter Communications is <charterbusiness.com> which is identical to the Complainant’s present trademark. But, when the domain name was registered the Complainant’s trademark was CHARTER DIGITAL CABLE and CHARTER COMMUNICATIONS. The majority deferred the question of rights or legitimate interests and folded its conclusion into the bad faith analysis, which it found in Respondent’s favor.

Under the terms of the Policy currently in effect and the consensus construction of it the only basis to support refiling a claim (rare against the same respondent unless a pending trademark application has advanced to a certificate of registration) is if the domain name registration has changed to a new respondent.

Paragraph 18(a) of the Rules of the Policy authorizes the Panel in its discretion to suspend or terminate a UDRP proceeding “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute . . . or to proceed to a decision” (emphasis added). The authority imports into the proceedings the familiar prescript of judicial economy exercised in a court of law. Generally, it makes no sense to proceed to decision in a UDRP proceeding where there is a prior action pending or new action timely filed concerning the disputed domain name. Whether the Panel exercises its discretion “to suspend or terminate the administrative proceeding” depends on a number of factors including the status of the pending action.

TTAB proceedings as a court of law have mixed results. The Panel in Family Watchdog LLC v. Lester Schweiss, D2008-0183 (WIPO April 23, 2008) analogized the TTAB proceeding to a pending lawsuit and denied the complaint, whereas the Panel in Private Communities Registry, Inc. v. Himalaya Rankings LLC and John Sweeney, FA0808001220432 (Nat. Arb. Forum October 23, 2008 held that the PTO is not a “legal proceeding ... in respect to a domain name dispute.” There is no basis for suspension or termination where the “filing of the Complaint was done in accordance with a court order, that the matter be referred to arbitration under the Policy despite the pendency of that action,” BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight, D2009-0958 (WIPO September 15, 2009).

In Telstra, the Respondent “asked that the proceedings be adjourned because of [an alleged pending litigation before] ... the Australian Administrative Appeals Tribunal.” The Respondent contends that the use of <teamtelstra.com> “is a play on words in relation to Telstra’s association with parties ‘it should not be associated with’ and that the Respondent intends to publish further genuine criticism on the site, once the AAT Litigation has been resolved.” However, the matter before the AAT is not litigation, but a “freedom of information” request. “The Respondent says that he will post more information critical of the Complainant to the website once the AAT Litigation is complete,” but offered no evidence to support this assertion. In any event, calling a request for information a litigation does not support suspension or termination since it is neither a legal proceeding nor one that would qualify as such “in respect of a domain name dispute.”

Claims that raise business or contract issues have a mixed history of adjudication under the UDRP. They are sometimes found to be within and other times outside the scope of the Policy. The decision can go either way. Sometimes the decision to dismiss a complaint for lack of jurisdiction rather than grant or deny it appears to be arbitrary; or the panelist not taking time to think through the conclusion. H-D Michigan, LLC v. Jim Harley, FA1004001318741 (Nat. Arb. Forum May 25, 2010) and Larry Moss v. EdgemarCenter fortheArts d/b/a Larry moss studios c/o Lora Guarnieri, FA1004001320711 (Nat. Arb. Forum July 1, 2010). The mantra is that cases that “appear[] to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty” are outside the scope of the UDRP.

In H-D Michigan the Complainant offered into evidence an agreement under which the Respondent promised “That my company shall forthwith take all such steps as lie within its power to change or facilitate change of its corporate name to ‘J. Harley’s Rider Training Limited’…[I hereby undertake] not in any event use the word ‘Harley’ in relation to motorcycle training services or any other goods or services relating to the motorcycle industry or motorcycling without prefixing the word ‘Harley’ with the letter ‘J’, the word ‘Jim’ or the word ‘James.’” In his defense, the Respondent “claims [that] the agreement applies only to his company and not to him individually.” The text of the agreement and surrounding circumstances (such as whether or not there was any consideration) are not disclosed in the decision. However, based on the letter an argument can be made that the complaint should rather have been granted for <harleysridertraining.com> and <harleysridertraining.net> than dismissed. Had there been no agreement and a decision based on the Respondent’s surname the result might very well have favored the Respondent.

In Larry Moss, there is clear evidence of acquiescence in the registration and use of the disputed domain name. Concededly, the Complainant may have remedies in a court of law relating to the dissolution of the parties’ partnership which may affect the rights to the domain name, but on record there is no evidence of bad faith registration or use. An argument can be made that the complaint should rather have been denied than dismissed.

One consequence of a maturing jurisprudence is a greater flexibility in deciding cases on their merits. “[S]ome disputes routinely and oftentimes of necessity require ICANN panels to consider broad ancillary legal principles and issues that lie outside the sharp confines of the Policy,” Bell Helmets, Inc. v. 4X Development, FA0602000651064 (Nat. Arb. Forum April 11, 2006) (Respondent appeared and prevailed). Where some panelists find cases ineligible for UDRP adjudication, others look further to establish and balance the parties’ rights. San Giorgio Coffee, Inc. v. Marc DeCaria, D2010-0567 (WIPO June 10, 2010). The Complainant stated that he formerly employed Respondent. The Respondent “assert[ed] that he had been operating the company website as a separate business from Complainant’s company and that in December 2006, he and Complainant decided to separate the two businesses, with Respondent retaining the e-commerce website and receiving severance payments and Complainant retaining the local business within the state of Florida.” The evidence that persuaded the Panel to deny (not dismiss) the complaint were two letters the Respondent received from Complainant in 2006 and 2007 in “neither of which [did the Complainant] raise any issue concerning the website.” The failure to come forward with evidence of one's own or to explain evidence offered by the adversary supports a negative inference in favor of the respondent that the complainant has nothing to complain about. On this subject, see Charter Communications, Inc. v. CK Ventures Inc./Charterbusiness.com, D2010-0228 (WIPO June 25, 2010), separate opinion.

Indeed, the record is clean of any objection by Complainant to Respondent’s use of the domain name until March 2010. The statement of Complainant’s president that Complainant never authorized or acquiesced to Respondent’s use of the domain name for his own benefit is, in the absence of other details or supporting evidence, self serving and unpersuasive.

Admissions Against Interest: Documentary Evidence Drawn from Complainant's Website

In the electronic age as compared to the paper it is harder to scrub or obfuscate the past because the past is continually present in some accessible form, whereas papers may be lost or lie undiscovered. Parties may deny facts, but be unexpectedly confronted by electronically preserved proof contradicting their present contentions. The point is illustrated in India Infoline Ltd. v. Myles Hare, D2010-0542 (WIPO June 16, 2010). (I mentioned this case on another point in last Thursday’s Note).

There is no disagreement in India Infoline that the disputed domain name is confusingly similar to the Complainant’s trademark or that the Respondent is a member of that much criticized fraternity, a domainer who “registers domain names for speculative purposes and associates such domain names with a pay-per-click revenue system.” The Complainant’s colorful but unavailing epithet for the Respondent’s line of business is that it is a “career cybersquatter,” believing apparently that domaining and cybersquatting are synonyms. There is also no dispute that for a short period the website included links to the Complainant’s competitors and for this reason was being used in bad faith. Prompt removal of offending links after notice is forgivable. Charter Communications, Inc. v. CK Ventures Inc./Charterbusiness.com, D2010-0228 (WIPO June 25, 2010).

The controlling issue in Infoline, however, turned on registration. The disputed domain name was originally registered in 2003, but not acquired by the Respondent until 2007 upon the expiration of a prior registration unrelated to the Complainant. The Complainant submitted no evidence that it used its trademark prior to 2007. The Respondent offered the following evidence in support of its registration in good faith: an email from an officer of the Complainant in 2007; a screen capture of a television advertisement published on the Complainant’s website; and information on the Complainant’s website.

Each of the pieces of evidence was a proverbial nail in the coffin. The email was a request to purchase the disputed domain name. “Our project is on innovations in Freelancing landscape for which we wanted the domain www.iifl.com.” No mention is made in the email about abusive registration of the domain name. The screen capture of the television advertisement which began running only in April 2010 stated that “India Infoline group’s brand identity is now [the IIFL logo].” The announcement on the Complainant’s website dated March 2010 was to the effect that henceforward “we have shortened our name to IIFL.” These facts, however, do not support the conclusion

The aggregate of evidence accessible to the world is that the Respondent’s registration of the domain name preceded the Complainant’s registration and that “[w]ithout evidence of bad faith, registering domain names is not an illegitimate activity under the Policy.” On the other hand, Respondent was “aware that the disputed domain name was linked to websites providing financial services.” Since the Respondent “has a continuing duty to ensure that the domain name is not used in violation of third party trademark rights” its failure to “abide by his continuing duty ... constitutes bad faith.”

Acquiring domain names as assets – for selling, financing, monetizing, trading and warehousing – has been part of the culture of the Internet from the beginning. Merchants in the domain business simply pitched their stalls alongside the more traditional sellers of goods and services in the new souk, sometimes creating such friction with their neighbors that lightens the days of readers of domain name decisions. The Complainant in Pantaloon Retail India Limited v. RareNames, WebReg, D2010-0587 (WIPO June 21, 2010) is the trademark holder of PANTALOON in India. The Respondent’s base of operations is the United States. It acquired <pantaloons.com> in 2002 after a prior registrant unconnected with the Complainant allowed it to lapse. It is not as though the Respondent is actually selling pantaloons or, strictly, in competition with the Complainant. “Clearly, from the evidence provided, Respondent is not itself offering pantaloons for sale, it is merely providing links to eBay and other sites where such offers are made.”

It cannot be denied that the Respondent is in the domain name business and doing what souk merchants do. It has, as the Complainant alleges, an established pattern of registering generic domain names. However, there is “a substantial consensus among panelists that the acquisition and offering for sale of domain names and/or using them to provide links to other sites may well (provided it is not directed at trademark misuse in breach of the Policy) be a legitimate business.” There is no illegality in having a stall with a name identical or confusingly similar to its trademark holding neighbor. “Whether that consensus [in holding that a respondent in the domain name business] is justified may be a matter for debate, but in the opinion of the Panel there is a strong body of precedent which, though not binding, is strongly persuasive.”

The value of a jurisprudence lies in the consistency of its rulings which in the case of the UDRP is achieved through “a strong body of precedent.” Readers of UDRP decisions will note that it is a rare case in which the panelist does not anchor his or her opinion with citations, even though, technically, precedent in UDRP jurisprudence (according to the WIPO Overview) is not binding. The question in Pantaloon and similar cases involving common words in the English (or any other) language is “whether the acquisition and use of the disputed domain name for that purpose constitutes a bona fide offering for sale.” The question “is intimately linked with the question of whether or not the acquisition and use is in good faith.” In regard to this, the Panel continues

In assessing whether a respondent’s use constitutes a bona fide offering of goods or services, the Panel in Zerospam Security Inc. v. Internet Retail Billing Inc., Host Master, D2009-1276 (WIPO December 18, 2009) suggested that the determination lies in the answers to the following questions. Does “(i) the respondent regularly engage[] in the business of registering and reselling domain names and/or using them to display advertising links; (ii) the respondent make[] good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others; (iii) [is] the domain name in question ... a “dictionary word” or a generic or descriptive phrase; (iv) [is] the domain name ... identical or confusingly similar to a famous or distinctive trademark; and (v) ***is [there any] evidence that the respondent had actual knowledge of the complainant’s mark.”

In Pantaloon, “criteria (i) and (iii) are clearly satisfied and so too, in the Panel’s view, is criterion (v). As to criterion (iv), the Panel is satisfied that Complainant’s mark is famous and distinctive in India, however there is no evidence that it is well-known outside that country and in particular, in the United States, where Respondent is located.” This raises the interesting issue of geographic distance and the question of “knowledge.” “There is no evidence that Complainant's Pantaloon trademark is registered outside India or that it is known or used outside India.” For trademarks on the lower end of the classification scale the complainant needs significantly more evidence of its reputation at the time the domain name was registered. It cannot rest on its present reputation in a far country.

UDRP jurisprudence did not come ready made. Panelists assembled it from readily available legal and cultural artifacts, and it grew (among other ways) through the friction of dialogue and debate. An example of this has been observed in earlier Notes discussing the Octogen line of cases advocating “retrospective bad faith.” The dialogue or debate has advanced to the conclusion (if I’m not being premature) that the new construction advocated appears to be a dead-end. The Panel in India Infoline Ltd. v. Myles Hare, D2010-0542 (WIPO June 16, 2010) noted that these cases “have not been generally accepted by panelists within UDRP jurisprudence.”

In one of the earliest cases in the canon, J. Crew International, Inc. v. crew.com, D2000-0054 (WIPO April 20, 2000) the majority granted Complainant’s request for transfer of the domain name <crew.com>, apparently under the influence that Respondent was “a speculator who registers domain names in the hopes that others will seek to buy or license the domain names from it.” Speculation and trade in domain names, however, are not condemnable. The dissent’s view was more on target and has prevailed. “In my judgment,” (he said)

He was prescient in stating that “[w]here the domain name and trademark in question are generic, and in particular where they comprise no more than a single, short, common word, the rights and interests inquiry is more likely to favor the domain name owner.”

Dialogue and debate is also apparent in Visual Systems, Inc. v. Development Services Telepathy, Inc., FA1004001318632 (Nat. Arb. Forum June 25, 2010). Although not determinative, the parties raised the issue of laches, with the Respondent advocating it and the Complainant denying its applicability. The Panel was unanimous in finding for the Respondent for its registration of <cygnet.com>. “Cygnet” is a common word in the English language meaning a “young swan.” One of the panelists filed a separate opinion to discuss the issue of laches. The consensus is that laches is not applicable in a UDRP proceeding, but not all panelists are entirely comfortable in its not being available as a defense. Delay, after all, is a factor in determining a right or legitimate interest under paragraph 4(c)(i) of the Policy. The separate opinion took the view (citing Board of Trustees of the University of Arkansas v. FanMail.com, LLC, D2009-1139 [WIPO November 2, 2009] in which he was a member)

Where the respondent raises the issue of delay and the complainant submits a supplemental response without explaining itself, it fails its burden. “All of that being so, it is reasonable to conclude that there should be more debate on recognizing laches, or at least unexplained delay, as a defence to a UDRP claim.”

UDRP is not centric to any particular national law, but where the parties 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,” EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., D2000-0047 (WIPO March 24, 2000). The dispute in Live Link, Inc. v. R Schwartz and Virtual Dates, Inc., FA1007001333180 (Nat. Arb. Forum August 26, 2010) concerned accrual of right where the Complainant relies on a trademark registered on the Supplemental Register. While a trademark registered on the Principal Register is presumptively valid and unassailably satisfies the threshold requirement for UDRP standing – once “the USPTO has made a determination that a mark is registrable, by so issuing a registration ... an ICANN panel is not empowered to nor should it disturb that determination,” U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum December 9, 2003) – the result is otherwise with the Supplemental Register.

Registration on the Supplemental Register “provides the Complainant with no protectable rights” in the alleged mark, CyberTrader, Inc. v. Bushell, D2001-1019 (WIPO Octobrt 30, 2001). Indeed, it is “evidence that there are no common law rights at the time of application,” Roberta Chiapetta dba Discount Hydroponics v. C.J. Morales, D2002-1103 (WIPO January 20, 2003). It signifies that the generic or descriptive mark is incapable of crossing the threshold of distinctiveness accorded to marks enrolled on the Principal Register. Nevertheless, having a registration on the Supplemental Register “shall not constitute an admission that the mark has not acquired distinctiveness,” 15 U.S.C. §1095.

Although not an admission, registration on the Supplemental Register certainly challenges the complainant to prove secondary meaning. In Live Link the Complainant argued that it had been “using the Mark variably as ‘Gay Live,’ ‘Gay Live Network,’ ‘Gay Live [with City Name]’ and ‘1800gaylive’.” However, since the Complainant submitted no evidence of trademark rights in marks other than GAY LIVE NETWORK and GAY LIVE, the Panel limited its analysis to those two marks. The former trademark was originally registered on the Supplemental Register and subsequently abandoned. The latter trademark was registered on the Principal Register 10 years after the registration of the domain name. The Complainant was challenged to prove that it acquired its common law trademark prior to the Respondent’s registration of <gaylive.com>.

The difficulty, of course, begins with the documentary evidence. Although the Complainant had represented first use in commerce on its original application that resulted in registration on the Supplemental Register earlier than the domain name, it offered no evidence to support the claim. At best, the “effective date of Complainant's federal rights is . . . the filing date of its issued registration,” Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001), which in Live Link post-dated the domain name.

“Prior UDRP panels have expressed skepticism that a supplemental trademark confers rights to the owner until it is converted into a principal registration,” citing Jahnke & Sons Construction, Inc. v. Trachte Building Systems, Inc., FA 1292233 (Nat. Arb. Forum November 5, 2009). Registration on the Supplemental Register carries little, if any, weight under United States law. “Even setting aside the contrary statements about the date of Complainant's first actual use, the mere claim of use is not enough to establish rights. Use must be in a manner sufficiently public to create some public awareness,” Phoenix, supra., citing T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372 (Fed. Cir. 1996); Lucent Information Management, Inc. v. Lucent Technologies, Inc., 186 F.3d 311 (3rd. Cir. 1999).

Concurrent Right to a Lexical String Registered by One Party as a Trademark and the Other as a Domain Name

Trademark law recognizes, with qualification that two parties can be entitled to the use of similar, even identical lexical strings where the concurrent user offers unrelated goods or services. The qualification is that “the Lanham Act's tolerance for similarity between competing marks varies inversely with the fame of the prior mark,” Kenneth Parker Toys Inc. v. Rose Art Industries Inc., 963 F. 2d 350, 353 (Fed. Cir. 1992). The Court continues, “[a]s a mark's fame increases, the Act’s tolerance for similarities between competing marks falls.”

This proposition is also central in UDRP jurisprudence. A domain name identical or confusingly similar to a trademark is no more than an ocular description of their appearance based on a side by side comparison. Where, without knowledge and in some instances with it (nominal fair use) [SAP AG v. Stephen M Meli, D2010-0760 (WIPO July 27, 2010))] a party operates in a different market or channel of trade [Streetwise Maps, Inc. v. Ryan Gibson, D2010-0984 (WIPO August 6, 2010)] and offers goods or services in different classes [G DATA Software AG v. Geologic Data Systems, D2010-0389 (WIPO May 10, 2010) (Respondent uses <gdata.com> as a domain name and e-mail address and the Complainant as its trademark; as such it has a right or legitimate interest in the domain name.)

The Complainant in Streetwise Maps located in the United States (Florida) alleges that Respondent (located in the U.K.) is a competitor in the market it serves. However, “markets” variably refer to geographical locations (International, regional, or local) or to customer or client bases wherever located. Parties can be distant from each other in a number of ways without collision. Argument that a respondent is a competitor – intending to suggest thereby that it should have been aware of the complainant – necessarily requires a threshold analysis of the parties’ locations and their products or services. The Panel in Streetwise Maps carefully parses what each party offers, to whom and their locations. “While Respondent does refer to maps on its website” (the Panel notes) it “does not offer to sell maps to the public or sell maps to the public on its website. Respondent offers its services to develop a system, not to sell products such as maps.” Further,

In contrast, “Complainant is in the business of producing and selling folding maps to the public ... [it] produces and sells maps of many of the principal cities of the world as well as maps of underground transit systems. Complainant offers its maps to the public at its website <streetwisemaps.com>.”

Setting aside the issue of nominal fair use that implies knowledge of the complainant and its trademark or the respective timing of the domain name and trademark registrations there may still be no overlap in parties’ targeted customers and they may be geographically remote. In Streetwise Maps, when markets, products and services are examined for their specifics relieved of abstraction the Panel concluded that the parties were not competitors.

Paragraph 4(a)(i) of the Policy is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts, unless it suggests the whole. The similarity must be confusing to an “objective bystander,” so stated by the minority Panel in Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010) (concurring in the ultimate holding denying the complaint but dissenting on the 4(a)(i) finding in the Complainant’s favor). How to draw the line between names that are confusingly similar and those that are simply similar but not confusing seems to be in the same category as holding water. It is easier for the Panel to pass the complainant on the threshold test and deny the complaint for failure to prove bad faith. But, some panelists scratch to relieve the itch. The 3-member Panel in Tire Discounters, Inc. v. TireDiscounter.com, FA0604000679485 (Nat. Arb. Forum June 14, 2006) ruling on TIRE DISCOUNTERS to form <tirediscounter> held that the “omission of the letter ‘s’ from the mark is one of those small differences that matters.” See the “Small Differences” Note of August 24. The “small differences” approach is a start that works with some combinations and not others.

The scratching Panel in Open Society Institute (if I may say this without offense) builds a more nuanced approach to confusing similarity based on a whisper made in a case decided in the first months of UDRP, SportSoft Golf, Inc. v. Sites to Behold Ltd., FA0006000094976 (Nat. Arb. Forum July 27, 2000). In SportSoft, the “trademark [GOLF SOCIETY OF THE U.S.] links together two generic words – golf and society with a geographic entity, the United States. The disputed domain name incorporates the two generic terms golf and society with an upper level domain dot.com.” Generalizing the particular is similar only in incorporating the same generic terms but the “objective bystander” is unlikely to confuse the two.

In Open Society also the trademark “links together two generic words.” The “sole question ... is whether the domain name <opensociety.org> is confusingly similar to the trademark OPEN SOCIETY INSTITUTE.” Is there enough of a similarity to confuse the “objective bystander” of a relationship with the trademark holder? The majority said Yes. The minority scratches. “The test to be applied” (he observes) “has two parts” and continues

If omission of “institute” is one of those “small differences” only because it is said to be, that is not good enough. “The real obstacle in the way of finding that an objective bystander would reach that conclusion is that the domain name is referring to a concept or a notion, whereas the trademark is referring to an entity or, more precisely, an institute and one institute in particular.” That is a significant advance over “small differences” by emphasizing a distinction between “a concept or a notion” and the actual name of the legal entity. “An objective bystander is therefore unlikely to think that the domain name was referring to the Complainant’s institute or to any institute at all and unlikely to be confused into thinking that the one necessarily referred to the other.” It is more likely that “the concept or notion invoked by the domain name” will be taken to mean “the idea of a society that is not closed or secretive, but open and committed to imparting information, in part by means of freedom of information legislation.”

The scratcher also has a nuanced view of the rights or legitimate interests requirement where a domain name found to be confusingly similar is composed of a combination of generic words. I will discuss his paragraph 4(a)(ii) analysis in a later Note.

Despite misgivings expressed by some panelists over the past year (the Octogen line of cases), where there is no evidence of bad faith registration the Policy does not penalize a respondent for changing use before notice and filing of complaint. After notice and filing of complaint there are different rules. Inadvertent transgressors typically involving domain names composed of generic or descriptive words and combinations used in their commonplace sense are treated more kindly than respondents advertently taking advantage of the complainant or its trademark. Yesterday's case, American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Nat. Arb. Forum July 27, 2010)(<americanway.com>) brought attention to this issue and it is worth reporting.

The Panel in that case noted that “[c]ontrary to Complainant’s urging, the Panel draws no adverse inference from the fact that Respondent made post-complaint changes to its website.” Although “other panels may have held that changing a website after being notified of a dispute cuts against, or negates a finding of rights or interests in a disputed domain name [citing decisions to that effect] ... this Panel respectfully sees such holdings as unwarranted departures from long standing evidentiary rules and rational[e] concerning subsequent remedial measures.”

It could be argued that a position that “draws no adverse inference” under any circumstances is not sufficiently discriminating. It is appropriate when applied to the inadvertent transgressor, but not otherwise. The Panel really makes a case for the former. “A respondent, by changing its website to mitigate concerns levied by a complainant via either a cease and desist letter or a UDRP complaint, arguably reduces further harm from such website to the consuming public.” Modification of “such a website also may attenuate the harm to a complainant whose trademark or commercial interests are allegedly compromised by the website prior to remediation.” The Panel’s point is that respondents (in the innocent class) should not be discouraged from “this positive behavior.... [T]he fact of a website’s remediation should not create an evidentiary inference adverse to the respondent.”

The Panel in American Airlines arrives at this conclusion on the authority of the Federal evidence rule where “the rational[e] for excluding evidence of subsequent remedial measures is set out in the Federal Rules of Evidence §407 and its accompanying Notes.” He cites GMC v. Keystone Auto. Indus., 453 F.3d 351, 359 (6th Cir. 2006) for the proposition that “finding that evidence of post-litigation changes to the form of an allegedly infringing trademark device was prohibited pursuant to FRE 407.” Since “Rule 407 is applied in trademark litigation ... there is no reason why its rational[e] should not be consider[ed] and its principles applied to UDRP disputes where appropriate.”

Other Panels take a different view. For some the defense is limited to actions taken “before any notice to you of the dispute,” hewing strictly to the letter of paragraph 4(c)(i) of the Policy. “To allow Respondent’s claim that he has made post-filing changes to his website to alter the outcome of this dispute would open the door for all future respondents ... to avoid the consequences of their actions,” Hewlett-Packard Company v. Alvaro Collazo, FA0302000144628 (Nat. Arb. Forum March 5, 2003). Another Panel similarly held: “If use following complaints were taken into account, the Policy could be rendered wholly ineffective by respondents rapidly posting websites which ostensibly constituted fair use of disputed domain names,” Poker Host Inc. v. Russ "Dutch" Boyd, D2008-1518 (WIPO December 1, 2008).

The logic to this position is that a respondent should not be rewarded for sanitizing its website upon notice of infringement. The two views can be harmonized by considering where respondents fit on the continuum. There are certainly respondents who inadvertently transgress; where the evidence supports a right or legitimate interest. Just as certainly, the Respondent in American Airlines being a good example, there are respondents who advertently transgress.

Prosecuting a Claim Against a Previously Successful Respondent on a Different TLD

Complainants from time to time refile complaints on change of circumstances. Refiling is not barred but complainant must satisfy strict rules generally applied on applications to reargue or renew motions. Entered judgments do not bar commencing an entirely new case. In an early ACPA case, Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, 347 F.3d 370 (2nd Cir. 2003) the Second Circuit held that “the res judicata effect of the First Action [relating to domain names] is not dispositive in the Instant Action as Cello may have a claim premised on facts arising after the First Action. The ‘bad faith intent to profit’ element of a trademark rights-holder’s ACPA claim may be premised on the domain-name registrant’s ongoing use of the domain name.... The judgment in the First Action, therefore, does not bar Cello from arguing that Storey's use of ‘cello.com’ is unlawful insofar as Cello relies on conduct post-dating the First Action to make its claim,” (emphasis added).

The factual circumstances in American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Nat. Arb. Forum July 27, 2010) (<americanway.com>) offer an interesting variant on refiling and new claim prosecutions. In a previous claim of abusive registration, American Airlines Inc. v. Webtoast Internet Services Inc., FA0112000102954 (Nat. Arb. Forum February 24, 2002) the Panel denied the complaint for <americanway.biz>. The Complainant did not challenge <americanway.com> at that time (registered in 1996) because (presumably) the website was making a bona fide offering of goods or services. In the earlier case the Respondent relied (and the Panel accepted) that <americanway.biz> passed the paragraph 3(c)(ii) test. I will refer to the 2002 case as American Airlines 1 and the more recent one as American Airlines 2.

At the time the Complaint was served in American Airlines 2 the website “contained links to Complainant’s competitors.” The Respondent did not deny this but explained that its “web server was recently, very seriously, hacked.” The Panel was skeptical:

The factual record in American Airlines 1 supported the Respondent’s claim that it was using the .biz as it had been doing with the .com “an e-commerce gateway for sales of videotapes, books and CDs and as a website for access to the works of the American author, Ralph Waldo Emerson.” Somewhere along the way, the alleged hacking occurred and transformed the website, hence the Panel’s humorous reference to “metamorphosis.”

While modifying a website to remove accidental linking may in certain instances be excusable it is still a factor to be considered in assessing bad faith. In American Airlines 2 the Panel concluded that “Respondent’s lack of concern for the rights of Complainant at that time it originally registered the disputed domain name is inferred from Respondent’s recent conduct.” This may be regarded as too attenuated since the first Panel was persuaded to the contrary. However, there was another fact that told against the Respondent, its “lack of candor” in its Response to evidence about its purported application for a trademark. It “claims to have trademarked THE AMERICAN WAY, but fails to reveal that the Trademark Office records show that the registration was owned by The Pony Venture Project. The Respondent also fails to note that the Registration was cancelled by the Trademark Office as a result of the owner failing to submit a declaration and supporting documentation evidencing that the alleged trademark was still in use.”

It is fundamental that a respondent’s intent at the time it registers a disputed domain name to take advantage of the complainant’s reputation in the marketplace is an essential element of bad faith. Intent is linked to knowledge of the complainant or its trademark, but proving intent through knowledge in the face of a respondent’s denial is a heavy burden. It is lighter for arbitrary and heavier for descriptive trademarks. Evidence is particularly hard to marshal in those instances where the domain name is composed of generic elements that have currency in several lines of commerce. This is the story in Take-Two Interactive Software Inc. v. Name Administration Inc., D2010-0845 (WIPO August 6, 2010). The Complainant holds a trademark registration for BIOSHOCK, but the disputed domain name <bioshock.com> was registered prior to the registration of the trademark.

The Complainant in Take-Two also had other problems of proof, some of its own making. Where knowledge of the complainant or its trademark is denied, concrete evidence to the contrary is generally unavailable. At one end of the spectrum knowledge means actual intelligence of the complainant and its trademark; at the other end, it means presumed or “more likely than not” knowledge inferred from evidence submitted in support of bad faith. The Complainant in Take-Two alleged that the Respondent “had been made aware of the Complainant’s BioShock game from the statement made by the game developer” prior to the registration of the domain name. Awareness can be inferred, but even if in this case it were

The burden of proof cannot be satisfied by asserting a possibility of knowledge without intention to take advantage of the complainant’s reputation or the penetration of its trademark.

There were two further disqualifications in Take-Two. First, Complainant filed an “intent to use” trademark application and it subsequently represented that its first use in commerce post-dated the registration of the domain name by almost two years. An admission against interest may be excusable on concrete proof of secondary meaning but even if that were likely in Take-Two “there is no evidence nor suggestion that the reason why the Domain Name was registered (whether automatically or otherwise) was as a result of any goodwill or reputation that the Complainant has built up in the name,” citing Promatic International Limited v. Name Administration Inc., D2006-0673 (WIPO July 19, 2006).

The second disqualification lies in combining dictionary words. The result of joining “bio” and “shock” is not “exclusive to the Complainant, since, as highlighted by the Respondent, it has been selected and used by other companies, including Johnson & Johnson, prior to the Complainant, to identify products different from videogames (e.g., cleaning products, nutritional products, etc.).” Even if these disqualifications were not present, the “content published on the web page linked to the Domain Name [were] links related to scientific content.” This is rather evidence of good faith than targeting.

The threshold requirement sets a low bar but small differences “can have a major effect on the way domain names are read,” Travellers Exchange Corporation Limited v. FairFX Plc. D2010-1056 (WIPO July 29, 2010). The Complainant holds the trademark TRAVELEX; it complained that the Respondent’s registrations of <travelexexpensive.com> and <travelexpensive.com> were abusive. The first of the two disputed domain names incorporates the trademark; the second either consists of two dictionary words “travel” and “expensive” or the trademark plus “pensive.” But, “pensive ... is [a word] which is much less widely used. In the Panel’s view Internet users are most unlikely to recognize the Domain Name by itself as comprising the words “Travelex” and “pensive.”

There are several classes of domain names that may be similar to trademarks without being confusing. The omission of a single letter from the mark such as an “s” in Tire Discounters, Inc. v. TireDiscounter.com, FA0604000679485 (Nat. Arb. Forum June 14, 2006) (comparing TIRE DISCOUNTERS and <tirediscounter>), for example, is one of those small differences that matters in this context, citing Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002): “[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.”

There are, also, those domain names for which trademark holders have disclaimed generic words to satisfy legal requirements or whose registration has been permitted subject to disclaimer and proof of continuous use [15 U.S.C. § 1052(f) ]. Similarity in other instances may not be confusing since the trademark is not the disclaimed elements, as in design plus word marks. Another class is illustrated in General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, D2006-0334 (WIPO August 13, 2006) (cited in FairFXsame, same Panel). At issue in that case were several domain names, most of which passed the threshold test and were transferred to the Complainant. The similar but not confusing domain name was <eege.com>.

The Panel in General Electric noted that “the separation of elements of a string of characters by a hyphen can be crucial.” The domain name <eege.com> is on one side of the divide and <ee-ge.com> on the other. From “one point of view there is only a slight distinction between <eege.com> and <ee-ge.com>, namely, the interposition of a single hyphen,” but it makes all the difference, citing The Football Association Limited v. Websitebrokers Limited, D2001-0156 (WIPO April 5, 2001). That Panel held

The absence of a hyphen made no substantive difference in Chernow Communications, Inc. v. Jonathan D. Kimball, D2000-0119 (WIPO May 18, 2000) (C-COM [the registered trademark] and <ccom.com> [the disputed domain name]). That is, the Panel noted that the use or absence of punctuation did not alter the fact that a name is identical or confusingly similar to a mark, a position that is consistent with United States court decisions dealing with trademarks. As we see, however, the generalization must be qualified because in certain factual instances the absence of a hyphen (or the addition of one) makes a difference in respondent's favor.

The UDRP mandates that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” Paragraph 10(b) of the Rules of the Policy. And, because a dispute resolution should not be a roulette wheel, the ICANN panelists aim for a high degree of predictability and consistency. This is achieved through “a strong body of precedent” which notes the Panel in Pantaloon Retail India Limited v. RareNames, WebReg, D2010-0587 (WIPO June 21, 2010) “is strongly persuasive” even if not binding. The story behind “not binding” comes from the WIPO Overview of Panel Views on Selected UDRP Questions (the “WIPO Overview”) published in 2005. It states that the UDRP does not operate on a “strict doctrine of precedent,” which may be true but (as I have pointed out before) it is rare for a Panel not to cite precedent and (although less often) case authority.

Many of the formative principles of UDRP jurisprudence were quickly identified and cogently laid out in early decisions. Where there were (and continue to be) uncertainties of construction Panels sought (and seek) to build and refine the work of their colleagues. There are also decisions setting forth or proposing constructions and legal standards which fail to ripen to consensus that have either been abandoned as dead ends or rejected in later decisions. This can be seen, for example, in Igor Lognikov v. Web Ventures, Nerdec, Inc. and Charles Edmunds, D2009-1684 (WIPO January 29, 2010) in which Respondent cited cases to the effect that “the existence of a mark as to the date of registration is a rigid pre-requisite for a finding of bad faith registration.” The Panel noted, however, that “these were both cases in early days of the existence of the Policy. Things have moved on from then.”

One of the principal tasks for early Panels was to assure parties that they could expect a fair hearing based on the evidence and the law; not statutory law, but domain name law based on the Policy’s text as informed by the WIPO Reports and interpreted by prior Panels. There has been some discussion particularly as it relates to laches whether “law” is an inclusive term that subsumes “equity.” According to the Panel in Ni Insan Kaynaklari Personel ve Danismanlik Limited Sti v. Timothy Michael Bright, D2009-0315 (WIPO May 7, 2009) “the Policy is not a proceeding in ‘equity’ in which a panel seeks to generally determine whether one party or another has acted more or less fairly toward the other, thereafter fashioning a ‘just’ remedy.” “It is possible” (the Panel further noted) “for a respondent to be infringing the trademark rights of a complainant, yet be found not to have acted in bad faith.” This refers to the Policy's requirement for conjunctive bad faith. If the holder's claim is for trademark infringement its remedy is in a civil court of law.

For claims within the Policy's jurisdiction Panels have emphasized that decisions “should consist of more than, ‘It depends [on]what panelist you draw’,” Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001) (<lifemagazine.com>). It is particularly important for a jurisprudence that authorizes the Panel to order a domain name forfeited to the complaining party to adhere to standards articulately expressed and consistently and objectively applied. The majority in Time “believes potential users of the UDRP are entitled to some degree of predictability.” That is, if “a principle enunciated in a decision is well-reasoned and repeatedly adopted by other panels, the majority believes that absent compelling reasons which require a determination otherwise, that the rule established should be respected.” “[U]sers of the internet are better served through panel decisions that promote consistency and predictability.” Predictability is assured by the Policy’s openness in requiring public accessibility of all decisions. The database then becomes the source of authority.

A certificate of registration satisfies the threshold requirement for maintaining a UDRP proceeding while a mere “intent to use” application to register a trademark or registration on the Supplemental Register does not. The consensus is that no “presumption [of validity] arises from a pending application to register a mark,” Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 17, 2001). This was particularly highlighted in Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009) in which the USPTO initially rejected the trademark for registration on the Principal Register. The Respondent in that case may very well have learned about the Complainant’s plans from scanning the TESS database, but “Everyday Eating” is a purely descriptive phrase and Complainant’s trademark post-dated the registration of the domain name.

If the complainant argues that its trademark nevertheless pre-dates the registration of the domain name, it must offer proof of secondary meaning to pass the threshold. This is not achieved by the complainant pointing to its representation on the trademark application of an earlier “first use in commerce” date. While proof of a right based on a registered trademark is simply a copy of the certificate, proof of secondary meaning is a considerable undertaking. The Complainant in Kaizen Applications, LLC v. Private Whois Service, FA1005001324496 (Nat. Arb. Forum July 8, 2010) (<blackhatworld.org>) is stopped at the threshold simply because it did not understand that mere assertion is not equivalent to proof of a common law trademark.

The “Complainant” (noted the Panel) “has provided evidence that it applied to register Complainant’s Domain as a trademark.” It also asserted that it has a common law trademark in the domain name. However, neither of these assertions “establish any enforceable trademark rights in [the disputed] Domain [Name].” In order to qualify, to cross the threshold, the complainant must first “identify the jurisdiction in which it is claiming common law rights and elucidate the relevant legal principles of that jurisdiction with a view to justifying its allegations of acquired common law rights. This is important because not every country recognizes common law rights, and the relevant law of each jurisdiction has its own nuances.” This view is questionable. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that “Unregistered rights can arise even when the complainant is based in a civil law jurisdiction,” Paragraph 1.7. The more important deficiency and controlling one is that the Complainant failed to “demonstrate that the trademark is, in fact, associated by the relevant public with the complainant’s goods or services.” The Panel continued with advice that complainants alleging common law trademark should make note of:

The consensus is that this is done by the complainant offering evidence of (1) the length and continuity of a mark's use, (2) sales, advertising, and promotional activities, (3) expenditures relating to promotion and marketing, (4) unsolicited media coverage, and (5) sales or admission figures. See also Mitek Corporation v. Xedoc Holding SA, FA1007001337379 (Nat. Arb. Forum August 18, 2010): “Complainant has not provided any evidence in the form of advertising expenses, unsolicited media coverage, consumer or other third-party recognition, which are traditional means of proving common law rights.”

The first five UDRP decisions (1 commenced in 1999 and the first four of 2000) were decided in Complainants’ favor without Respondents’ participation. Default gives the complainant an advantage, but only to the extent that the Panel is working with a one-sided record. Otherwise, the burden of proof remains with the complainant on all elements of the Policy. Failure to appear and plead is not an admission of bad faith registration and use as it is in a court of law. The fifth decision, Telaxis Communications Corp. v. William E. Minkle, D2000-0005 (WIPO March 5, 2000) is based on a full record. It reveals that the parties had entered into negotiations without success, but once the UDRP proceedings commenced there began an escalation of threats by each party and bad faith use by the Respondent that raised the question whether in those circumstances the Panel would be justified in finding abusive registration.

It is important for understanding the jurisprudence to look back to the earliest UDRP cases to see the incremental process of its assembly. The jurisprudence we see now was not in existence in 2000. The only authorities then available were the WIPO and ICANN reports (the former equivalent to a legislative study), the Lanham Act and case law, generally from United States federal courts. The Panel in the second decision (the first in 2000), for example, cited a pre-ACPA decision, Intermatic v. Toeppen, 947 F.Supp. 1227 (N.D. Ill. 1996) for a fundamental proposition. The court held that “Toeppen’s intention to arbitrage the ‘intermatic.com’ domain name ... was sufficient to meet the ‘commercial use’ requirement of the Lanham Act.” An inferential finding of “intention” satisfies the “primarily for the purpose” element of paragraph 4(b)(i) of the Policy.”

In Telaxis the Panel rested his decision on a close reading of the factual record without citation to authority. However, he established (put a foundation under) the timing issue. Unless a registrant is shown to have actual notice of the complainant or its trademark it is more probable than not that it registered the domain name in good faith. To assert otherwise the complainant would have to demonstrate that the domain name was registered with knowledge of the complainant and its trademark. The Panel in Telaxis also established that bad faith use following good faith registration does not support a finding of abusive registration. “Once the dispute arose” (the Panel concluded)

Essentially, there occurred mutual goading, something like a temper tantrum by the Respondent, but the Complainant offered no evidence that the Respondent registered the domain name in bad faith. Bad faith in the conjunctive is a feature of the UDRP. In the first decision decided, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, D99-0001 (WIPO January 14, 2000) the Panel made the point clearly (which has been under recent pressure) that the “WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. [ICANN] Staff recommends that this requirement not be changed without study and recommendation by the DNSO,” Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, submitted for Board meeting of October 24, 1999, para. 4.5,a.

Complainant Must Hold a Trademark in His/Her Personal Name to Succeed in a UDRP Proceeding

Celebrities whose names are source indicators have common law trademark rights, thus standing under the Policy to capture corresponding domain names, while those who are simply rich and famous do not. Do not, that is, unless the given name is the functional equivalent of a generic affix to a trademarked family name. This dichotomy is illustrated in a pair of cases decided by the same Panel, Vanisha Mittal v. info@setrillonario.com, D2010-0810 (WIPO August 8, 2010) and ArcelorMittal Legal Affairs Corporate, Vanisha Mittal, Aditya Mittal v. All Illumination, Vanisha Mittal, info@setrillonario.com, DME2010-0006 (WIPO July 30, 2010). The Complainant was unsuccessful in the first because her celebrity was not a source indicator, but successful as a Joint Complainant with the trademark holder in the second.

Vanisha Mittal is celebrated as the daughter of a rich father with extensive industrial and commercial holdings in India and Europe. There are trademark registrations for MITTAL; none for “Vanisha Mittal.” The consensus holds that “[w]ithout any evidence that the Complainant holds some specific right as licensee of a ‘Mittal’ trademark, the license argument must fail.” A similar finding was made in Birgit Rausing, AB Tetra Pak v. Darren Morgan, D2008-0212 (WIPO April 5, 2008) in which the Panel noted that Birgit Rausing “does not appear to have become well-known because she has written books.” Rather, “[s]he was well-known before that, due in part to her membership of the well-known Rausing family.”

“Celebrity status, on its own” (notes the Panel in Vanisha Mittal) “does not provide a complainant with rights in a trademark or service mark, which is the bottom line requirement for a complainant to satisfy paragraph 4(a)(i) of the Policy” The sole exception to personal name exclusion from UDRP protection is for founders who are in the scrum of business associated with their entrepreneurial enterprises. In Chung, Mong Koo and Hyundai Motor Company v. Individual, D2005-1068 (WIPO December 21, 2005), for example, the Panel stated that the problem “eventually… come[s] down to whether the evidence establishes [a] sufficient ... nexus between the name itself and its use and association in trade and commerce.” He provided a list of guidelines to establish whether there was proof of such a nexus.

No such nexus existed with Vanisha Mittal; her membership on the Board of Directors for Mittal did not qualify. “The Panel has been told almost nothing about the Complainant, and it is only possible to infer from the Respondent’s various website postings that she is a celebrity in some parts of the world, and that she celebrated a lavish and expensive wedding.” On the other hand, the trademark holder, ArcelorMittal, does have standing. The Panel explains that

Since the Respondent’s primary purpose in registering the domain name was to sell it to the trademark holder (he boasted of that fact) “for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name” he was “caught [noted the Panel] by paragraph 4(b)(i) of the Policy.” Hoisted, that is, by his own petard.

In the curious case of Eneco BV v. Eneco, D2010-0548 (WIPO July 7, 2010) – curious because the Panel made the Respondent’s case despite its default – a search of <eneco.com> on the Internet Archive's Wayback Machine at “www.archive.org” provided evidence of good faith registration and use years prior to the Complainant’s trademark. Moreover, “[s]ome webpages disclosed the United States Trademark Registration identifier comprised of the letter ‘R’ in a circle.” The Panel also searched and found ENECO on the USPTO database disclosing Respondent as the registered owner of a registered trademark. A review of recent cases shows that in a good many of them Panels accepted the truth of the historical snapshots. Respondents are expected to do more than deny the evidence.

The “archives” referred to in Facebook, Inc. v. Amjad Abbas, DME2010-0005 (WIPO July 13, 2010) (Note August 10) would be from the Wayback Machine. The Wayback Machine is a database of website snapshots that Internet Archive (“IA”) has been collecting from 1999. IA’s mission is nicely explained in The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], D2007-1438 (WIPO December 18, 2007). It collects web pages and “[l[ike a paper library ... provide[s] free access to researchers, historians, scholars, and the general public.” With Wayback Machine anyone can have literally a window on the past use of the domain name, although “Alexa respects robots.txt instructions [not to crawl a particular site], and even does so retroactively” thereby preventing the researcher from discovering targeted pages. The iFrancise Panel interpreted blocking as an attempt to conceal infringement, although is it not per se illegitimate as explained by the Respondent in Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010). Blocking after receipt of a cease-and-desist notice is different from a registrant’s policy of instructing Alexa not to crawl its websites.

It is clear that UDRP Panels are comfortable with acepting evidence from the Wayback Machine as persuasive in the absence of any counter evidence. They give historical snapshots great weight in determining both rights and legitimate interests in the disputed domain name as well as respondent's good and bad faith in registering and using it. In response to the Complainant's screen shot evidence in Facebook the Respondent “authorize[d] the panel to request archives of the page” but failed to offer any concrete refuation beyond denial of authenticity.

On the other hand, historical snapshots from the Wayback Machine have received a mixed view from U.S. courts. Although a federal magistrate has ruled IA snapshots admissible as “an admission of a party-opponent and are not barred by the hearsay rule,” Telewizja Polska USA, Inc. V. Echostar Satellite Corp., No. 02 C 3293, 2004 WL 2367740, at *5 (N.D. Ill. October 15, 2004) and there is support from the Second Circuit in Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 535 (2d Cir. 2005) (evidence of defendant’s Website advertisements presented through archive.org capture of the site content at particular time), the trend nevertheless appears to exclude such Wayback Machine evidence as hearsay.

2007 was a particularly fruitful year on this issue. For example, in a patent case, Chamilia, LLC v. Pandora Jewelry, LLC., 04-cv-6017 (S.D.N.Y. 9-24-2007) the plaintiff alleged that Pandora failed to submit its patent application to the PTO for more than a year after marketing its product. It offered a series of archived web pages from the Wayback Machine which Pandora moved to strike. The Court held that this “putative evidence suffers from fatal problems of authentication under Fed.R.Evid. 901.” In Novak v. Tucows, Inc., No. 06-CV-1909, 2007 WL 922306, at *5 (E.D.N.Y. March 26, 2007) the Court struck Wayback Machine evidence for lack of authentication of internet printouts “combined with the lack of any assertion that such printouts fall under a viable exception to the hearsay rule.” Wayback Machine evidence was also excluded in a TTAB case, Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856 (TTAB 2007).

The complainant has the burden of proof on all elements of the Policy. It is lighter where the complainant has control of the evidence. For example, for proving that a respondent lacks rights or legitimate interests under paragraph 4(a)(ii) of the Policy there is not usually any conclusive evidence since the evidence is controlled by the respondent. For this reason, a consensus quickly formed within the first few months of the UDRP that this element could be satisfied by the complainant making a prima facie case, which is defined as one that “will suffice until contradicted and overcome by other evidence.”

The burden is said to be “light” but light as it is the complainant cannot rest on speculation. There must be some evidence, or at least sufficient from which an inference can be drawn making it more likely than not that the prima facie burden is satisfied. How much evidence and of what kind depends in part on the strength of the trademark, the relationship between the parties and their geographic proximity or remoteness. Pro formerly a complainant should affirmatively state that the respondent is using the domain name without permission to attract Internet users to its website; is not making a bona fide offering of goods or services, is not “commonly known by the domain name” and is not using it in a legitimate non-commercial manner or entitled to protection under a fair use theory. Obversely, the respondent must come forward with concrete proof of one of the safe harbor defenses.

The meaning of “light” is relative; it cannot mean something less than proof. The Panel in Fender Musical Instruments Corporation v. Christopher Ruth, FA1007001333857 (Nat. Arb. Forum August 9, 2010) demands that the complainant marshal more because its trademark, FENDER (as a common dictionary word) is on the lower end of protection. Hence, its burden is heavier, even though the Respondent defaulted in responding to the complaint. “Here” (states the Panel) “Complainant claims Respondent made no use of, or any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.” This allegation tracks the would-be defense under paragraph 4(c)(i) of the Policy. However, the “Panel finds Complainant’s assertions, without any supporting evidence or analysis, do not sufficiently establish Respondent lacks rights or legitimate interests in the <fendercustomshop.com> domain name.”

What did the Panel find missing in Fender? To satisfy a prima facie case the complainant must offer facts as opposed to assertions. The Panel in one of the cited cases, Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) rejected the complainant’s offer of proof as merely asserting a legal conclusion. The Panel “has no knowledge of Respondent's use of the domain name upon which to base a decision.”

This means that the complainant must make an affirmative statement followed by supporting evidence. In other words, it is not enough to say that the domain name is not being used in connection with a bona fide offering of goods when the complainant makes no showing of how the domain name is actually being used. “Complainant fails to allege any facts related to Respondent’s use or provide any screen shots of Respondent’s resolving website.” The missing evidence could have been as little as a narrative of the content of the website together with a screen shot. Without such evidence, it is literally impossible to know whether the registration or use of the domain name is bad faith under any of the paragraph 4(b) elements.

A respondent violates paragraph 4(b)(i) of the Policy if it is found to have registered the domain name “primarily for the purpose” of extorting payment from the trademark holder. If the registration is primarily for another purpose, to benefit in another way at the complainant’s expense, then the violation must be matched with a different theory. Not surprisingly in these cases respondents insist that they acted in good faith, in fact have a legitimate interest in the domain name, and resist any suggestion of abusive registration. But, they are defeated by their contradictory stances and inability to controvert or counterbalance unfavorable evidence.

This inability to reconcile contradictions with concrete evidence can be clearly seen in two recent cases, Broan-Nutone, LLC v. Ready Set Sales, D2010-0920 (WIPO July 27, 2010) and BBY Solutions, Inc. v. Thena Botanicals, FA1007001333656 (Nat. Arb. Forum August 8, 2010). In both, Respondents attempted to camouflage their intentions by alleging good faith registrations without recognizing that positive and negative inferences are most productively drawn from acts rather than assertions. It is inconsistent for a respondent to argue good faith while targeting the trademark and demanding payment.

In Broan-Nutone (<broanreplacementparts.com> and <nutonereplacementparts.com>) the Respondent alleged that “it registered the Domain Names solely for the purpose of truthfully identifying the fact that it sells products identified by the trademarks.” However, it not only incorporated the trademark in the domain names it also “copied images, schematics and other information at [allegedly] the direct request and with the explicit permission and knowledge” of one of the Complainant’s employees, proof of which was not forthcoming. And, by the way, it refused to transfer the domain names “unless Complainant granted a license ‘for rights to use certain videos belonging to ... Broan-Nutone’.” The Respondent failed to reconcile means and ends. As the Complainant pointed out resellers (which the Respondent was claiming to be) have a lawful right to use a trademark “provided that such use falls within the parameters of the nominative fair use doctrine; and provided that such use is not likely to mislead or confuse consumers regarding the relationship between your client and Broan-NuTone.” However, the proof did not support a claim for nominative fair use.

In BBY Solutions (<geeksquadgirl.com>) Respondent did not deny that it had knowledge of the Complainant’s trademark, GEEK SQUAD, but alleged that it “never solicited Complainant at any time.” However, in response to Complainant’s demand for transfer of the URL “Respondent asked to be compensated ... [and demanded] an amount based on expenses related to the cost of building, maintaining, and optimizing the website for the time it has been on the Web.” The Panel’s comment: “Respondent does not dispute the factual core of this case – that she knew of Complainant’s mark and chose to use it anyway as the core element of her virtually identical domain name for related services, and that when confronted about her actions, asked for the astonishing amount of $170,000.” Here, too, the Respondent took contradictory positions, but only the demand for payment was concrete.

In both cases, Respondents gave themselves away by demanding “valuable consideration in excess of [his or her] documented out-of-pocket costs directly related to the domain name.” In BBY the Complainant noted and the Panel archly agreed that Respondent “provides no evidence supporting [her] argument that the price [demanded] is consistent with the expenses incurred in connection with the disputed domain name.” In Broane-Nutone the Respondent demanded a different kind of consideration that is equally extortionate for its being a demand.

Consequences of Transferring Registration, Even From One Privacy Service to Another

Under the UDRP the losing respondent has 10 days to commence an action in a court of law in a “mutual jurisdiction” to take advantage of the regulatory stay [paragraph 4(k) of the Policy]. Otherwise, the domain name is transferred to the complainant and the respondent’s remedy under the Anticybersquatting Consumer Protection Act is for the court to grant “injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant,” Ricks v. BMEzine.com, LLC. 2:08-cv-01174 (D.Nevada July 26, 2010), citing 15 U.S.C. Sec. 1114(2)(D)(v). Inexplicably, the plaintiff in Ricks (formerly the Respondent in a UDRP proceeding) commenced the ACPA action but not in a “mutual jurisdiction” thereby losing his automatic stay.

As followers of UDRP decisions know transfer equals new registration. Bad faith is measured from the date of transfer. BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, D2008-0882 (WIPO August 21, 2008) established the proposition that transfer can mean to any holder, even from one privacy service to another. While transfers are mostly to unrelated third parties, it is not a defense that beneficial ownership remains with the original registrant. “While the Panel can imagine reasons not to apply the principle in all cases ... [the Respondent] made its latest transfer, from one privacy service to another, to conceal his identity as long as possible.”

Ricks’ argument in his ACPA action centered on his good faith registration which preceded the defendant’s trademark registration. However, the district court stated that “Congressional intent would be undermined by Ricks’ proposed interpretation. If a domain name was registered in good faith originally, but thereafter re-registered in bad faith, the cybersquatter would escape liability, a result not supportable by the statutory scheme.” Note that the “statutory scheme” is different from the UDRP in that a registrant engages in unlawful conduct if he “registers, uses, or traffics in a domain name” – not conjunctive as under the UDRP – that is identical or confusingly similar to a distinctive mark “with the bad faith intent to profit from that mark” [15 U.S.C. Sec. 1125(d)(1)(A)].

“Although the ACPA principally was aimed at prohibiting cybersquatting, the Act also provides some protection to domain name registrants against ‘overreaching trademark owners’ who ‘reverse hijack’ a domain name from a registrant where the registrant’s actions were lawful,” Ricks, citing Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 625 & n.1 (4th Cir. 2003). But, to prevail on this claim the plaintiff must show (in addition to other proof) that its registration or use of the domain name was not unlawful under the ACPA. The district court (in granting summary judgment dismissing the cause of action for reverse hijacking) held that

While renewals under the UDRP do not start anew the analysis of bad faith registration they and transfers are consequential under the ACPA. “Consequently, if the LLC’s ‘BME’ mark was distinctive or famous before any of these dates, Ricks would not be entitled to summary judgment on the LLC’s counterclaim for cybersquatting.”

The Principle that a Prior Registered Domain Name (In the Hands of the Original Registrant) Cannot Have been in Bad Faith Is Not Nullified by the Domain Name Being Passively Held

“When a domain name is registered before a trademark right is established, the registration of the domain name was not [indeed, could not have been] in bad faith because the registrant could not have contemplated the complainant’s non-existent right,” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1. Only “when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”

Passive holding of a prior registered domain name is not a contingency that transforms good faith to bad. Yet, the Panel in GS Enterprises LLC v. Thierry Ehrmann, FA1005001324481 (Nat. Arb. Forum August 5, 2010) appears to suggest that bad faith could be found for passive holding of a domain name registered prior to the Complainant's acquisition of a trademark. “The Panel finds that Respondent’s failure to make active use of the disputed domain may indicate bad faith registration and use.” Further, “[i]n this case, the Panel finds it troubling that Respondent apparently has not made substantial use of the domain name in any way other than to post a single page of apparent art work, for over 13 years.... However, the Panel is also mindful of the high burden required for an actual showing of bad faith for non-use alone.”

The Panel’s statements are not simply a misreading of the law. They are nonsensical because (facts not supporting targeting) no inference of bad faith can be drawn from passive holding of a prior registered domain name that remains in the hands of the original registrant. Why in light of the well settled law the Panel found the Respondent’s conduct “troubling” is, well, troubling. The “high burden” requirement is applicable to registrations of domain names contemporaneous with or newer than the trademark. To call a post-acquired trademark holder’s burden “high” in proving bad faith leaves the impression that the burden can be satisfied. While a complainant whose trademark right postdates the registration of the domain name has standing to maintain the proceeding it has no actionable claim to the disputed domain name.

Where the complainant’s trademark preexists the domain name it must demonstrate that the respondent had knowledge of its trademark and intended to target it for commercial gain. See Facebook, Inc. v. Amjad Abbas, DME2010-0005 (WIPO July 13, 2010) discussed in August 6 Note. But, the “high burden” has no relevance to a prior registered domain name except under very limited circumstances. This could not have been made clearer in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) which the GS Enterprises Panel invokes as authority. The Telstra Respondent registered a domain name identical to the Complainant’s trademark which “ha[d] a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries.” Therefore, to cite Telstra in analyzing a case in which the respondent is holding a domain name registered years prior to the trademark is to miss the point entirely.

Whether the Respondent in GS Enterprises took “active steps to conceal [his] true identity, by operating under a name that is not a registered business name” (which, incidentally, was not the fact), is irrelevant even if he had. The Consensus principle is not contingent even if the Panel were unable for lack of imagination “to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.”

Passive holding without proof of demonstrable preparations to use the domain name may support a finding of lack of legitimate interest in a technical sense, meaning that the respondent cannot prove a defense under paragraph 4(c)(i) of the Policy, but if the domain name is registered in good faith the respondent must then have an unforfeitable “right”. And, if a respondent has an unforfeitable right he cannot be said to have registered the domain name in bad faith. There would be a totally different result if the current respondent were a transferee of the domain name. See BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, D2008-0882 (WIPO August 21, 2008) and Ricks v. BMEzine.com, LLC., 2:08-cv-01174 (D.Nevada July 26, 2010) (ACPA action commenced by the Respondent. The ACPA decision llustrates the vulnerability of respondents who register their domain names in good faith but commence using their domain names in violation of the trademark holder's rights).

Reasonable Grounds to Believe that the Use of the Domain Name is Fair Use or Otherwise Lawful

Of 19 UDRP proceedings commenced by SAP AG 5 were terminated and in 9 the Panels ordered the disputed domain names transferred. The remaining 5 complaints including the most recent SAP AG v. Stephen M Meli, D2010-0760 (WIPO July 27, 2010) were denied. It is not bad faith to incorporate another’s trademark where the use describes the respondent's business. The Panel in DaimlerChrysler A.G. v. Donald Drummonds, D2001-0160 (WIPO June18, 2001) held

Similar reasoning was then (a few months later) applied to unauthorized dealers in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). The Panel concluded that a respondent could succeed where it proved that it (1) actually offers the goods or services at issue; (2) uses the site to sell only the trademarked goods; (3) accurately discloses or disclaims the registrant’s relationship with the trademark owner; (4) tries not to corner the market in all domain names. The right created for respondents extends to authorized and unauthorized resellers and dealers and consultants.

Nominative fair use is regularly applied in UDRP cases. Oki Data and its progeny are frequently cited as precedent for the proposition. The defense has been endorsed by U.S. Circuit Courts most recently in Toyota Motor Sales USA Inc. v. Tabari, 07-55344 (9th Cir. July 8, 2010) discussed in the Note for July 19. The proposition can also be found in the Anticybersquatting Consumer Protection Act, 15 U.S.C. Sec 1125 (d)(B)(ii). The section reads in full, “Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.”

Unusual is that in SAP against Meli (to distinguish the case from the other 18 proceedings) Respondent Meli defaulted in appearance. It appears, however, as though the Complainant made the Respondent’s case. Its submission included the Respondent’s position, namely that “he noted differences in the parties’ channels of trade and a number of other users of SAP....” It also included a description of the Respondent’s business sufficient for the Panel to conclude in Respondent’s favor despite the default. Thus, the record demonstrated that

Although the Panel in SAP against Meli made no reference to Oki Data, its progeny or to the ACPA (in fact the decision is curiously sparse in citing precedential cases on any material issue), these authorities are nevertheless implicit. The Panel concluded that “it is not implausible that the Respondent, as the business SAP Resources Group LLC, may be commonly known by the disputed domain name and/or that he may be making fair use of the mark as a designation of the content or target of his services without intention to misleadingly divert consumers or to tarnish the trademark at issue.”

Supplementing the Complaint to Request a Three Member Rather than a One Member Panel

The Panel in Facebook, Inc. v. Amjad Abbas, DME2010-0005 (WIPO July 13, 2010) addresses an issue of first impression, namely whether a complainant can change its mind after electing a one member panel. The issue has two branches, whether A) the Center (meaning the administrative wing of the Provider) has power to allow amendment of the complainant’s first designation before referring it to the one member Panel? And B) a Panel has Power to allow an amendment of a party’s panel designation after referral? As a general rule governing arbitration proceedings, the arbitrator has the power to resolve procedural as well as substantive issues within his jurisdiction.

In Facebook, the Panel concluded that it had the power to reach a decision on the procedural issue but not the jurisdiction to accept the Complainant untimely request to change panel designation. “The Panel’s starting point in coming to [the] view [that the Center has no such power], is that the Policy is intended to provide a quick, relatively inexpensive dispute resolution system. Timeframes are accordingly short.” The reasons for this is that the “choice between a single-member panel and a three-member panel is an important step in the dispute resolution process.” The “first question is whether the Center has power to accept an amendment to a complainant’s panel designation made in its Complaint after formal notification of that Complaint to the Respondent and commencement of the administrative proceeding.”

In the Panel’s view, the Center has no such power. The reasons for this lies in the intended tempo of the UDRP proceeding. Given its “‘fast-paced’ character ... the Panel considers it unlikely that the framers of the Policy intended to give the parties the ability to delay the proceeding by changing their panel elections if they wished to do so.” “Once a response has been received, the Center only has five working days (where neither party has designated a three-member panel) to appoint a single panelist (Rules, paragraph 6(b)), and the Panel when appointed only has fourteen days (absent exceptional circumstances) to give its decision. The Panel is required to conduct the proceeding fairly, but with “due expedition” (Rules, paragraph 10(c)).”

The “more compelling” interpretation of the Rules is “that the reference to ‘elected’ in [] paragraph [6(b) of the Rules]refers only to the parties’ elections made in their initial filings – if in the complaint and the response both parties have designated a single member panel, then ‘neither the Complainant nor the Respondent [would have] elected a three-member Panel’, and paragraph 6(b) would apply.” The Complainant’s interpretation would “pointless waste quite a lot of time.”
“Any interpretation of the Rules which would open the door to that possible outcome seems unlikely to be correct.”

On the second branch of the issue, whether the designated one member Panel can refer the case back to the Center is equally incorrect. The Panel's authority is no greater than that which the Policy grants. “There is nothing in the Rules which contemplates a (sole) panelist directing the appointment of a three-member panel.” “More fundamentally, the appointment of panels is a function of the Provider under the Rules, and this Panel considers that his jurisdiction could not extend to directing the Center on the kind of panel it should appoint. The most he could reasonably do would be to recuse himself, and invite the Center to reconsider the question of panel appointment. But there would be no point in doing that if the panel believed, as this Panel does, that the Center has no power to allow the Complainant to change its election.”

We associate opportunism with respondents, but it equally describes a class of complainants who overreach their trademark rights in an attempt to capture prior registered domain names. The tactic may even be successful where the respondent fails to respond to the complaint. Between 75% and 80% of UDRP filings are uncontested, which gives ample opportunity for complainants to imply more than they have. Who would know that pleaded allegations were misleading if not tested by denial and contrary proof? The Complainant in Credit Europe Bank N.V. v. Peter Yu, D2010-0737 (WIPO July 14, 2010) decided it was worth the risk of commencing a proceeding for <crediteurope.com> without disclosing a fact “crucial to the merits of [its] case.” The concurring panelist concluded that the Complainant was using the UDRP proceeding “as a less expensive, quick-and-dirty alternative to an infringement action or other legal claim.”

In the concurring panelist’s view “[s]everal undisputed objective facts require such a finding.” The first is that the Complainant pleaded that it had been in business since 1994 without disclosing that it “did not begin using its current Credit Europe designation until 2006 or 2007.” The Respondent had registered the domain name several years earlier. “[T]his is an inexcusable omission that is misleading in the extreme ... [and which] cannot be squared with Complainant’s certification, required by paragraph 3(b)(xiv) of the Rules, that “that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate . . .”

The implication in the pleading that the trademark preceded the domain name is so affirmative that absent proof that it was (in fact) later acquired it would be impossible to detect. That is surely one of the reasons for the concurring panelist’s scolding. “I write separately because, unlike my colleagues, I believe the filing of the Complaint in these circumstances requires a finding by the Panel ‘that the Complaint was brought in bad faith’ and ‘constitutes an abuse of [this] administrative proceeding,’ Rules, paragraph 15(e).” The scolding is also directed at the professional representative. Paragraph 3(b)(xiv) of the Rules tracks Rule 11 of the Federal Rules of Civil Procedure. It reads: “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 good faith reasonable argument.” But, the Panel explains,

The professional representative “pitched” his client’s case on a totally untenable theory that “my client’s interests are more important and carry bigger weight than the interests of the Respondent, and therefore it is justified if the domain name is transferred to [it].” This raises ignorance of the UDRP jurisprudence and complicit deception to an unacceptable level. The “Complainant, or Complainant’s representative, seems to believe not only that under some inchoate and undisclosed standard that Complainant has a greater entitlement to the domain name than Respondent, but also that this belief justifies relief in a UDRP proceeding.” It does not, and for the concurring panelist it justifies “the limited censure available to the Panel under the Policy and the Rules, if only to deter similar conduct in future. I would include a finding in the Panel’s opinion that the Complaint was brought in bad faith and is an abuse of this administrative proceeding.”

Let us look back to one of the key rules of a UDRP proceeding, namely shifting the burden on proof of a prima facie case. It is expected that the party controlling the facts has an affirmative burden. For example, proof of complainant’s right under paragraph 4(a)(i) of the Policy is based on facts within its knowledge and evidence under its control. Withholding but compelled to admit dispositive evidence that its trademark right came into existence years after the registration of the domain name “constitutes,” as the concurring Panel in Credit Europe Bank N.V. v. Peter Yu, D2010-0737 (WIPO July 14, 2010) notes “a flagrant abuse of the entire UDRP process.” The Complainant intended to create a false impression. Had the Respondent defaulted, the Complainant's misleading allegations as to the commencement of its trademark right would have been sufficient to capture the domain name. This is what the Panel meant by “flagrant abuse.” But, more of this case tomorrow.

Paragraph 4(a)(ii) is (or would be if the burden were unrelieved) a harder test for the complainant and is the fulcrum for both parties. It requires the complainant to prove that the respondent lacks rights or legitimate interests in the domain name, but in contrast to paragraph 4(a)(i) the facts are not within its own but under the custody and control of the respondent. Here, Panels quickly determined that the test required something less than conclusive proof. The complainant could satisfy its burden by offering a prima facie case. Prima facie is defined as one that “will suffice until contradicted and overcome by other evidence,” Black’s Law Dictionary (Revd Fourth Ed).

Once the complainant offers a prima facie case that respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to respondent to provide credible evidence that it does. Shifting the burden 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 only a few more months to solidify as a rule in the decision process, D2000-0252, 0270, 0374, 0624.

The complainant satisfies its burden by offering sufficient evidence that yields an inference that the respondent lacks rights or legitimate interests. The inference is tentative and subject to rebuttal. As explained in Educational Testing Service v. Netkorea Co., D2000-0087 (WIPO April, 2000), the complainant’s burden is “relatively light” for the reason that “[b]y and large, such information is known to and within the control of the respondent.” The “light” standard is explained by the relative difficulty of marshaling evidence “uniquely within [the respondent’s] ... knowledge and control,” G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO August 21, 2003). The Panel in Croatia Airlines noted that

A consensus quickly formed that application of the prima facie rule was necessary owing to the difficulty of proving a negative. Without respondent’s participation and even with it, the complainant must make do with whatever adventitious information it can glean from the Internet (search responses for example), deconstruct from the website to which the domain name resolves (its present and historical content) and/or deduce from a respondent’s UDRP statements in the response to the complaint, cease and desist letters, and communications prior to the initiation of the proceedings.

At a minimum the complainant must affirmatively state that 1) it has no relationship with the respondent and did not authorize the respondent to use its trademark, facts within the complainant’s knowledge [paragraph 4(c)(i) of the Policy], 2) the respondent is not commonly known by the domain name, a fact evidenced by the respondent’s name disclosed in the Whois database [paragraph 4(c)(ii)] and 3) the respondent is not using the website for legitimate noncommercial or fair use purposes, a fact discernable from the contents of the website [paragraph 4(c)(iii)]. The inference in support of a finding in complainant’s favor is sustainable unless the respondent comes forward with affirmative proof that its right or legitimate interest trumps complainant’s trademark right.

Judicial Efficiency in Declining to Continue Analysis Where the Complainant Lacks Proof to Support its Case

I noted yesterday that secondary meaning is earned not presumed. Panels determine first whether there is jurisdiction. If there is, they continue; if there is not, the proceeding is brought to an end. There may well be dispute over the domain name, but it belongs in a civil court of law applying different legal standards. Dismissal of the UDRP complaint at the earliest moment in the proceeding is justified on grounds of judicial efficiency. It makes no sense to do more analysis than is necessary. So, if there is no jurisdiction, there is no necessity to analyze facts for rights or legitimate interests or bad faith registration and use and proper for the Panel to decline to do so.

Dismissal for lack of jurisdiction is a standing issue. In Surfside Animal Hospital, APC v. Mission Animal & Bird Hospital, FA1006001330046 (Nat. Arb. Forum July 28, 2010) it is evident that the parties are locked in an overlapping or inclusive dispute which appears to include the domain name as one component, but both parties have withheld governing facts from the record. There is an unexplained relationship. However, none of this is of any consequences because the Complainant fails to demonstrate that SURFSIDE ANIMAL HOSPITAL had gained secondary meaning. The Panel noted

Those claims are not in any way supported by evidence. There is no evidence whatsoever of reputation in, or public recognition of, the trademark, something consistently demanded in formative decisions under this Policy. The trademark is essentially descriptive. Even with extensive, well documented proof of use, Complainant might have struggled to show common law rights acquired over a period of barely more than one year.

Application “for a mark [as opposed to issuance of registration] is not per se sufficient to establish rights in a trademark for the purposes of the UDRP,” Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum September 20, 2004); Amsec Enterprises, L.C. v. Sharon McCall, D2001-0083 (WIPO April 3, 2001) and many later decisions. Although the Complainant in Surfside Animal Hospital alleges that its “first use in commerce” preceded by a year the registration of the disputed domain name the fact is its trademark registration occurred after the domain name. It is for this reason that the Panel could not accept its assertion of prior use without proof that its trademark had achieved recognition in the marketplace.

Since “it is impossible” (said the Panel) for it “to attribute common law rights in the trademark ... [b]ased simply on the material before it” there was no necessity to proceed with the analysis. Because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary, citing Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002). Although the Panel in Creative Curb is making reference specifically to paragraph 4(a)(ii) of the Policy, this procedure applies equally to the threshold requirement.

In common law jurisdictions an unregistered trademark is no less protected than one registered. But, the burden of proof is different; the bar is higher. This is illustrated in DogsBite.org v. Domain Privacy, Animal Farm Foundation Inc., D2010-0861 (WIPO July 27, 2010) in which the Complainant is arguing superior rights to the descriptive phrase, DOGS BITE. Also in Surfside Animal Hospital, APC v. Mission Animal & Bird Hospital, FA1006001330046 (Nat. Arb. Forum July 28, 2010) in which the Complainant has an application pending for a trademark. In these cases secondary meaning is earned not presumed.

Common words, descriptive phrases and pending applications aside, paragraph 4(a)(i) is silent on whether the trademark right the complainant is seeking to vindicate must be registered, but panelists within a few months of the UDRP’s introduction held that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names,” The British Broadcasting Corporation v. Jaime Renteria, D2000-0050 (WIPO March 23, 2000). It is not necessary for a trademark to be registered by a governmental authority or agency for such rights to exist, SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO April 13, 2000). However, the proof demands for registered and unregistered are significantly different. Whereas the owner of a registered mark succeeds in proving its trademark right by submitting a copy of the registration certificate – which “is prima facie evidence of [the trademark’s] validity,” NetApp, Inc. v. July Linett c/o Jolly Co., FA0812001238829 (Nat. Arb. Forum February 5, 2009) and also “creates a rebuttable presumption that the mark is inherently distinctive,” Janus International Holding Co. v. Scott Rademacher, D2002-0201 (WIPO March 5, 2002) – 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.

There nevertheless remained following these cases a question as to whether a complainant residing in a jurisdiction that did not recognize common law trademark rights could be said to have one for UDRP jurisdiction. The uncertainty is reflected in The Staff Manager’s Issues Report on UDRP Review (August 1, 2003) which posed the following question: “Should the policy be amended with respect to protection for non-registered marks?” Those in favor of reducing or eliminating recognition of unregistered marks argued that it “would increase registrants' certainty and the predictability of decisions.” It was also noted that “National (and local) trademark laws vary with respect to the deference afforded un-registered marks, so harmonization would not be feasible or within ICANN's scope.” “These rights” (one Panel noted) “derive from national laws and do not exist divorced from such laws,” Antonio de Felipe v. Registerfly.com, D2005-0969 (WIPO December 19, 2005).

As it turned out, however, the issue was decided by construction: unregistered marks in countries that recognize them are no less entitled to protection from abusive registration than registered marks. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 states that “Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.”

In DogsBite the Complainant is located in Texas and the Respondent appears to be a coalition of parties located in the United Kingdom and New York. If common law rights are invoked, there must be a foundation. The Panel turned to earlier UDRP decisions that drew guidance from U.S. Courts. “In assessing secondary meaning, one must consider a variety of factors, including, but not limited to, (1) advertising expenditures, (2) consumer ... linking [of] the mark to the source, (3) unsolicited media coverage of the product, (4) sales success, ... and [(5)] length and exclusivity of the marks use,” citing Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F.Supp. 2d 305, 313 (S.D.N.Y. 2000) (quoting Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1222 (2d. Cir. 1987).

Centaur Communications held that a mark acquires secondary meaning when “it [is] shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.” “Thus” (the DogsBite Panel notes)

“The mark” (continued the Panel) “is, at best, merely descriptive of the services offered by the Complainant.” Moreover, “[g]iven the clear lack of inherent distinctiveness, it falls to the Complainant to prove that its purported mark has acquired distinctiveness.” While, “[i]t is possible that at a full trial hearing with all the benefits of discovery and cross-examination, the Complainant might be able to establish itself as the owner of a common law right ... [o]n the record before it in this proceeding, however, the Panel is unable to conclude that the Complainant has met its burden in this case.”

Correspondence between the parties can prove decisive when the respondent makes admissions against interest, although the alleged prejudicial “statement must be considered in the context of the email of which it is a part,” Estate Diamond Exchange, Inc. v. Thomas Hull, D2010-1171 (WIPO September 16, 2010). In context in this particular case the statement did not rise to the level of an admission. The Respondent (befuddled) wrote: “I am a busy business owner trying to keep two jewelry stores afloat in a depressed market I really don’t have the time or the means to fight these people on this. You seem to have knowledge in this field and I believe you to be very fair. Can you give me advice on this?? I might even be willing to sell it if the price was right.”

Willingness to sell the domain name to a trademark holder is one of the indicia of bad faith, but the complainant has to prove that it has a trademark right; if it does, it has to prove that the respondent lacks rights or legitimate interests in the domain name. In Estate Diamond Exchange the disputed domain name, <estatediamondexchange.com> is a descriptive term. Standing is not conferred merely by using a term in trade. There has to be reliable evidence that “relevant purchasing public has come to recognize ‘Estate Diamond Exchange’ as a mark – that is, a symbol that distinguishes the Complainant’s second-hand jewelry services from those of others.” The Complainant failed to prove any common law right to the trademark.

In Estate Diamond Exchange, the correspondence was not lethal. In other circumstances, correspondence between the parties can be a fertile area of evidence, generally in complainant’s favor when the respondent fails to understand the consequences of his words. Communications prior to filing the complaint are part of the record whether or not a claim of privilege is asserted. Words can be revelatory of the respondent’s motivation and position. The Complainant in Red Bull GmbH v. Carl Gamel, D2008-0253 (WIPO April 14, 2008) sent the Respondent a cease and desist letter prior to filing of the Complaint. The Respondent's first response was “Please sue me!” and later “Try this I own ‘www.redbullsucks.com’ ‘http://www.redbullsucks.com’ and I will continue to promote my business! A.C.T. is the best an thats that! SEE YA!!! Carl B. Gamel II.I” His second response is not reported.

As a general rule, civil practice rules forbid disclosure of settlement discussions as antithetical to resolution of disputes, which are encouraged. Generally, however ICANN Panels with some exceptions have opted not to exclude “without prejudice” correspondence, although there may be reasons. For example, “where the country in [which the parties reside] adopts the doctrine of without prejudice privilege and both Parties are from that country, the doctrine must have more weight [than it would otherwise if the parties resided in different jurisdictions],” GM Holden Ltd. v. Bradley John Lawless, DAU2010-0010 (WIPO May 23, 2010) . But, that case was decided under a country code policy.

The WIPO Overview asks and answers the following question, Paragraph 3.6: Can statements made in settlement discussions be relevant to showing bad faith? Consensus view: Evidence of offers to sell the domain name in settlement discussions is admissible under the UDRP, and is often used to show bad faith. Assertions and statements made in communications prior to the initiation of a UDRP proceeding by or between the parties or their counsel are admissible regardless of notations of confidentiality.” The Panel in Magnum Piering, Inc. v The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO January 21, 2001) (U.S. residents) reasoned that the history leading up to the adoption of the Policy suggests that an offer to sell, absent a legitimate interest and absent contrasting evidence of good faith, is so likely to be evidence of bad faith and use that its exclusion is likely to result in injustice.

“A proceeding under the Policy is not an assessment of civil trademark infringement,” Ni Insan Kaynaklari Personel ve Danismanlik Limited Sti v. Timothy Michael Bright, D2009-0315 (WIPO May 7, 2009). Rather, the UDRP is jurisdictionally limited to determining whether a respondent’s registration of a domain name incorporating (in whole or in part) a complainant’s trademark is abusive. However, while the proceeding is not a trademark court an order cancelling or transferring a domain name is nevertheless a judgment that respondent infringed the complainant’s trademark rights. The same Panel also stated that “[a]n administrative proceeding under the Policy is not a proceeding in ‘equity’ in which a panel seeks to generally determine whether one party or another has acted more or less fairly toward the other, thereafter fashioning a ‘just’ remedy.”

This is not to imply that granting or denying relief is not “just,” but the remedy or exoneration has to be earned by adherence to the evidentiary standards demanded by the Policy as construed and settled in past decisions. The Policy expressly states that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” Rule 10(b). Justness in weighing rights or legitimate interests and determining bad faith is particularly important for a jurisprudence that authorizes the arbitrator to order a domain name forfeited to the complaining party. Unpredictability and inconsistency do not encourage confidence of fairness. ICANN panelists early recognized that UDRP should not be a roulette wheel; that they should aim for a high degree of consistency (which is the basis for predictability).

The goal is achieved through “a strong body of precedent” which “is strongly persuasive” even if not binding, Pantaloon Retail India Limited v. RareNames, WebReg, D2010-0587 (WIPO June 21, 2010). For claims within the Policy's jurisdiction Panels have emphasized that decisions “should consist of more than, ‘It depends [on] what panelist you draw’,” Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001) (<lifemagazine.com>). (Aspirations are not always met!) “Whether [the consensus in holding that a respondent in the domain name business] is justified may be a matter for debate, but in the opinion of the Panel there is a strong body of precedent which, though not binding, is strongly persuasive,” Pantaloon.

The “strong body of precedent” acts as a control. This has been amply illustrated in the ongoing debate over construing the Policy more in favor of the trademark holder where the domain name is being used in bad faith although registered in good faith. It serves to emphasize the self-imposed limitations of the Policy. A judgment under the UDRP is dictated by its own jurisprudence; there must be proof of both registration and use in bad faith; a finding of the latter does not meet the requirements of the former.

In a number of recent cases complainant’s claims were denied (even where there was egregious bad faith use) which in a trademark forum would likely have (and in some actions has) yielded a different result. In PAA Laboratories GmbH v. Printing Arts America, D2004-0338 (WIPO July 13, 2004) the Panel elected reluctantly to follow precedent, but noted his reservations about the “traditional approach.” In making his finding

Panelists concur that “refreshing” is not equivalent to a new registration. But, transfer is. Hence, under the UDRP (but not the ACPA) egregious bad faith use is not actionable.

Economic benefit or commercial gain is fundamental to all the examples of bad faith but paragraph 4(b)(iv) of the Policy is different from the other three in that it focuses more generally on the use to which the domain name is put. The other three include the phrase “you have registered” whereas 4(b)(iv) begins with “by using.” The key elements are that the respondent has 1) “intentionally attempted to attract,” for 2) “commercial gain” by 3) directing the Internet user to an on-line location and thus 4) “creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [that on-line] location, or of a product or service [at that] web site or location.” “[U]sing a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner,” Zions Bancorporation v. Randall Comstock, D2010-1095 (WIPO September 8, 2010) (<zionmortgageline.com>).

Proof of actual confusion is not a required element, SAP AG v. UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (unisap.com>). The Panel makes an assessment of “the objective likelihood of confusion,” Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO January15, 2001). It is not bad faith to register a domain name for the purpose of attracting Internet users for commercial gain. Proscribed, rather, is registering the domain name with the intention of taking advantage of the reputation of complainant’s mark. The respondent does not assist its case by diverting Internet users to a non-confusing destination. The respondent infringes the holder’s rights and violates the Policy when it operates a website “intentionally ... to attract” Internet users diverted by the complainant.

“Commercial gain” has been construed to mean any use of a domain name by the respondent or its agent that produces an income or equivalent value, presently if active or in the future if inactive. It is broadly defined to include not only gain by the respondent but others in the chain of income from the website. Paragraph 4(b)(iv) “does not require the owner of the domain name to be the entity that commercially gains from any diversion. It is simply a requirement that it is intended that somebody does,” Associated Professional Sleep Societies v. l.c./Li Chow, D2007-0695 (WIPO July 11, 2007).

The element, “likelihood of confusion” – meaning consumer confusion as to the source of goods or services – is a concept familiar from trademark disputes under the Lanham Act, but it is has a narrower application under UDRP jurisprudence. The likelihood that confusion will ensue increases in proportion to the strength of the trademark, but holders of weaker trademarks are no less protected if the evidence establishes the quartet of factors. It is simply that a trademark measured in market strength has a wider zone of protection, making the infringement more obvious. The weaker the trademark the more proof to persuade the Panel of the violation.

In the case of Zions Bancorporation the Panel found “compelling circumstantial evidence that Respondent likely knew of Complainant’s Marks when it registered the Disputed Domain Name. In fact, Complainant offers evidence that Respondent admitted a connection between his website and the Complainant’s Marks by stating that it placed a link on his website as a courtesy to Complainant’s customers.” Nevertheless, and the Respondent’s good intentions notwithstanding, “by placing advertisements on [its] website for competitors of Complainant in order to solicit business that is directly competitive to the services provided by Complainant, Respondent is using the Disputed Domain Name to disrupt the business of Complainant” which is evidence of use in bad faith.

To state a defense under paragraph 4(c)(ii) of the Policy the respondent has to be “commonly known” by the domain name. The Panel in Bernard Janes v. L.J. Bubenicek & A. J. Main, A&L Technologies, DAU2010-0014 (WIPO September 6, 2010) “does not consider that a respondent could succeed under paragraph 4(a)(ii) of the Policy regardless of the circumstances in which it might have become commonly known by a disputed domain name that it has registered with an intent to appropriate another’s trademark.” Not simply acquisition of the domain name but there must be a more tangible submission to establish that one is “commonly known.” It “is one thing to be known, another to be commonly known,” Id. The Respondent in Bernard Janes suggested

While “the Respondent’s website may suggest that the Respondent is at least known by the disputed domain name ... [that] does not ... provide substantial evidence that it has been ‘commonly known’ by the disputed domain name.” The evidentiary requirement is only satisfied on proof “that Respondents had rights prior to and not merely following from the use of the Domain Names”.

The Policy does not specify when respondent was known by the domain name but the full phrase, “[you] have been commonly known by” suggests that it must have been from a time that preceded the registration of the domain name. The term “commonly known” is construed to mean “known” prior to the acquisition of the domain name. If it were otherwise, “a respondent could rely on infringement to establish a right or legitimate interest – an outcome that is clearly contrary to the purpose of the Policy,” Bernard Janes. The “consensus ... is that Respondent must already have been known [by the disputed name] at the time of registration or acquisition of the domain name in issue,” Nobel Learning Communities, Inc. v. Chesterbrookacademy, D2005-0753 (WIPO September 20, 2005) [<chesterbrookacademy.com>]. In Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., D2004-0324 (WIPO June 18, 2004) 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.” The point being that “Respondents have not presented any evidence to demonstrate that they have been commonly known as ETS.”

In an attempt to overcome the disability of proof, a respondent’s convenient fallback position is that it is using the domain name “in conjunction with a ‘bona fide’ business and before they received notice from Complainant,” Educational Testing Service. However, “[n]ot all use prior to notice of the dispute qualifies as a bona fide use.” A business may be lawful, but its use of the domain name mala fides. Replacing inkjet cartridges, for example, is lawful but the “use of these ... disputed domain names as the initial contact points and web page banners deprives that business of the character of being bona fide, ” Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, D2000-0878 (WIPO September 21, 2000) (<canonink.com>, <canoninkjet.net>. If legality of business were the standard, then “any cybersquatter that conducted a lawful business could always find refuge,” The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., D2005-1318 (WIPO February 22, 2006).

Of the four examples of bad faith paragraph 4(b)(ii) of the Policy has reference to multiple instances in the present and the past. The Policy is violated if the respondent “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 [it has] ... engaged in a pattern of such conduct” (emphasis added). It applies to respondents currently infringing a single owner’s rights with multiple registrations at one time or having a history of multiple registrations involving a diversity of trademarks over a period of time. It is more likely to involve domain names confusingly similar than identical to the trademark. If confusingly similar the domain names are likely to be either SLDs identical to the dominant term in the trademark plus generic terms or typographical errors. Given the variety of lexical arrangements and extensions the complainant is unlikely to be prevented from “reflecting [its] mark in a corresponding domain name.” It is equally unlikely to covet typographical variations except to bring to an end the infringing conduct.

Paragraph 4(b)(ii) applies in any circumstance in which either the domain name incorporates the trademark joined with a generic term (SLD+term of Term+SLD) and describes the complainant’s business, United Services Automobile Association v. Top Business Names / Domain Administrator, FA1008001338416 (Nat. Arb. Forum September 16, 2010) (<usaaautoloan.com>) or the complainant seeks to shut down typosquatting domain names trolling for its Internet users, Morgan Stanley v. Purple Bucquet / Purple, FA1007001336613 (Nat. Arb. Forum September 6, 2010) (<marganstanley.com>). It is likely that a finding of “pattern of conduct” (in the present) also implicates paragraph 4(b)(iv) of the Policy (past as well as present attempts for commercial gain at the complainant’s expense). For example, Respondent Purple Bucquet has a perfect record of losing 11 proceedings, for the most part involving one domain name as with <marganstanley.com>, although it has also registered domain names with the dominant element of the trademark (< autosaol.com>, <televisionaol.com> and <aolsongs.com>).

Since complainants are seeking to shut down infringing websites, paragraph 4(b)(ii) cannot mean literally what it says. For example, it is not the Complainant’s intention in Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) any more than in Morgan Stanley to be known on the Internet as AYHOOO or MARGON STANLEY. Bad faith is then reinforced by the additional fact that the Respondent redirect Internet users to third-party websites that directly compete with Complainants’ businesses. However, “a pattern of abusive conduct under the Policy can only succeed if the Panel is satisfied that when registering the Domain Name the Respondent was targeting the Complainant,” eSnipe, Inc. Modern Empire Internet, Ltd., D2009-0719 (WIPO August 5, 2009). The fact that a serial respondent may have successfully defended itself against one or more complaints in earlier proceedings does not make its conduct less a pattern in the current case if the disputed domain name is identical or confusingly similar to the complainant’s trademark and the respondent has no right or interest in it, Société BIC v. Domain Deluxe, D2005-0369 (WIPO June 2, 2005). “Each case must be examined on its merits,” Intesa Sanpaolo S.p.A. v. RareNames, WebReg, D2007-0671 (WIPO July 30. 2007).

Ordinarily, “the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity,” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.2; A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, D2001-0900 (WIPO September 19, 2001). The Panel in RapidShare AG and Christian Schmid v. majeed randi, D2010-1089 (WIPO September 2, 2010) suggests that there may be cases (and RapidShare is one of them) that justify examining the website to resolve uncertainty on the issue of confusing similarity.

The question is whether <rapidpiracy.com> is confusingly similar to RAPID SHARE. The Panel found that it is, but not on a straight comparison. The Panel needed help from the website

Assessment of “confusing similarity” has been held to be governed by an objective standard rather than the Respondent’s subjective intent. Nevertheless (and necessarily is the rarest of cases), “that does not mean that in an appropriate case evidence of what a Respondent’s subjectively intended cannot be evidence of how the mark is objectively understood.”

The objective standard is quite simple. “Rather than performing a detailed analysis of the totality of the circumstances in the relevant markets, a trier of fact need merely perform a lexical or alphabetic comparison of the domain name and the trademark in question,” Smoky Mountain Knife Works v. Carpenter, AF-230ab (eResolution July 3, 2000). The Policy is not focused on the narrow question of “whether the domain name causes confusion as to source,” Wal-Mart Stores, Inc., D2000-0662 (WIPO September 19, 2000).

The Panel in RapidShare was clearly uncomfortable with finding that the domain name was not confusingly similar to the trademark because on examining the website it appeared to him that the Respondent had registered and was using the domain name in bad faith. I noted in prior posts that the term abusive registration subsumes abusive conduct. The Panel’s decision to look at the website to justify his finding of confusing similarity cuts across the grain. It bears relation to the post hoc ergo propter hoc fallacy that prior panelists have consistentlly rejected as the proper standard under UDRP, the low bar for jurisdiction notwithstanding. Compare RapidShare AG and Christian Schmid v. Protected Domain Services Customer ID: NCR-785723/ n/a Sergey Vlasov, D2010-1106 (WIPO August 27, 2010) (<rapid4me.com>; “There is ... no evidence that the Complainant’s brand or the Complainant are commonly abbreviated or known by the name 'Rapid'. The Panel cannot therefore disregard the 'share' element of the trademark for the purposes of this comparison.”)

Further on the subject of scope discussed in Yesterday’s Note. The UDRP appears clear in its scope, that it is intended “only for the relatively narrow class of cases of ‘abusive registrations’,” ICANN Second Staff Report, Paragraph 4.1(c), dated October 24, 1999, but in practice its boundary is less than sharp in delineating the included from the excluded even while it remains narrow. The principal reason for this is that the term “ abusive registration” (as a substitute for cybersquatting) subsumes more generally abusive conduct so that claims that are factually mixed with breaches of contract and fiduciary duty, tort claims and statutory infringement are not automatically ineligible for adjudication under the UDRP. In Westdev Limited v. Private Data, D2007-1903 (WIPO February 2, 2008), for example, the Panel found that the Respondent had “abusive intent.” The same could be said for the Respondent in Arma Partners LLP v. Me, Victor Basta, D2009-0894 (WIPO August 26, 2009) referred to in yesterday’s Note.

In early decisions, dissenting panelists in three-member Panels reacted with agitation when (as they perceived it) they saw colleagues improperly enlarging the scope of the Policy. For example, the dissenting panelist in one case stated that the majority has “decided to treat the UDRP as a kind of eminent domain which gives important trademark holders the right to take others’ property regardless of whether registrants have actually contravened the Policy,” Ha’aretz Daily Newspaper Ltd. V. United Websites, Ltd, D2002-0272 (WIPO August 21, 2002). This admonition is certainly applicable to Monsterops, LLC v. Testosterone LLIC, FA1007001333475 (Nat Arb. Forum September 8, 2010) discussed in the September 20 Note.

On the other hand, where the parties “have submitted materials sufficient for [the Panel] to form a clear opinion of what transpired between [them] and how the UDRP could in fact decide where to place the disputed domain names” there is no reason to dismiss the complaint, Bell Helmets, Inc. v. 4X Development, FA0602000651064 (Nat. Arb. Forum April 11, 2006) (Respondent appeared and prevailed). One consequence of a maturing jurisprudence is a greater flexibility in deciding cases on their merits. Thus,“some disputes routinely and oftentimes of necessity require ICANN panels to consider broad ancillary legal principles and issues that lie outside the sharp confines of the Policy,” Rudy Rojas v. Gary Davis, D2004-1081 (WIPO April 18, 2005) (<nativestyles.net>). Although in this case the Panel found that both “parties are using [the] Policy proceeding to gain a tactical or psychological advantage in a broader business dispute between them” and for that reason concluded that the case lay “outside the Panel’s core jurisdiction.”

Willingness to “consider broad ancillary legal principles and issues” is illustrated in a number of cases, many of them involving employees, agents and designers. For example, in Map Supply, Inc. v. On-line Colour Graphics, FA 96332 (Nat. Arb. Forum February 6, 2001) the Respondent argued that as a web designer it had a legitimate interest in the domain name as security for its unpaid services. The Panel concluded that it could review the record and decide the case involving a contractual component. It fell within the scope of the Policy for the reason that “to re-register a domain name without any authority from the [Complainant] in order to gain a bargaining position over [it] - with whom it had no legitimate dispute - is unconscionable.”

UDRP complaints are mostly against strangers accused of appropriating for commercial gain disputed domain names which they registered after the complainant’s accrued rights in the trademark. However, complaints have also been filed against former business Associates in which are raised legal issues on the cusp of the Policy’s scope. The easy decision is to dismiss such complaints as being outside the Policy’s scope. Early cases, in fact, attempted to draw the line on what constituted cybersquatting, The Thread.com, LLC v. Jeffrey S. Poploff, D2000-1470 (WIPO January 5, 2001), and later cases have made short shrift in dismissing complaints as outside the scope that crossed the line to contract and fiduciary breaches, Fuze Beverage, LLC v. CGEYE, Inc. c/o Thomas Siedleczka, FA0611000844252 (Nat. Arb. Forum January 2, 2007).

Cases on the cusp, however, have to be examined carefully. The reasoning has not remained static. The Panel in The Thread.com, for example, held that the UDRP was not the proper forum 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.” He continued, “[t]he only arguable reason that Complainant is seeking relief in this forum is that the property at issue is a domain name.” Nevertheless, he also made it clear in dicta – uttering a moral rather than a legal judgment – that “it strains credibility for Respondent to argue that he is holding the Domain Name for any purpose other than as ‘leverage’ in his negotiations with Complainant.”

However, the Panel in Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., D2003-0185 (WIPO May 22, 2002) (that included as the presiding panelist the same panelist who decided The Thread) went a step further. It noted that “[j]ust as cybersquatting can occur between strangers, so can it occur between business partners.” In Bootie, the identical or confusingly similar domain names were ordered transferred to the Complainant. The Respondent in its registration application identified the Complainant as registrant; herself as contact.

In Arma Partners LLP v. Me, Victor Basta, D2009-0894 (WIPO August 26, 2009) a former partner refused to relinquish the domain names even though he had deeded them to the partnership at its formation. The Panel looked past the contract issue; the Respondent had no right or legitimate interest in the domain name and its continued retention of it constituted an abusive registration. The “Respondent as a Member of the Complainant agreed to devolution of that ownership to the Complainant.” This was tantamount to admitting that in registering the domain name the Respondent was acting on behalf of the Complainant as a constructive trustee. Respondents in Center for the Study of Psychiatry and Allcaneat successfully rebutted allegations of bad faith.

Inactivity of a Domain Name Registered Many Years Prior to Accrual of Trademark Is Not Grounds for Finding Registration in Bad Faith

It is undoubtedly true that a respondent who holds inactive for many years a domain name identical to a trademark and is unresponsive to a Rule 12 Procedural Order to dislcose its use will fall short of rebutting a complainant’s allegation that it lacks rights or legitimate interests in the disputed domain name. However, a complainant does not prevail on proving 2/3rds of the Policy requirements. It also has to prove that the domain name was registered in bad faith. While there are factual circumstances under which a passively held domain name can support a finding of bad faith registration, it is not for a dictionary word. The analysis of passive use is traceable to Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). Even assuming that a disputed domain name were identical to a so-so known trademark and registered after the complainant’s acquisition of it, if it is possible “to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate” then it should be left with the respondent. The trademark in Telstra is not a dictionary word and was well known.

However, a domain name registered prior to the existence of a complainant’s business is not generally vulnerable to forfeiture, so that when forfeiture is ordered it is noteworthy. Forfeiture was ordered in Monsterops, LLC v. Testosterone LLIC, FA1007001333475 (Nat Arb. Forum September 8, 2010) and the question is, Why? The Panel clearly prided himself on his analysis of paragraph 4(b) of the Policy – “therefore, due to the study made by this Panel” – but the analysis is so utterly wrong-headed, ill reasoned and contrary to law that but for the WIPO imprimatur it could be taken for a parody.

It is useful at the beginning of this counter analysis to get a firm grasp of the facts, then proceed to a proper conclusion. The Respondent registered <testosterone.com> in 1995 and has held it inactive since that date. The Complainant filed an application for TESTOSTERONE in 1997 as an intent to use trademark. A certificate of registration was granted in 2004. There is no evidence that the Respondent who apparently resides in New York had any foreknowledge of the Complainant who apparently resides in Colorado. It might be noted that Complainant’s predecessor who made the 1(b) trademark application to the USPTO also resided in Colorado. Since an intent to use application is an admission that there are no goods or services currently marketed to which the trademark can attach it stands to reason that the Complainant’s right could not have preceded the Respondent’s.

There is no principle of law that allows a complainant whose trademark mark post-dates the registration of a domain name to acquire a domain name by forfeiture. Neither inactivity of a domain name registered prior to the acquisition of a trademark nor the respondent’s failure to come forward with evidence of a right or legitimate interest to it are grounds for taking from the respondent and giving to the complainant. Bad faith use can be found if the domain name is used in violation of the Policy at any time after registration. However, bad faith registration is different; it is an intentional act that precedes use and must be found to have taken place at a particular moment in past time.

The Panel in Monsterops erred in conflatings paragraphs 4(a)(ii) with 4(a)(iii). He took as a given that the failure to prove a right or legitimate interest supports an inference of bad faith registration. It may be true that the Complainant presented sufficient evidence to prove that it “is identifiable in the market by its distinctive sign,” but (and this is the point that has to be made) it was not so identifiable when the domain name was registered. The Panel stated “[t]his circumstance [the distinctive sign] when analyzed, especially with Respondent’s failure to prove that he has a legal interest in the domain, is enough to conclude that the Respondent had registered and used the domain in bad faith according to the Policy.”

The Panel's legal conclusion has no basis in UDRP jurisprudence absent facts from which an inference could be drawn that the registration was abusive. Unless there are facts not apparent from the record the Panel discloses, such as the Respondent having acquired the domain name from a predecessor after the registration of the trademark, the Respondent should be gnashing his teeth at this injustice of having its domain name forfeited.

Rare Though a Word May Be If It Is Recorded in a Dictionary It Is Available For Non Trademark Use

Hershey manufactures a “candy twist” under the trademark TWIZZLERS. The word “twizzler” does not appear in standard desk dictionaries; it is not to be found in Merriam Webster’s Third International Dictionary. It is found in the Oxford English Dictionary where its first use is recorded as 1825. It appears to have entered the vocabulary as dialect word meaning “a twist or turn; a change of direction” (as in “there may be so many turns and twizzles”). A “twizzle” appears to be an industrial part in a spinning machine. In its verb form it means “to rotate rapidly, spin, twirl.” The candy that goes by the name “twizzlers” consists of lengths of licorice twisted around each other. One supposes that a “twizzler” is someone who enjoys “twizzles” or “twizzling.”

The disputed domain name in Hershey Chocolate & confectionery Corporation v. Raymond Mah, D2010-1151 (WIPO August 31, 2010) is <twizzler.com>. The Complainant argues that it is confusingly similar to its trademark. The Respondent argues that he registered the domain name to use in his development of a brain game. He uses the word figuratively to suggest a “brain teaser, logic puzzle or other similar style of game.”

It does not matter that a word is rare or obscure. The question is how and for what purpose the respondent is using it. Where use is unrelated to the goods or services offered by the complainant the registration is not abusive. The Panel found that “the Respondent has demonstrated his intention to use the disputed domain name for an Internet based puzzle or game website.” However, as with Shakespeare Company LLC v. Bob Pflueger, D2010-1126 (August 19, 2010) hyperlinks appeared on the website that Hershey argued supported a claim for bad faith use under paragraph 4(b)(iv) of the Policy (using the domain name for “commercial gain”).

If the purpose for the registration satisfies the 4(c)(i) defense then the offending hyperlinks are inconsequential. Since “the for-profit use made of the disputed domain name was clearly neither intended nor authorized by the Respondent [and since upon his being put] ‘on notice’ of such use [and] took effective steps to ensure cesser of that use” it is not evidence of bad faith. “Indeed, had the Complainant made contact with the Respondent before initiating the Complaint in this administrative proceeding, the Panel considers it highly unlikely that the Complainant would have proceeded with it provided the Respondent agreed to take the action (which he, in fact, did) to have the unauthorized website taken down.”

Redirecting Internet visitors with hyperlinks is some evidence of bad faith, but the continuum extends from innocent to offensive acts. It is not a per se violation to have placed a hyperlink on a website resolving from a disputed domain name. Panelists draw a calibrated distinction between respondents motivated to take advantage of the reputation of a complainant’s trademark and those not so motivated. The consensus holds that a respondent is responsible for hyperlinks to websites offering goods or services competitive to complainant. However, the trespass is weighed against proof of the respondent’s motivation in registering the domain name and his explanation for the existence of the links. Advertent linking is condemned under the Policy. In Shakespeare Company the linking appears to have been inadvertent. In Hershey, the links were removed immediately upon notice. In neither case was there evidence that the Respondents targeted the Complainants or registered the domain names for their trademark values.

Complainants whose trademarks are composed of surnames relatively rare in their marketplace but held by a respondent bearing that name do not have a superior right to the disputed domain name whatever their pedigree may be. The well established rule is that “[t]rademark owners shall not be allowed to use the Policy to dispossess summarily a third party of a domain name reflecting his or her surname,” G.A. Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO July 20, 2001). It is not cybersquatting for a respondent to register a domain name identical or confusingly similar to a trademark that he has a right to maintain. Paragraph 4(c)(ii) of the Policy provides that the respondent is entitled to the domain name if “before any notice to you of the dispute [you have used or have made] 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.” The Complainant’s predecessor in Shakespeare Company LLC v. Bob Pflueger, D2010-1126 (August 19, 2010) registered PFLUEGER in 1908. The company’s pedigree dates back to 1881

Respondent Pflueger registered <pflueger.com> in 1996. His proof of personal and family use was persuasive. However, at one point in time his website contained a hyperlink to a competitor of the Complainant. Hyperlinks to competitors are some evidence against respondent’s good faith, but rebuttable. The question is whether the motivation is to take advantage of the trademark. In Shakespeare Company the Respondent made a clear disclaimer of any relationship with Complainant. He explained that he thought he had the correct hyperlink to the Complainant’s website. Whatever the reason for the hyperlink – and to the Panel it “is not entirely clear ... what Respondent had in mind by using the text box with the ‘CLICK HERE’ link ... the Panel is not convinced it was to obtain click-through fees.”

One Blogger has interpreted the Panel’s decision as “re-defin[ing] the time period as to when, exactly, the name infringement must have occurred.” He continues, “[t]he ruling now establishes that infringement needed to have occurred during the period when the case was filed and that simply proving past infringement (via archive.org) does not suffice.” This reading is not correct.

When use is found to have been in bad faith “at any time” (with emphasis on “found to have been”) after the registration of the domain name the inference is that it was registered for that purpose and therefore the registration was in bad faith. In Shakespeare Company, the Respondent was not found to have registered the domain name in bad faith although it was unclear whether at some point in time he could have been accused of using the domain name in bad faith. In Howard B. Stevens, Inc., dba PC Professor v. The PC Professor, D2001-1282 (WIPO December 21, 2001) the issue revolved around the construction of paragraph 4(c)(i) of the Policy. The was found to have registered the domain name in good faith.

However, in dicta the Panel stated that “If at any time following the registration the name is used in bad faith, the fact of bad faith use is established. Otherwise a party could stop and start such uses in order to avoid a finding and a transfer or cancellation of the party’s registration.” This construction of paragraph 4(c)(i) of the Policy has not been challenged in later cases. Shakespeare Company as noted above concerns application of paragraph 4(c)(ii) of the Policy.

A finding of bad faith use is only one half of abusive registration, regardless of its egregiousness. While renewal of a metamorphosed domain is not a new act of registration (the date from which bad faith is measured) a transferee inherits its transferor’s bad faith use and (with some exceptions) will be deprived of the domain name. There have been recent attempts to promote a new construction for abusive registration – to unify or disjoin the two elements of bad faith – but the consensus remains that abusive registration requires bad faith in the conjunctive. Nevertheless, the dialogue among panelists stubbornly continues. The latest entry is dueling views A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., D2010-0800 (WIPO August 31, 2010).

Although the majority in A. Nattermann & Cie was unpersuaded by the dissent’s analysis there is precedent for the proposition that

The theory underlying this precedent is that a right or legitimate interest created by contract “clearly cannot last forever,” International E-Z UP, Inc. v. PNH Enterprises, Inc., FA0609000808341 (Nat. Arb. Forum November 15, 2006). Analysis of rights post-termination is traceable to UVA Solar GmbH & Co K.G .v. Mads Kragh, D2001-0373 (WIPO May 7, 2001). In that case the Panel held that a “registration of a domain name can lose its bona fides if the registrant subsequently breaches one of the terms upon which he was authorized to register it.” Thus, while it is possible for a complainant to succeed under paragraph 4(a)(ii) the existence of an express provision under the UVA Solar line of cases is generally fatal to the respondent’s good faith under paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

Decisions that go the other way stand for a related but opposite proposition, namely that a respondent’s good faith registration may survive expiration where the contract is silent on the post-termination use of the domain name. Cases on this issue include The Prudential Insurance Company and Urbani Tartufi s.n.c. v. Urbani U.S.A., D2003-0090 (WIPO April 7, 2003) (<urbani.com>) and Sheri Jones, FA0510000584625 (Nat. Arb. Forum December 19, 2005) (<prudentialmontana>). If the respondent registered the domain name pursuant to agreement without the complainant expressly reserving rights for its return at the expiration of the contract, then the respondent’s continued use after termination of its business relationship is arguably legitimate for the reason that the registration was in good faith.

The majority in A. Nattermann & Cie essentially adopted the Prudential Insurance view in light of the contract’s silence on the domain name. However, as the dissent pointedly noted the contract was not silent on the trademark. It read “[Complainant] hereby grants to [Respondent] during the term of this Agreement and subject to the terms and conditions hereof, the exclusive right to use the Trademark in [Respondent’s] territory.” Where the factual circumstances align with Prudential Insurance the UDRP is not a proper vehicle for the sought after remedy. For that, the complainant must bring its claim as a civil action under trademark law.

Yesterday’s Note discussed dictionary words, “rapid,” “national” (misspelled “natonal”) and “noble.” Generally, a single word identical or similar to one of two or more terms in a trademark does not support confusingly similarity. It is different against single word trademarks such as “apple,” “orange” and “blackberry,” but even in those circumstances merchants purveying fruits could – at least conceivably although unlikely – have a right or legitimate interest in a domain name using those words. Holders of lexical expressions common to a community of speakers that have passed the formalities for trademark registration, and thereby eligible to maintain a UDRP proceedings, cannot prevent legitimate use by others.

The more common, generic or descriptive the combination the more evidence complainant must offer to prevail. The Panel has to be satisfied “that when registering the Domain Name the Respondent was targeting the Complainant,” eSnipe, Inc. Modern Empire Internet, Ltd., D2009-0719 (WIPO August 5, 2009) (SNIPEIT and ESNIPE [“snipe” and “it”] registered as trademarks later than <snipeit.com>; Complainant alleged anterior common law use through its domain name <esnipe.com> which preceded registration of the disputed domain name).

It is “possible ... to establish trademark rights in descriptive terms ... but it is incumbent upon the Complainant to produce good solid evidence to support the claim of those rights,” Tellus B.V. v. Mr. Oren Nehoray, D2010-1115 (WIPO August 24, 2010). In Tellus, the Complainant demanded transfer of <intlmovers.org>; in American Independence Funds Trust and Intrust Financial Corporation v. NestEgg Advisors, Inc., FA1007001333697 (Nat. Arb. Forum September 2, 2010) the Complainant demanded <nesteggadvisors.net>. The contraction “intl” for “international” and its joinder with “movers” is as or more likely to be seen as a description of services rather than a trademark. Similarly, “nest” and “egg” which combined is a metaphor descriptive of personal savings.

In the case of <intlmovers.org> the “Respondent does not deny that he was aware of the existence of the Complainant and its website.” However, when the Respondent registered the domain name the Complainant had no trademark in any country; and, in the United States it had abandoned its application in “the face of ... a preliminary refusal of the application on the ground that the mark was descriptive.” The Panel noted (I paraphrase and add my own language in brackets rather than quote)

This is not an invitation for exploitation by competitors. The Complainant in Tellus was foiled by the timing of the respective registrations. If there were proof “that the Respondent’s motives at time of registration of the Domain Name were mala fide and actuated by a desire to exploit the Complainant’s trade mark right to his own advantage and/or thereby cause damage to the Complainant” the registration would have been abusive. But, “the Policy does not seek to regulate registration and use of purely descriptive terms.”

This is even more emphasized where, as in American Independence Funds Trust, the Panel rejected complainant’s allegation of standing because the domain name [<nesteggadvisors.net>] is neither identical nor confusingly similar to the trademark [NEST EGG FUND or NEST EGG CONSULTING]. However, even assuming that the domain name were confusingly similar, the Panel took the time (unnecessarily in view of his finding on the standing issue) to analyze whether the Respondent had a right or legitimate interest in the domain name AND did not register it in bad faith. Respondent prevailed because the domain name describes his business and he is commonly known by that name.

Attempting to Extend Monopoly to More than Granted by Statute or Acquired by Common Law

RapidShare AG is busy policing its trademark, RAPID SHARE; thirty five proceedings in the past four months. In its most recent filing it argues that it is entitled to <rapid.org> because the domain name “incorporate[s] the Complainants’ marks with the ‘share’ element removed and leaving the ‘dominant element’ ‘Rapid’,” RapidShare AG and Christian Schmid v. Ilya, Ilya Efimov, D2010-1105 (WIPO August 17, 2010). If this were a viable theory a trademark holder would monopolize a dictionary word. Almost, but not quite. Complainants’ trademark rights extend to term granted, and no more. “As is apparent from the list [of cases], all but two of those ... involved domain names that in one way or another incorporated the term ‘rapidshare’.” The two other cases involved <rapidbay.net> (complaint denied) and <rapidpiracy.com> (complaint granted).

A domain name is identical to the trademark when it is the same as the SLD. It is confusingly similar to the trademark when it varies it in some indistinctive way. On a side by side comparison of trademark and domain name it is appropriate to find confusing similarity where the domain name is identical to the dominant term of the trademark, but it does not extend the monopoly to dictionary words. There are numerous recent cases, but for illustration see Vanguard Trademark Holdings USA LLC v. Private Registration (B3), FA1007001334659 (Nat. Arb. Forum September 9, 2010) (<natonal.com>, misspelling “national” where the Complainant owns NATIONAL CAR RENTAL. The Complainant in RapidShare proposed an unacceptable extension of this principle, namely that a domain name can be found confusingly similar if it is identical to the “dominant” dictionary term in the trademark. But, as joined with “share” “rapid” cannot be said to be the dominant term. Rather, the terms are wedded. The Panel explains as follows:

The considerations pointing against a finding of confusingly similarity are as follows. First, ‘rapid’ is common word in the English language, and the Panel has little doubt that it must be used in thousands of business names around the world, none of which have any connection with the Complainants. It is an obvious descriptor to use for any business operator who wishes to convey the impression that it provides a fast, or ‘express’, service. On its own, the word does not convey the idea of anything being shared and of course it is the concept of sharing (in particular the sharing of computer files) which is both at the core of RapidShare’s business and the principal idea conveyed by RapidShare’s mark.

Domain names whole or in part similar to a trademark only become confusing when they confuse the “objective bystander” as the concurring in part Panel stated in Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010). As “noble” is not owned by Barnes & Noble, Barnesandnoble.com, LLC v. Rosenblum, FA 1089020 (Nat. Arb. Forum November 15, 2007), “rapid” is not owned by RapidShare. “Where a complainant’s mark consists of a combination of two common descriptive or generic words, and only one of those words has been used in the disputed domain name, satisfying the requirements of Paragraph 4(a)(i) can be a formidable task. So it has proved in this case.”

The result was otherwise in the <rapidpiracy.com> case because the Panel (the same as in <rapid.org>) was persuaded that the “no less than three direct references to the Complainants in the first few lines of the webpage ... [made it] clear [to him] that the Respondent is seeking to associate himself with the Complainants’ services.” On that finding, the Panel hung his conclusion that “there is nothing before the Panel that would suggest that it cannot infer from that recent use the Respondent’s intent at the time of registration.”

When dictionary words are misspelled in a domain name the inference is persuasive that the respondent had actual knowledge of the trademark targeted. “Naughty” is in the lexicon but “natchty”, “nauhhty” and “nnaughty” are not. The trademark is NAUGHTY AMERICA. The other misspellings are “ameriaca”, “amerixa”, and “ameroca.” All of these variations in spelling clearly have the Complainant in mind. La Touraine, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master, D2010-1118 (WIPO August 16, 2010). “The fact that the Respondent has registered no less than 9 domain names almost identical to the Complainant’s trademark is a clear indication of the Respondent’s knowledge of the Complainant’s trademark rights.” Four of the domain names are offered for sale.

Respondent’s default in the proceeding coupled with Complainant's satisfaction of its prima facie case is conclusive that Respondent has no right or legitimate interest in the domain name. It “has used the domain names for websites that are in connection with pay-per-click ... landing pages providing links to third-party websites offering, inter alia, adult entertainment in competition with the Complainant.” While PPC is not per se inimical to rights or legitimate interests in a domain name it cannot rebut proof of mala fides use, which may be the reason for the Respondent’s non-appearance in La Touraine.

However, assessment of bad faith builds on the finding in paragraph 4(a)(ii) of the Policy. Lack of rights or legitimate interests is only evidence rather than being conclusive of bad faith. Nevertheless, a misspelling is a flashing signal that the Respondent intended the Complainant’s trademark as its target. Intent is bolstered by the Respondent's further acts. This includes, as the Complainant argued and the Panel agreed, the fact that the Respondent is currently attempting to auction four of the disputed domain names to the highest bidder. This further demonstrates the Respondent’s bad faith registration and use of the disputed domain names. Offering domains for auction is a violation of paragraph 4(b)(i); harvesting income from traffic is a violation of paragraph 4(b)(iv) of the Policy. As a recidivist typosquatter the Respondent is also engaged in a pattern of bad faith registration and use under paragraph 4(b)(ii).

As a footnote, a respondent is not to be charged for bad faith by using a privacy service to conceal its identity, unless “such use is connected with the registration and use of infringing domain names, such as in [La Touraine].”

Unless there is “intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common generic term,” Ultrafem Inc. v. Royal, FA 97682 (Nat. Arb. Forum Aug. 2, 2001) (<instead.com>). There have been a number of recent examples, “streetwise”, “pantaloons”, “fender” and “crediteurope” to give only a few in the last month or two. Either because respondents affirmatively defend their right or legitimate interest or the web sites are unyielding to any inference of targeting the complaints must be denied.

The Complainant in Juniper Networks, Inc. v. Kenneth Crossman, DTV2010-0010 (WIPO August 22, 2010) alleged that it had a trademark in “Juniper” – which troubled the Panel because the USPTO database showed only that it was pending – but since it was the holder of JUNIPER NETWORKS and “juniper” is the dominant term in the trademark <juniper.tv> was confusingly similar. However, “juniper” is a dictionary word and dictionary words used in their ordinary sense and “registered because of their attraction as dictionary words, and not because of their value as trademarks” do not contravene the Policy,” The Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum August 6, 2004) (LANDMARKS and <landmarks.com>).

The burden of proving protection for a generic term is significantly higher for complainants well known in their niche who not known out of it. One Panel offered ‘apple’ as an example, Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO January. 21, 2003). Should the word “apple” be used in <apple.com> with respect to a web site offering fruit, namely apples, the registrant may have a legitimate interest in the name. However, “given the reputation of [the ‘apple’ mark] then the intentional registration and use of the misspelled word or words (for example <appple.com>) clearly manifests an intent to capitalize on the mark and constitutes bad faith under the Policy.”

In Juniper the Panel found the Respondent’s denial of knowledge “plausible, since it appears from the record and from a perusal of the Complainant’s website that the advertising and media references to the Complainant’s marks are predominantly in trade publications and industry websites.” Further, “[by] its own account,

One other issue should be noted concerning a transferee’s liability. In Averitt Express, Inc. v. DI S.A. c/o Domain Admin., FA1006001332938 (Nat. Arb. Forum August 23, 2010) the transferee was found not in bad faith even though the transferor would have been. In Juniper the Complainant presented a similar argument, which the Panel rejected because the “parking website formerly associated with the Doman Name was not focused on the Complainant’s or competing product.” Finally, “[i]t would be easier to infer such an illicit intention if the Complainant’s mark were not comprised of dictionary words” and it had demonstrated “that its mark is famous in a broad consuer market [and] otherwise likely to come to the attention of the Respondent.” In the absence of such evidence “the Panel cannot conclude that the Respondent is prevaricating [or] ... intend[ing] to mislead internet users by a false implication of association with the Complainant.”

Application of laches for sleeping on one's rights would bar the complainant's claim even though the respondent's registration was and its use is in bad faith. But, this is too draconian. If the defense is warranted at all it must be limited to the right circumstances. In an essay published in July 2010 in the on-line magazine Managing IP as well as in a number of UDRP decisions the Hon. Neil Anthony Brown, Q.C. noted “welcome signs that UDRP panelists are starting to take delay into account ... [even though they] generally [have] not yet been willing to adopt laches as a defence by name.” There is certainly a degree of ambivalence. As an affirmative defense the penalty for waiting too long is already available under paragraph 4(c)(i) of the Policy. However, the laches that Mr. Brown is talking about dwells on historical circumstances shared by the parties. This was the case in Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010) in which he filed a separate decision.

Mere delay by a trademark holder in claiming abusive registration is not a bar to capturing an infringing domain name, although this is not without qualification. Where, for example, the respondent has used (or passively held) the domain name for many years under the radar, Why should the complainant be barred from asserting a claim? While laches is not a good defense against purposeful infringement, inordinate delay falls in a different category. After all, failing to take timely action may indicate that the complainant did not truly believe respondent had engaged in bad faith registration.

In UDRP's beginning, panelists took the view that “there is no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions,” Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO February 1, 2002). In any event, noted the Panel in National Football League v. Alan D. Bachand, Nathalie M. Bachand d/b/a superbowl-rooms.com, D2009-0121 (WIPO April 20, 2009) “Respondent would be ineligible for relief under an equitable doctrine such as laches because of Respondent's own “unclean hands” (another equitable concept).” While “[c]ontinuous use adverse to the interest of Complainant is not a basis from which Respondent can acquire rights in the domain name,” Avaya Inc. v. Holdcom, FA0806001210545 (Nat. Arb. Forum August 9, 2008) (excusable delay), “considerable delay in bringing [a] case does color the merits of [a] dispute,” Board of Trustees of the University of Arkansas v. FanMail.com, LLC., D2009-1139 (WIPO November 2, 2009) (inexcusable delay). Although the Panel in Board of Trustees stopped short of finding that laches applies, the majority uttered a heretofore heretical thought, namely that it was “prepared to acknowledge the possible applicability, in appropriate and limited circumstances, of laches in a case under the Policy.”

Nevertheless, the running of time (and the more it runs) plainly creates a palpable tension. In his essay Mr. Brown cites Ormsby v. Barrett, CV07 5305 (W.D. WA 2008) for the proposition that failure to assert a claim in the face of known trademark infringement can result in a loss of trademark rights under the doctrine of laches. Ormsby transposed to a UDRP claim, however, is no more than finding bona fide use “before any notice of the dispute.” A distinction is warranted between an excusable delay (under the radar) and an inexcusable one. Excusable delay is not a bar to capturing the domain name; the second is. Of the second, there are three types. Type 1 is encapsulated in paragraph 4(c)(i) as an affirmative defense – that is, the respondent prevails because in the interim it has developed an identity as a business based on the mark. Type 2 is a finding under paragraph 4(b)(iv) of the Policy that the complainant is short of proof that there is 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.”

Type 3 is the argument that under certain circumstances laches should be available as a defense. One of the two heretical thinkers in the Board of Trustees case (in fact Mr. Brown himself) emerged again in a minority opinion (writing separately but concurring in the result to deny the complaint) in Charter Communications, Inc. v. CK Ventures Inc. / Charterbusiness.com, D2010-0228 (WIPO June 25, 2010). Mr. Brown observed that “it may be time for a closer examination of that issue and whether it is appropriate to exclude it as a defence in cases where the complainant has waited years before filing a complaint,” citing Board of Trustees of the University of Arkansas in which the 3-member Panel (that included Mr. Brown). He “felt that there is scope for looking again at the assumption that laches has no part to play in UDRP proceedings.” Panelists are clearly prepared to take this step; in fact, some have already done so. Take for example a truly iconic trademark THE ECONOMIST. The Complainant waited over 11 years to commence the proceeding and lost, The Economist Newspaper Limited v. TE Internet Services, D2007-1652 (WIPO February 5, 2008) (<theeconomist.com>) (written by another Q.C., Hon. Sir Ian Barker).

Mr. Brown enlarged on his view again in Open Society. In that case, as the Panel did in Board of Trustees, he emphasizes how having a history can support a laches defense. History puts the matter in a light completely different from a “before any notice” kind of dispute. He concluded that the Respondent’s

Multiple interactions without the Complainant taking action supports a conclusion that it never truly believed that the Respondent's registration was abusive. Otherwise, it would have acted earlier on the timeline. That it did not supports a laches defense.

Win one, lose one. Different Panels; same Complainant, the trademark holder of MOSHI MONSTERS; different Respondents; The word “cheats” is added in both domain names. However, <moshi-cheats.com> used descriptively is ruled legal [Mind Candy Ltd v. Gamers Guides L.L.C, D2010-0995 (WIPO August 12, 2010)]; and, moshimonstercheats.com> used misleadingly infringing [Mind Candy Ltd v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master, D2010-1002 (WIPO August 18, 2010)]. The decisions turn on what the Respondents actually do and the content of their websites.

The “moshi-cheats” Respondent “is in the business of supplying guides to various computer games.” “Cheat” in the context of game learning appears to have lessened its moral failing. To use a “cheat” is not a vice; it is not “cheating” the public; it is offering a tutorial, although like “cheating” (from which it is derived) it is intended to give the player an advantage. Knowledge in games is power. The Respondent explains that “[u]sers are familiar with the difference between the official Moshi Monsters game site and an unofficial guide site and that such sites in no way compete with the game sites but serve to promote and increase the popularity of such games.”

Generally, adding words to a trademark – geographic designations for example – does not create a distinctive name, but an addition that describes a different category of goods or services that is transformative is distinctive in its own right. It rides on the trandmark to convey a different business. This has been discussed before in cases involving nominative fair use. The domain name is confusingly similar to the extent that it incorporates the dominant term of the trademark, but there is no “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” paragraph 4(b)(iv) of the Policy. If the Respondent in Mind Candy <moshi-cheats.com> in fact offers what the domain name promises, then it states a good defense under paragraph 4(c)(i) of the Policy. The Panel found that

The fact that at some earlier point in time the Respondent used the Complainant’s copyright Moshi Monsters images does not change the outcome. “The use of the images may have breached Complainant’s copyright but that, per se, is irrelevant to the question of whether or not Respondent has a right or legitimate interest in the domain name.”

These observations are relevant when turning to the other Mind Candy case involving <moshimonstercheat.com> because the Respondent there did not offer what in the domain name it advertised. It was “cheating” the Complainant as well as the public as we customarily understand the term. Rather than offering a tutorial or “cheat” on the game it was using the domain name “in connection with with a click-through website that provides a sponsored listing page displaying a wide range of websites with links to on-line game resources.” The inference is that the Respondent was “deliberately trad[ing] ed on the goodwill of the Complainant, by attracting Internet users and diverting Internet traffic intended for the Complainant’s website to the Respondent’s website when it adopted and used the <moshimonstercheats.com> domain name.”

Inferences are variously drawn when it comes to passively held domain names. Dictionary words and colloquial combinations are harder to prosecute and easier to defend. The reverse is true with well known trademarks. The onus shifts to the respondent to prove a defense. Failing on the rights or legitimate interests factor is then grist in the bad faith analysis. “Disney” is among the iconic trademarks. The Respondent in Disney Enterprises, Inc. v. ll, FA1007001336979 (Nat. Arb. Forum August 31, 2010) registered <disneyoffer.com> “almost five years” ago. According to the Respondent he “does not sell any Disney products on this site. The site is not built. It is only parked at GoDaddy.com.” However, the domain name resolves to a parking website that (evidently) contains “offending material.”

The Respondent offered three arguments. The first is noted because it displays a complete lack of understanding of the Complainant’s rights. He states

The Panel’s assessment is that “Respondent surely knew of the Complainant’s trademark in DISNEY at the time he registered the disputed domain name and thus his silence regarding the reasons for registering the disputed domain name is telling.” Knowing that the dominant term in the domain name is a well known trademark “suggests that Respondent registered the disputed domain name precisely for its trademark value, rather than in spite of it.” A complementary finding is that in registering the domain name “Respondent acted in bad faith by breaching its service agreement with the registrar.” That is, “Respondent falsely represented that registering the disputed domain name did not infringe on the intellectual property rights of another User or any other person or entity when he knew or should have known that it did.” This also breaches paragraph 2 of the Policy.

Respondent’s second argument recites a false history that the Complainant approached him to purchase the domain name rather than the opposite. There is a line of cases that finds no bad faith where the negotiation is initiated by the complainant, but this does not apply to domain names incorporating well known trademarks. “[A]fter receiving Complainant’s ‘cease and desist’ letter ... Respondent offered to sell the disputed domain name to Complainant for an unspecified amount.” This is evidence of bad faith registration. “Even if Respondent’s offer to sell were not specific as to price, a general offer to sell a disputed domain name to a complainant is nonetheless evidence of bad faith registration and use.”

The third argument is based on the false notion that the respondent bears no responsibility for the content of a website maintained by a hosting company. On the contrary, “[o]ne who registers a famous mark in whole or in part should in effect ‘inspect and make safe’ any website referenced by some domain name to be sure there is no infringement.” When the respondent fails to do so he is accountable for the links that infringe another’s trademark.

Ordinarily, a transferee inherits the bad faith of its transferor and can be dispossessed of the disputed domain name if the use continues unabated. Unopposed, the inference is that the transferee has purchased the domain name for its monetized value. But the result will be different if the transferee proves its intent to use of the domain name for a bona fide offering of goods or services. The Respondent in Averitt Express, Inc. v. DI S.A. c/o Domain Admin., FA1006001332938 (Nat. Arb. Forum August 23, 2010) alleged that it acquired <averitt.com> “because it consists of a short surname, suitable for various purposes, and represents an investment in the Respondent’s portfolio of first and last name domain names.” As a general rule, if the domain name is used as a personalized e-mail service for persons bearing identical names to the trademark and is unadulterated with illegitimate content there can be no actionable claim. Buhl Optical Co v. Mailbank.com, Inc., D2000-1277 (WIPO March 1, 2001) (<buhl.com> and Int'l Raelian Religion & Raelian Religion of France v. Mailbank.com Inc., D2000-1210 (WIPO April 4, 2001) (<rael.com>) are other examples.

What makes Averitt more interesting is that the Complainant pounced on the domain name before the Respondent had an opportunity to redesign the website. The Respondent stated that as a result of the commencement of the administrative proceeding “the disputed domain name was immediately blocked by the Registrar.” Because of this, it was “impossible for the Respondent to implement its plan to use the disputed domain name in conjunction with <lastname.com>.” Further,

The Panel was persuaded on this point. It seems that the transferor “represented to the Respondent that none of the domain names being sold violated any rights.” While it “is difficult to see how this representation could have been made in view of the use of the Complainant’s trademark and references to competitors on the website ... that cannot be held to the account of the Respondent.”

Partly, the Complainant’s problem is that personal names are lower on the scale of protection. This is particularly the case where there is geographic distance between the parties. “In some cases the fact that the Complainant and the Respondent are located in different and distant jurisdictions does not provide a defence to a claim of registration and use in bad faith.” However, “[t]hose cases usually relate to domain names which reflect trademarks which have a worldwide reputation.” This requires the complainant to give more thought to its record. The “Complainant has offered no evidence to show what outreach its services have outside of the United States and, in particular, what, if any, business it does in Luxembourg, where the Respondent is located.” In other words, denial of complainant’s existence is persuasive because it is more probable than not it is true.

One other point is worth making. The Panel notes in its final paragraph that there “appears to have been abusive use of the domain name since [it was first registered], and yet it has taken the Complainant 14 years to assert its rights.” The Coda concurs with other panelists on the issue of laches: “Whilst the equitable doctrine of laches does not apply to the Policy, one might have thought that the Complainant might have taken action before now.” Sleeping on one’s rights does have consequences even if the decision is not based on a laches analysis.

Panels use the phrase “initial interest confusion” in two contexts: “[1] confusion of authorship upon reading the content of a website and [2] confusion of an Internet user who is seeking the mark owner's website but is attracted to the alternative website by its similarity (in this case, identity) with a recognized mark,” Justice for Children v. R neetso / Robert W. O'Steen, D2004-0175 (WIPO June 4, 2004). The term derives from US trademark case law, although as noted in a recent decision in the High Court of Justice, Chancery Division (citing cases from most of the Circuit Courts of Appeal) , OCH-Ziff Management Europe Limited v. OCH Capital LLP, [2010] EWHC 2599 (Ch) it “remains both controversial in some quarters and uncertain as to its application and scope even where it is accepted.” Nevertheless, it has increasingly become accepted.

The concept or doctrine (as it is termed) was severely criticized by the dissent in Aspis Liv Försäkrings AB v. Neon Network, LLC., D2008-0387 (WIPO June 2, 2008) (<aspis.com>). He complained that a “small group of recent domain name cases [were improperly based] on a judicially invented legal concept that arose in the early 2000's.” “This concept” (he stated) “is a classic case of judicial activism where a Panel or Court is attempting to adopt some new and beneficial equitable principle that it considers ‘fair and reasonable’, in spite of the fact there is no legal basis or practical reason for such a conclusion.” The Panel in Justice for Children case continued that the content of the website is “irrelevant to the harm to the mark owner and to the unwary consumer.” What is relevant is that “harm results from the confusion caused by the initial attraction to the site by means of borrowing the complainant's mark. And that is exactly the harm the Policy was adopted to address.” The definition of the doctrine is succinctly noted in the resolution adopted by the International Trade Mark Association on 18 September 2006 which states that it “allows for a finding of liability where a plaintiff can demonstrate that a consumer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase.”

In UDRP jurisprudence the doctrine has had a long history of application. In AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum October 31, 2000) the Panel held that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer.” A similar holding was made in Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution October 23, 2000), namely that liability attaches despite a disclaimer on the website and link to the complainant’s website on the respondent’s website.

More recently, the concept was applied in Rockwell Automation, Inc. v. Jose Hernandez, FA1004001316859 (Nat. Arb. Forum May 20, 2010) (<allenbradleyproducts.com>). Respondent’s only evidence for both legitimate interest in the domain name and bad faith registration is that it placed a disclaimer on his website which he claims supports both. The Panel disagreed:

Similarly in resolving the issue of bad faith: “[i]ndeed, it is fair to infer, and the Panel finds that [the Respondent] selected that name because, on account of its notoriety for automated control equipment, it would attract persons interested in buying such equipment to his website, which was his objective.” Initial interest confusion can be seen as the flip side of nominative fair use.

Legitimately Offering a Domain Name for Sale by a Transferee from a Related Transferor

A respondent is ordinarily responsible for its behavior immediately upon registration and chargeable for its use of the domain name thereafter. I previously noted October 25 that transferee respondents from related parties are treated differently from respondents acquiring their domain names upon non-renewal from prior holders. La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Easthaven Ltd., D2010-1167 (WIPO October 22, 2010) is an example of the former class; A. D. Banker & Company v. Domain Invest, D2010-1044 (WIPO September 30, 2010) of the latter.

The Respondent in La Société first alleged that it “registered the disputed domain name ... more than 12 years ago to potentially use an additional site for its online gaming business at “www.casinoland.com” [but that i]n 2000, [it] was forced to close “www.casinoland.com” as a result of computer software difficulties. [As a result t]he Respondent never utilized the disputed domain name as a website and has not used it for any other purpose to date.” The Respondent later supplemented its submission by admitting that the domain name was originally registered by “a related entity to the Respondent ... [who] transferred [the domain name] to the Respondent in January 2010.” It argued that since both entities were beneficially controlled by the same people it was entitled to the benefit of its transferor’s good faith registration, a view that the Panel majority rejected.

The record appears to include evidence that the Respondent “clearly offered” the domain name for sale “for a price of EUR 1 million, which is far in excess of any out-of-pocket expenses that may have been directly related to the disputed domain name.” This should by itself be conclusive of abusive registration unless the domain name was truly an asset that could legitimately be sold on the open market including the Complainant. The dissent focused on a different aspect of the evidence, that it was proper to look into the motivation of the related party, and in doing so he found that the domain name was plausibly registered in good faith. How a domain name comes into a respondent’s possession is a key fact. The dissent notes about the majority that it

His response points out the differences in treatment between the two kinds of respondents. It would (he states) “probably be so [that is, the transfer of registration is to be regarded as a new registration] if the transfer is a sale to an unrelated party, as it would seem strange that a registrant could avoid liability for a plainly illegitimate acquisition by relying on the legitimate registration of an entirely unrelated registrant in entirely different circumstances and possibly many years before.” The “more difficult question,” however, “is whether such a rule should apply when the two parties are in common ownership.”

Transferees are not protected from their transferors' bad faith and it is proper to examine their motivations in registering the domain names. If that were the sole issue, the dissent would be correct, that the record supports the Respondent in La Société both as to registration and use. But, the record contains evidence that having acquired the domain name from its related transferor the Respondent then offered the domain name for sale to the Complainant, which under ordinary circumstances would contravene paragrah 4(b)(i) of the Policy. However, if the transferor’s acquisition of the domain name was in good faith (as it appears) the domain name would then have been a legitimate asset for it as well as its related transferee. The dissent is correct about the 12 year wait because it allows an inference that the Complainant never believed the domain name infringed its trademark and pounced only when it learned that the domain name had been transferred.

A respondent may, as has frequently been pointed out, rightfully register a domain name incorporating a complainant’s trademark if authorized by contract or permitted under a nominative fair use theory. If neither, the registration is abusive. In National Association of Realtors v. John Fothergill, D2010-1284 (WIPO September 20, 2010) the Panel held that the domain names <listonrealtor.com> and <listitonrealtor.com> were “outside of the terms of the license and do[] not otherwise satisfy the [standards set forth in] Oki Data Americas, Inc. v. ASD, Inc [, D2001-0903 (WIPO November 6, 2001)] ... for a “bona fide” resale of Complainant’s services.” The Panel noted that the facts are complex but “it has an obligation when faced with such disputed facts ... to make the best findings it can, by a preponderance of the evidence, based on the record submitted, with full knowledge that the parties have the right to take their dispute to court if they wish a full, judicial resolution.” citing Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO January 29, 2001). (Footnote: the same Panel is the author of all three decisions).

The Complainant’s agreement in National Association of Realtors grants its members “a limited license to use the REALTOR mark in a domain name if the mark is used in connection with a member’s name or the complete legal name of a member’s real estate firm.” However, at the commencement of the proceedings the Respondent had no legal identity as “List On” or “List It On” although after service of the complaint it took steps to officially change its name with the Florida Secretary of States from N Properties, Inc to List On, Inc. It also changed its name on the Complainant’s website in an attempt to legalize the domain names.

Notwithstanding these actions, the Panel rejected the Respondent’s narrative of legitimate interest. It concluded (in essence) that the Respondent was manufacturing a position to bring itself into compliance with member rights under the NAR license. Morever,

In using the domain names “as a website to sell a $99 ‘For Sale By Owner’ package allowing consumers to list their homes for sale directly on several websites, including <realtor.com>, without the use of a realtor and without the payment of a commission,” the Respondent fell short also on the nominative fair use defense. To succeed under the Oki Data standards “[t]he site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site if, in fact, it is only one of many sales agents.”

The Panel “divined” from the Complainant’s Membership Marks Manuel that its “license is designed to allow real estate professionals to publish websites that use their distinctive names along with the REALTOR designation, such as <johndoerealtor.com>. It does not appear to have been designed to allow NAR members to cleverly call their company by a descriptive name (such as “I’m The Top” ) and then use that name, in conjunction with the REALTOR mark, to create an attractive domain name (e.g., <imthetoprealtor.com>).”

The evidence discussed above supports the inference that Respondent registered the Domain Names to take advantage of the goodwill of the REALTOR mark and to confuse consumers into believing that the Domain Names and the services sold on Respondent’s website, which include direct listing on “www.realtor.com” in violation of Complainant’s policies, have some connection or affiliation with Complainant.

Transferees who acquire domain names from related entities or by purchase and registrants who independently acquire their domain names after non-renewal by prior registrants are treated differently. The former inherit any bad faith use (the alleged good faith transfer being implicitly tainted); the latter, untainted by any prior bad faith use, start anew. Just how heavy the complainant’s burden is to prove bad faith registration where there is bona fide use is illustrated in A. D. Banker & Company v. Domain Invest, D2010-1044 (WIPO September 30, 2010) contesting <adbankers.com>; decision by a 3-member Panel. The Complainant is the holder of the trademark A.D. BANKER. For contrast, see La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Easthaven Ltd., D2010-1167 (WIPO October 22, 2010), an alleged intra-party transfer.

While there were a number of factors in A.D. Banker “point[ing] in the direction of a finding of bad faith” there was also countervailing evidence. The Respondent did not deny that the TLD could be read as identical to the Complainant’s trademark. However, it was attracted to the domain name because of the combination of the word “ad” which is short for “advertising” and “bankers.” Nevertheless, “[p]rima facie [] the Domain Name suggests a reference to the Complainant and the Complainant’s mark.” The Panel accepted the Respondent’s “not entirely implausible explanation” that it

This assertion was supported by a witness statement signed by the general manager of the Respondent. The Panel was (it said) “reluctant to conclude that Schnermann[’s] statement is untruthful which it would need to do if the Complainant is to succeed in these proceedings) in the absence of further compelling evidence in this respect.” In other words, the Complainant would need further evidence to rebut the Respondent’s declaration. The Panel granted the Complainant the opportunity to supplement the record by a Procedural Order.

The Complainant supported its contention of bad faith registration by demonstrating that the Respondent was continuing the bad faith use of the predecessor registrant. Ordinarily, this would be conclusive against the respondent, but in A.D. Banker the Respondent “claim[ed] that the[] search terms [that] resulted from the pay-per-click settings [were] chosen by the previous owner of the Domain Name” and that the continuation was a “question of timing.” It had not had time to make the appropriate adjustments. It claimed that it

According to this (the Respondent argued) “it would be unfair to draw any conclusions adverse to the Respondent’s motivations and intentions from web pages that were dated the day after the Domain Name was transferred.” It appears, then, that the Complainant pounced too quickly, which is the reason that the Panel concluded its decision with the following:

Uncertainty of bad faith registration supports benefit of the doubt in the Respondent’s favor. However, if the Respondent continues or commences bad faith use and there is sufficient evidence to reexamine the Respondent’s motivation in registering the domain name the Complainant is invited to commence a fresh proceeding, although its maintenance at that time “would be a matter for a subsequent panel to determine.”

“Pay-per-click websites” (noted the Panel in Business Filings Incorporated v. John Thalacker D/B/A Traffico, D2010-1332 (WIPO October 1, 2010)) “are often found not to be bona fide offerings of goods or services, but this is not always the case.” It continued that the “issue turns primarily on the content of Respondent’s website at a particular point in time and whether Respondent’s use of the Domain Name was infringing or impairing Complainant’s trademark rights at a given time.” So, for example, if a domain name registered prior to complainant’s acquisition of its trademark dabbles in different goods or services the respondent’s interest is likely to be legitimate. If the timing is prior but the content appears to take advantage of the trademark the respondent is unlikely to prevail against the complainant’s prima facie case. In Business Filings the Panel “believe[d that] the record in this case is [in]sufficient to make these calculations with any precision.” However, the Panel ruled in favor of good faith registration. There are a couple of reasons for this, but one is particularly noteworthy.

The Complainant alleged that it had been offering its services prior to the Respondent’s registration of <bizfiling.com> through its own domain name at <bizfilings.com>. It had also (unsuccessfully) applied to register BIZFILINGS.COM as a trademark prior to the registration of the disputed domain name, but as an “intent to use” filing. The USPTO rejected the application after the registration of the disputed domain name. There was no evidence that the Respondent was aware of the Complainant. Subsequently, the Complainant filed another “intent to use” application which was accepted based on “acquired distinctiveness.” The earliest date of “use” post-dated the registration of the disputed domain name. The Panel rejected the Complainant’s argument that the first filing was irrelevant – “the Panel finds otherwise” – and had this to say:

Although it does not often arise, a trade name is not protectable, unless it functions as a trademark. “An Internet address [which may be thought of as equivalent to a trade name] and a trademark are not per se the same thing.” The Panel continued that a “web address is not in itself protected by trademark law.” The “intent to use” application is effectually an admission that the symbol is not associated at that time with any goods or services. A complainant must be particularly persuasive not to have its admission counted.

In Business Filings the Complainant offered “statistics on the number of hits on, and unique visitors to, its site during the period from 1996 to April 2002.” But, the Respondent “produce[d] strong evidence that ‘bizfilings’ was not in fact being used as a trademark during this period.” Rather, it “appear[ed] to have used other ‘marks’ or denominations, including Business Filings Incorporated and BFi, as apparent service marks identifying its website, with ‘bizfilings.com’ functioning only as a web address until some later time.” The similarity of domain name (even if confusing) is irrelevant because “the Policy does not protect one domain name from another’s use of a similar domain name.”

Misusing Pejorative Plus Trademarks for Commercial Gain or to Denigrate a Competitor

Trademark + pejorative signaling criticism of the goods or services of a trademark holder are a powerful irritant. If the composition complies with the privilege of fair use a pejorative is an affirmative defense. However, the rules are unaccommodating for any infraction. This has been illustrated in a number of UDRP cases unsuccessfully defended. In HBT Investments, LLC d/b/a Valley Goldmine v. Christopher D. Bussing, D2010-1326 (WIPO September 24, 2010) the pejorative is a simple “sucks”, <valleygoldminesucks.com>, but the Respondent (after a successful mandatory injunction action) was revealed to be a competitor. A more factually complicated case was recently decided in a Nominet proceeding, Ryanair Limited v. Robert Tyler, 00008527 (October 7, 2010)(scroll to bottom of page) suffixing the term “I hate” to the trademark, <ihateryanair.co.uk>. Both Respondents forfeited their domain names, but for different reasons.

The purpose of a pejorative domain name is to call attention to itself and to engage the Internet user in communicating dissatisfaction. In this respect, the Respondent in HBT Investments is correct in arguing that “no reasonable consumer would think that a domain name with a pejorative word attached to a trademark would believe that the associated website was operated by the trademark owner.” And, for this reason, a domain name that leads to a faux website is liable under the theory of initial interest confusion. Certainly, the Respondent in Ryanair makes no bones about admitting that he comes not to praise Ryanair for its services but to bury it.

As a general rule, a trademark holder has no actionable claim against a respondent complying with paragraph 4(c)(iii) of the Policy and (although there are differences in wording and standards) the comparable provision in the Nominet policy. Public policy grants respondents a legitimate interest in expressing their dissatisfaction as long as the website is not designed for commercial gain. In HBT Investments the commercial gain (which may not be measurable in dollars) accrues to the Respondent from its denigration of the Complainant. Denigration per se is not an element of bad faith; but it is abusive when the Respondent’s purpose is to derive a commercial benefit. The question is, how much “gain” from a legitimate free speech site warrants forfeiture? The answer (at least under UDRP and Nominet) is very little.

Ryanair is different because (clearly) the Respondent’s “primary purpose” was to deliver his message. Citing an earlier case, the Panel noted that “[p]rotest sites classically carry personal, emotive versions of events, often expressed in deliberately shocking or vitriolic terms intended to attract attention to the cause. The statements may well be libelous in legal terms, but it is unlikely to be possible or appropriate for the Expert to determine in the context of the paper based DRS whether the statements are in fact true so that the defence of justification would be available.” However, the Respondent also received some (but very minimal) commercial gain. The Panel’s view of this is generally consistent with UDRP decisions in finding for the Complainant, although the result may very well be different under the ACPA. Nevertheless, the Panel view in Ryanair is worth quoting. Criticism sites should be pure. In deciding on forfeiture, the Panel held that any commercial use falls afoul of the DRS Policy, although

According to this view even minimal commercial use has consequences. The domain name is not forfeited for the speech content of the website but for its impurity of purpose. “Websites that are not operated solely in criticism of a person or business are not necessarily completely excluded under the Policy, but it is less likely that they will be seen as fair.”

A transferee is likely to take possession of a disputed domain name under conditions factually different from the original registrant. It inherits its transferor’s bad faith use without any advantage of its good faith (were that the case) registration. This applies equally to transferees unrelated as to those related to the original registrant. Unless the evidence demonstrates otherwise, a transferee inherits only its transferor’s bad use and not its good faith registration. Thus, the rule that a “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),” Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000) does not apply to a successor respondent.

Ordinarily, a domain name identical or confusingly similar to a trademark that a transferee redirects to a different website calls into question its bona fides where the transfer occurred subsequent to the complainant’s acquisition of its trademark. Left unexplained, such a factual matrix supports abusive registration. In FTR v. Synopsys Inc., D2010-1264 (WIPO October 7, 2010) the parties contended over a domain name consisting of a three letter acronym, <lmc.com>. The matrix in FTR, however, is more complicated. The parties reside in different countries (France and the United States); the transfer occurred in 1994 on the cusp of the Internet’s growth and before its expansion; and the transferee acquired the domain name through a merger and acquisition transaction. The Complainant originally acquired its trademark LMC in 1986, but in June 2010 it obtained a European Community trademark, undoubtedly the triggering event for commencing the UDRP proceedings.

The Complainant argued that the Respondent lacked any legitimate interest in the domain name because “[s]ince the merging of the company, the Logic Modeling Corporation and the Respondent, the disputed domain name has not been used by the Respondent; instead the disputed domain name resolves to the website ‘www.synopsys.com’.” It also argued that the Respondent does not hold a trademark for LMC and could not, therefore, have a right. Both these contentions misstate (or fail to understand) the law.

Rather, it is not abusive for a respondent to redirect a domain name it legally owns to another of its websites, even though the acronym “is not a brand that is currently used by the Respondent.” The “Respondent contended that it systematically keeps and maintains key domain name registrations ... obtained via mergers and acquisitions.” It redirects Internet users to its main website because “[p]roducts acquired under the [merged corporation] are still an active part of the Respondent’s business.” The correct rule is that there is no restriction on a respondent’s use of a domain name where “the evidence indicates [it] acquired [the domain name] legitimately as part of its merger with” a corporation that had a legal right to the name. Consequently, the Respondent was found to have both a right as well as a legitimate interest in the domain name.

Although unnecessary, the Panel continued with a ruling in FTR under paragraph 4(a)(iii) of the Policy. It concluded that offering to sell a domain name “for valuable consideration in excess of [the Repondent's] documented out-of-pocket costs directly related to [it]” which the Respondent legally owned is not evidence of bad faith any more than redirecting the domain name would be. However, the Panel rejected Respondent’s complaint of reverse domain name hijacking. The circumstances did not warrant such a finding.

With qualification, descriptive phrases are not denied trademark registration but they are less protected from concurrent users. That is clear from such trademarks as BABY ESSENTIALS, the subject of A.D. Sutton & Sons, Inc. v. BABYESSENTIALS.COM c/o Nameview Inc. Whois IDentity Shield / Vertical Axis Inc., D2010-1125 (WIPO September 22, 2010). Other examples have been noted in recent cases such as “Streetwise Maps” and “Simple Truths.” It is also clear that under UDRP (although not necessarily under trademark law) descriptive phrases that have not matriculated to trademark status are recognized as having common law protection as noted for “Ergonomic Designs.” While the holders for BABY ESSENTIALS, STREEWISE MAPS and SIMPLE THRUTHS lose (despite their trademarks) the Complainant in Ergonomic Designs prevails. The explanation for “Ergonomic Designs” is that it was well known in its market, the parties resided in the same geographic location and there was evidence that the Respondent had knowledge of the Complainant. The circumstances in A.D. Sutton are different and it is worth noting why such complainants fall short.

The Complainant in A.D. Sutton alleges that the Respondent uses the disputed domain name for a pay-per-click website containing links to baby goods and services provided at other websites. The Respondent alleges that it had no knowledge of the Complainant’s trademark until it received the Complaint. It alleges that the trademark is “entirely descriptive”; that a Google search for “baby essentials” yielded 504,000 search results from numerous websites offering a wide range of baby goods and services which have no connection with the Complainant; and that words “baby” and “essentials” are incorporated into numerous registered trademarks.

That a trademark issues is not sufficient evidence of its presence in the marketplace, hence the requirement for proof of its penetration at the time the disputed domain name was registered. A descriptive trademark well known when the complainant commences the proceedings is not support for a retrospective reputation. In the absence of reputation targeting cannot be inferred. Rather, the Respondent’s use of “baby” and “essentials” targets the market rather than the Complainant. This is evidenced further by other of Respondent’s domain names containing the words “baby” and “essentials.” The domain name was not chosen with the Complainant in mind.

The Panel made a further point based on the history of the disputed domain name. The Respondent was not the original registrant, but acquired the domain name after non renewal by a prior registrant.” It was originally registered in 2002, “some 3 years prior to the date when the Complainant began using BABY ESSENTIALS.” The relevance of this observation may not be immediately apparent. It means that whatever use may previously have been made of the domain name it could not have infringed on the Complainant’s nonexistent trademark. Therefore, the Respondent (as successor registrant) inherited a domain name registered and used in good faith. This is significant as an indicator of a registrant’s motivation for acquiring a previously registered domain name. The result may possibly have been different if the trademark had existed prior to the first registration of the domain name. A similar analysis is performed for transfers that occur after acquisition of a trademark.

Rule 11(a) of the Rules of the Policy is a two clause provision. The first clause provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.” The second clause dilutes the imperative of the first by providing that the decision is “subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” What “circumstances” should be taken into account to make the determination are discussed in Daimler AG v. Whois privacy services, provided by DomainProtect LLC/Designbureau Ltd., Domain Manager, D2010-1269 (WIPO October 8, 2010).

In the event of a conflict the first response comes from the Provider. In Daimler, the Center sent an email communication to the parties in English and Russian requesting the Complainant to “provide at least one of the following”:

The first and second requests conform with the requirements of the “shall be” clause. The alternative third request conforms with the “subject to” clause. The Complainant submitted a request “for English to be the language of the administrative proceedings.”

In its turn, the Respondent is invited to indicate its objection for the record and “to submit any arguments/supporting materials ... as to why the proceedings should not be conducted in English,” Daimler. The Respondent’s sole participation – it submitted no arguments or supporting materials – was to insist (not unexpectedly) that the proceeding be conducted in Russian. Considerations in determining which language may include for example the language used in pre-Complaint correspondence between the parties, the identity of the parties, the nationality and place of residence of the parties, and any other evidence of familiarity with the requested language. Should the Complainant already have submitted a request in its Complaint, it is requested to confirm that it has nothing further to add to it.

Whatever the reason, the decision “must be exercised in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs,” Transtrands Handelsaktiebolag v. Jack Terry, D2005-0057 (WIPO March 21, 2005).

In Daimler, “the Complainant’s arguments as to why the proceedings should be conducted in English even though the Registration Agreement is in Russian, were primarily these”:

One other illustration to make the point. In Alstom, Bouygues v. Webmaster, D2008-0281 (WIPO May 8, 2008) the complaint was submitted in English. Prior to its submission, the Respondent answered the Complainant’s cease and desist letter with an offer to sell the domain name in English, which was unsuccessful, and the Respondent defaulted in answering the complaint. The Panel decided to hold the proceedings in English on the theory that the Respondent had shown proficiency in the language. The registration in Alstom was in Korean.

It is a misapprehension of domain name jurisprudence to believe that the registration of a descriptive phrase that is identical or confusingly similar to a trademark is ipso facto legitimate. Legitimacy depends on the website’s content, possibly the parties’ relationship, their geographic locations and other factors. That the domain name is inactive is not a barrier for finding bad faith use; and, by deductive reasoning bad faith registration.

A recent “comment” on <udrpsearch.com> concerning a decision in Ergonomic Designs Limited v. Paul Moore, Stylish Solutions Limited, D2010-1344 (WIPO September 24, 2010) read: “Not sure how the panel could deny that ERGONOMIC DESIGNS is descriptive.” It is not that the Panel denied that the trademark was descriptive – it is what it is – but the Complainant proved requisite common law credentials (sufficient, that is to satisfy UDRP threshold requirements) and both Complainant and Respondent are resident of the United Kingdom. The evidence supports the Complainant’s contention that ERGONOMIC DESIGNS has achieved secondary meaning in the marketplace. Not only is the Complainant ranked at the top of a Google search, the more robust analytics proves the magnitude of the traffic to its website.

Thus, even assuming “ergonomic designs” is descriptive, the burden shifts to the Respondent to prove its right or legitimate interest in the domain name. To prevail under paragraph 4(c)(i) of the Policy where the domain name is inactive the respondent must submit proof of demonstrable preparations to use it in the course of its business. This it failed to do. The Respondent is not “commonly known by the domain name” [paragaph 4(c)(ii)] and the domain name is not being used in a noncommercial or privileged way [paragraph 4(c)(iii)].

That leaves the analysis of bad faith. There are circumstances under which a party may register and not use a domain name if it is impossible “to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate,” Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). In practice, the higher the visibility of the trademark the more unified are registration and use. In Telstra, the requisite mala fide intent was inferred from the visibility of the trademark. That is equally the case with Ergonomic Designs. “The fact that the disputed domain name has not been used in the accepted sense for an Internet presence does not prevent a finding of use in bad faith.”

Respondent in Ergonomic Designs forfeited the domain name because the record evidences that it registered the domain name in bad faith to take advantage of the reputation of Complainant’s trademark. The bad faith was compounded by pre-proceeding communications:

So, to answer the puzzlement in the UDRPSearch “comment”: it is not that the Panel denies “ergonomic designs” is descriptive, but Respondent offered no proof that it had a right or legitimate interest in the domain name, from which that and other evidence demonstrated bad faith registration.

As a general rule when “the licence of distribution arrangement has terminated, the respondent is generally found to have no rights or legitimate interests in a domain name which was only used in the respondent’s capacity as licensee or authorised distributor,” SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation, D2009-0308 (WIPO April 27, 2009). A right or legitimate interest and, ultimately, a finding of bad faith depends on the circumstances under which the right came into existence, for example, whether by contract or acquiescence. In SPECS, “[t]he agreement prohibited the Respondent from registering the brands, trade names and other marks of the Complainant for the Respondent’s own use, and required the Respondent to return the Complainant’s property upon termination.” The Panel was “comfortabl[e] [in]infer[ing] bad faith on the part of the Respondent.”

In a more recent SPECS proceeding against a different Respondent, SPECS Surface Nano Analysis GmbH v. Rickmer Kose / Domain Name Administrator, PrivacyProtect.org, D2010-1173 (WIPO September 24, 2010) (hereinafter referred to as SPECS(2) the complaint was denied for failure to prove bad faith registration, because “the Complainant, on its own evidence, explicitly authorised the Respondent to register the disputed domain name in 2006. (Paragraph 5, Declaration of the CEO of the Complainant, attached to the Complaint.)” The Respondent lacked rights or legitimate interests, but retains the disputed domain name. The absence of contractual restriction cannot be cured after the fact by withdrawing permission, 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 Complainant in SPECS (2) “argues that this registration should be retrospectively deemed to have been done in bad faith, because of the subsequent termination of the Respondent’s position as a sales agent of the Complainant.” This, the Panel rejected. Such an approach would be inconsistent with the majority of panel decisions. The distinction between contract restrictions and acquiescence is important. A respondent who registers a domain name with the trademark holder’s express permission and without restriction to or limitation of its right cannot be said to have registered it in bad faith, Green Tyre Company Plc. v. Shannon Group, D2005-0877 (WIPO October 5, 2005). There are similar holdings for acquiescence. Withdrawing permission after authorizing the registration of the domain name does not support bad faith, Ivanko Barbell Company v. Syclone Corporation c/o Adam Auerbach, FA0805001191122 (Nat. Arb. Forum July 22, 2008).

In contrast, a respondent whose right to a trademark incorporated domain name is extinguished upon termination but who refuses to relinquish it will be found to have registered it in bad faith. This appears to be the sole circumstance under which a respondent can be found liable for retroactive bad faith. It is based on an inference that the respondent executed the contract with the intention (then) of not honoring its obligation upon termination. Typical findings are: “[t]he Respondent had an ulterior motive from the beginning in registering the domain names,” Omnigraphics Capital (Pty) Ltd v. Fleximount, Guy Langevin, D2004-0471 (WIPO August 17, 2004); or, “in the absence of a transfer of the Domain names to the Complainant, the Respondent has failed to fulfill the first condition,” Exel Oyj v. KH Trading, Inc., D2004-0433 (WIPO August 9, 2004); or, “breach of such conditions can alter what would otherwise have appeared to have been a bona fide registration,” R&M Italia SpA, Tycon Technoglass Srl v. EnQuip Technologies Group, Inc., D2007-1477 (WIPO December 7, 2007).

Trademark law recognizes with some qualification that two parties can be entitled to use similar, even identical lexical strings where the concurrent user offers the public unrelated goods or services. The qualification is that “the Lanham Act's tolerance for similarity between competing marks varies inversely with the fame of the prior mark,” Kenneth Parker Toys Inc .v. Rose Art Industries Inc., 963 F. 2d 350, 353 (Fed. Cir. 1992). That is, “[a]s a mark's fame increases, the Act's tolerance for similarities between competing marks falls.” This proposition is also a central tenet in UDRP jurisprudence. A domain name identical or confusingly similar to a trademark is no more than an ocular description of its appearance based on a side by side comparison with the trademark. Where, without knowledge and in some instances with it, as in cases of nominal fair use for example, a party operates in a different market or channel of trade [Streetwise Maps, Inc. v. Ryan Gibson, D2010-0984 (WIPO August 6, 2010)] and offers goods or services in different classes [G DATA Software AG v. Geologic Data Systems, D2010-0389 (WIPO May 10, 2010)], it has a right or legitimate interest in the domain name.

Where the trademark is a descriptive phrase “it is necessary for Complainant, in support of its prima facie case, to establish that this trademark has taken on a secondary meaning, denoting goods or services of a particular trader,” Simple Truths, LLC v. Edward Slack, Simple Truth Publishing, D2010-1349 (WIPO September 20, 2010), citing Porto Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO November 15, 2000). The disputed domain names, <simpletruthpublishing.com> and <simpletruthpublish.net> are confusingly similar to SIMPLE TRUTHS.

Absent an explanation from the Simple Truths Respondent the domain names could be seen as instances of typosquatting (omission of “s”). However, arguing that a respondent is an infringer for having registered a domain name confusingly similar to a descriptive trademark necessarily requires a threshold analysis of the parties’ locations, their products or services and the respondent’s motivation. While on the highest level of abstraction the respondent may be said to deal in a product or provide a service there necessarily has to be a high degree of propinquity coupled with knowledge and targeting for infringement, which were not present in Simple Truths.

Although in Simple Truths the parties are associated with publishing they each occupy a separate niche. “The broad and generic nature of this trademarked term” (the Panel noted) “is evident by the disparity between the offerings on Complainant’s and Respondent’s respective websites, though both can aptly be described as pertaining to ‘Simple Truths’.” The more interesting issue in Simple Truths is that while the .net domain name was registered before service of a cease and desist letter the .com was after. It would not be unreasonable to infer opportunism in the .com registration, except that the Respondent’s history and the content of his website supports an innocent intention.

Paragraph 4(c)(i) of the Policy is a complete defense if before any notice of the dispute the respondent is using the domain name in connection with a bona fide offering of goods or services. This is reinforced where the respondent has commonly been known by the domain name [paragraph 4(c)(ii)]. Since extensions are simply functional elements, a respondent’s good faith prior use of the TLD “can be applied to the ‘.com’ domain name,” Simple Truths. The reason for this is that “[b]oth disputed domain names recite the full name of Respondent’s corporation, established for the bona fide offering of goods (i.e. his book) and one of these virtually identical domain names was registered before the notice of the dispute.” Thus, registering a TLD in a different extension (where the respondent has already an established right or legitimate interest) will not undercut the respondent’s good faith. If the respondent has established a right or legitimate interest there can be no “bad faith” regardless that one of the extensions is registered after notice of the dispute.

A complainant’s unexplained delay in prosecuting a claim under the UDRP is not generally prejudicial to its relief, except where in the interim “the lapse of time coupled with the existence of circumstances ... make it inequitable to enforce a claim,” Pamela Anderson v. Alberta Hot Rods, D2010-1144 (WIPO September 8, 2010). This is an elementary principle, but 13 years calls for an explanation. The existence of circumstances must necessarily be taken into account, as it is, for example, when the respondent proves a defense under paragraph 4(c)(i) of the Policy: “before any notice to you of the dispute, [you have] use[d] ... or [made] 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.”

In Pamela Anderson the majority rejected the respondent’s “circumstances” argument; the dissent did not and this raises an interesting issue about unexplained (lengthy) delays. The dissenting panelist in Pamela Anderson and other decisions has been pressing his colleagues to reconsider their view about the application of laches to a UDRP proceeding. But so far his is a voice in the wilderness. He states that “unexplained delays ... should be taken into account.” That view, however, is not controversial. He even agrees with the majority if I put back in the language that I left out: “during which rights have been allowed to accumulate.” The difference is that the majority has one view of the circumstances and the dissent another.

The dissent points out that there is a genuine issue as to whether “Pam Anderson” is confusingly similar to “Pamela Anderson,” although (as he concedes) the complainant met the “generally applied test for determining if a celebrity has acquired a common law trademark.” The real focus in terms of “circumstances” (raising, as it were, a triable issue) is whether the Respondent had rights or legitimate interests in the domain name. The Respondent’s paragraph 4(a)(ii) rebuttal argued that although the domain name was currently inactive it had “used the disputed domain name in connection with various websites in the past.” Exactly what proof the Respondent offered for past use is murky and clearly inadequate, but a website featuring “biographical information about various famous personalities, dead or alive” is not improbably making a bona fide offering of services.

On this issue, the majority found that the “unsupported arguments of the Respondent do not suffice to rebut the Complainant’s prima facie case, let alone positively establish rights or legitimate interests under the Policy.” Indeed, the dissent appears to recognize this problem: “if the Respondent’s proof is inadequate, that has been brought about by the inordinate delay of the Complainant in bringing this claim, a delay that she has not explained, despite the issue’s having been squarely raised in the Response.” However, it does not appear that the Respondent submitted any historical snapshots of the website or make any attempt to support its argument for a right or legitimate interest. The absence of proof a party would be expected to offer supports an inference that it has none. The Respondent's history of cybersquatting does not help its credibility; its denials therefore have less weight.

Nevertheless, the dissent’s point is not without merit. “Pam” is not “Pamela” and the Complainant’s trademark is for PAMELA ANDERSON not “Pam Anderson.” More importantly, on the paragraph 4(a)(ii) and (iii) requirements, an explanation for the delay is not an unreasonable burden in weighing the parties’ rights. “If it is difficult for the panel to be conclusive about the issue [of bad faith] in the light of what has happened in the last 13 years, as it is, that result has been brought about by the delay itself and the delay has been occasioned by the Complainant. In those circumstances, any doubt on the issue of the legitimacy of the disputed domain name should be resolved against the Complainant.” Resolved against the Complainant because it is she who has the burden of proof that the domain name was registered in bad faith.

Turning the issue around from yesterday's Note, instead of geographic indicators joined to trademarks, consider geographic trademarks and their strength. In domain name disputes geographic indicators as trademarks are heavily discounted, Atlantic Station, LLC v. Dargan Burns III, D2010-0996 (WIPO September 14, 2010) (<atlanticstation-bars.com>, <atlanticstationdental.com>, <atlanticstation-food.com>, <atlanticstation-restaurants.com> and <atlanticstationshops.com>); Atlantic Station, LLC v. Dargan Burns III, FA0903001250592 (Nat. Arb. Forum April 26, 2009) (<atlanticstation-condo.com>). This point is particularly emphasized in the latest of the Atlantic Station cases: “It should be noted that the Lanham Act expressly permits others to use even the registered and incontestable trademark of another where it is shown that the use is a use of a term which is descriptive of and used fairly and in good faith only to describe to users the goods or services of such party, or their geographical origin.”

An adverse ruling, of course, does not address whether the respondent is guilty of trademark infringement, which would be triable (in the U.S.) under the Lanham Act. But, in this case, “there is no indication that Complainant has sought to challenge [the earlier] decision in a United States court or to otherwise enforce its trademark rights via Lanham Act litigation.” Then continuing,

The Complainant’s burden in the Atlantic Station cases is that the “geographic connotations of the ‘Atlantic Station’ make it all the more difficult to presume that Respondent acted in bad faith .... [Indeed,] it is in the difficult position faced by any owner of a mark that has dual meaning. On the one hand ATLANTIC STATION is a trademark; on the other it is a geographic place.” There are official as well as unofficial geographic locations. “Atlantic Station” is recognized by the U.S. Post Office, thus adding a descriptor “condo” did not violate the Complainant’s right even though it was in the real estate market and the parties competed for the same customers.

In contrast, a geographic location created by the developer and having no official recognition can protect its trademark against a respondent in competition with it, Big Canoe Company, LLC v. Daniel J. Elliot, FA0609000799382 (Nat. Arb. Forum November 17, 2006) (<bigcanoerealestate.net>). The Panel found that Complainant, a builder, had created and named the community, thus distinguishing it from cases like Deer Valley Resort Company v. Intermountain Lodging, FA0505000471429 (Nat. Arb. Forum June 21, 2005) that “was a geographic area that had been identified and referred to as such by the local populace for a number of years before Complainant’s registration of the mark [], [in] this situation ... the Complainant’s use and registration of BIG CANOE predated the use of this term as the name of a geographical area by several years.”

In the second Atlantic Station (as in Deer Valley) “Complainant has not offered evidence to prove that Respondent uses ‘Atlantic Station’ in a context that suggest[s] trademark usage instead of descriptive geographic usage. Complainant has not proved by a preponderance of the evidence that Respondent was not likely relying on the geographic connotations of ‘Atlantic Station’ when it registered the Domain Names.”

Adding a Geographic Indicator to a Trademark Does Not Distinguish the Domain Name

Adding a geographic indicator to a trademark does not distinguish a domain name; is unlikely to support a right or legitimate interest; and generally the domain name is found to have been registered in bad faith. “Usa” added to “rangerover” and “denver” to “univision” are two recent examples. But the complaint involving “uae” added to “herbalife” was denied, Herbalife International, Inc. v. Zainl K.A. Haider, P.o. Box 1080, Manama – Kingdom of Bahrain, FA1008001343621 (Nat. Arb. Forum September 29, 2010)(<uaeherbalife.com>). The Complainant has a significant presence in the Middle East although not in the Kingdom of Bahrain. The question is, Why is the complaint denied?

However, the Respondent’s website is offering the “genuine” goods in English (to an English speaking market) not UAE Arabs thereby competing directly with the Complainant. The answer for denying the complaint apparently rests on the “admission” together with the Complainant's non-action in “enforc[ing] its mark relative to the thirteen domains listed by Respondent (such that, absent evidence to the contrary which has not been submitted by Complainant, Respondent could have reasonably believed that it could use the domain at issue).” But, the phrase “could have reasonably believed” does not appear in the Policy as a defense to bad faith. In slightly different language the defense does appear in the ACPA, 15 U.S.C. §1125 (d)(1)(B)(ii):

It is a stretch to apply this principle to the Respondent in Herbalife who clearly has actual knowledge of the Complainant and it is questionable for the Panel to import it into UDRP on such flimsy grounds.

It is true in the precedential cases the Panel cites that “mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii),” Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum March 9, 2005). Starwood, however, is unusual in that “Complainant has not proven that the STARWOOD mark was so famous in Korea at the time of Respondent’s registration of the Domain Name in January 2000 that Respondent must have known of the mark and must have intended to register the Domain Name with a bad faith intent to profit from Complainant’s trademark.” In the other cited case, Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) “Complainant and Respondent are not in the same field of business, and therefore are not competitors. Since there is no potential for confusion by Internet users, Respondent may maintain rights in the GRAMAN mark.”

While the facts in the cited cases clearly support their conclusions, they do not in Herbalife. There can be no dispute that the Respondent had actual knowledge of HERBALIFE. Since it admits to selling “genuine” goods no inference is necessary. There is also no dispute that it has incorporated the Complainant’s trademark together with a geographic indicator in its entirety in the domain name for the obvious purpose of capturing Internet users that would otherwise be purchasing the same goods from the Complainant. Ergo, a clear departure from precedent.

As a general rule the aim is not to interfere with a respondent’s business decision to shield personal information, but to find“a proper balance between privacy, on the one hand, and the need for accountability and cybersquatting prevention, on the other hand,” U-sream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008). In the BzzAgent cases the Panel found that “it should draw an adverse inference” from the Respondent’s use of a privacy shield, because “[i]n the circumstances it seems reasonable to infer that the main purpose for which the Respondent Vertical Axis has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent.” However, the Panel does not exclude other circumstances in which the privacy service is reasonable. He imagines, for example, that the use of a privacy service “may [be] warrant[ed] ... as protection from retribution if the ... website associated with the Disputed Domain Name [were] critical of, or satirising, the Complainant’s business.”

The problem centers on use of the services that effectively delays resolution of the complaint by disguising the beneficial owner of the domain name, Divex Limited v. ZJ, Sam Chang and Tim NG., D2007-0861 (WIPO September 27, 2007). As the Divex Complainant pointed out there are many reasons for using a proxy registration service that are legitimate and consistent with good faith: 1) ease of account management and re-registration (especially where the registrant has registered a portfolio of domain names); 2) avoidance of identity theft; and 3) evasion of spam.

As discussed in Friday’s Note on the BzzAgent cases, the Panel distinguishes between high volume registrants and others. Panelists in a number of cases have questioned a Pay-Per-Click advertiser’s “needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting,” Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008). The concern is that the shield may also allow registrants to transfer domain name registrations amongst themselves without any public record that there has been a transfer, thus allowing them to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy.”

A person is free to choose any string of phonetic elements or numbers as a domain name as long as its choice does not infringe the legal rights of any third party. In making its choice, the registrant represents and warrants as such in the registration agreement. The question, however, is, What duty does the registrant have to avoid infringement and what investigation satisfies it? The WIPO Final Report contemplated a light investigatory duty insofar as researching trademark databases. Paragraph 103 reads:

However, starting in 2006 panelists began drawing a distinction between respondents in the domain business (domainers) and those who were not.

The new standard can be traced to Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006). There, the Panel observed that high volume registrants were acquiring “large swaths of domain names through the use of automated programs.” It proposed a corrective that took this business model into account. That case and others that followed the Panel’s reasoning ushered in a shift of thinking about high volume registrants “who use their vast accumulations to exploit a business opportunity.” They have “a greater duty ... to verify that the use of a domain name ... is legitimate,” BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. Future Media Architects, Inc., D2006-0534 (WIPO July 28, 2006) (<psk.com>).

The Panel in Mobile Communication 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

So we come to BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc. Whois IDentity Shield and Vertical Axis, D2010-1187 (WIPO September 17, 2010) and BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc. Whois IDentity Shield and Vertical Axis, D2010-1188 (WIPO September 17, 2010). The Respondent (the same in both cases) alleges in defense that “it registered the Disputed Domain Name[s] after [they were] deleted, expired and became available for registration.” However, what it registered were misspellings of BZZAGENT, <bzzaget.com> and <bzzagen.com>. Clearly no effort at all had been made to “avoid” infringing the Complainant’s trademark right. The Respondent also ran afoul of its use of a privacy service (a subject for the next Note). “[I]t seems reasonable to infer that the main purpose for which the Respondent Vertical Axis has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent.”

The respondent's sole contribution under paragraph 4(a)(i) of the Policy should be to confute the complainant's assertion of jurisdiction: that the complainant either has no trademark or if it does the domain name is neither identical or confusingly similar to it. The term "has rights" means that the complainant has them at the time of filing the complaint rather than its having had them prior to the registration of the disputed domain name. The general rule is that acquisition of a trademark post-dating the registration of the domain name does not affect jurisdiction or the complainant's standing to maintain the proceeding, even though it may foretell the result of the proceedings.

Set against the consensus that 4(a)(i) does not require that the trade mark be registered prior to the domain name is another line of cases that holds the opposite view. This is illustrated in The New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010). Against the backdrop of the ascendant view it is surprising to find a Panel rendering its declaratory ruling at the threshold on the grounds that the Complainant has no senior right to the term "deal book." Terminating the proceeding at the threshold may have the merit of speed (on the theory that the Complainant would have lost anyway) but the demerit of sloppy reasoning. The New York Times registered DEAL BOOK as a trademark five years after the Respondent registered the domain name, although it allegedly began using the mark three years prior to that date. .

In some early cases later acquired trademark rights were thought to be jurisdictionally preclusive. It was assumed that standing depended on the timing of the complainant's trademark. According to the Panel in Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO March 30, 2001) the Policy "necessarily implies that Complainant's rights predate Respondent's registration . . . of the domain name." Because "the respondent's registration of the domain name ... predated the complainant's alleged rights the complainant did not have standing to bring a claim under the UDRP," Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (<razorbox.com>).

It necessarily follows from the view espoused in the foregoing decisions and in The New York Times that it is unnecessary to make any findings under paragraphs 4(a)(ii or iii) when a complainant's rights in the mark post-date domain name registration. Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum February 19, 2003) (no enforceable interest under paragraph 4(a)(i) of the Policy therefore no right). The view continues to exercise a hold over some panelists and not a few complaints are dismissed on this ground. In EDREAMS, Inc. v Arise Company Ltd., D2006-0725 (WIPO July 24,2006)., for example, the Panel held that "[h]aving considered [cited] authorities and the submissions of the parties, the Panel finds that the Complainant is unable to satisfy the test in paragraph 4(a)(i) of the Policy because it has no trademark rights which pre-date the date of creation of the disputed domain name."

Like the earlier line of cases, Panel in The New York Times considers timing determinative. It was "unpersuaded" that the Complainant used "deal book" in a trademark sense earlier than the Respondent's registration of the disputed domain name. "In its most favorable light Complainant's evidence supports that it began using DealBook in 2001 on a limited basis through its own newspaper and website to address deals in the financial industry." However, "While Complainant has provided some information on the nature and extent of advertising, no other factors have been shown to indicate that the general public, including the Respondent, knew or should have known of Complainant's alleged rights in the DEALBOOK mark from 2001-2004." The different approaches do not necessarily change the outcome of the proceedings, but the consensus view gives the complainant the opportunity to demonstrate that its right preceded the respondent's right and the domain name was registered opportunistically.

The uncertainty of which approach is correct is illustrated in Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001): "However, in case we are wrong on this issue [that is, skipping the threshold finding], we find that the Complaint fails to meet any of the requirements of paragraph 4b of the Policy." Which is essentially what The New York Times Panel is saying in early terminating the proceedings. The Panel unnecessarily latches on laches as an affirmative defense to the Complainant's threshold burden where more aptly the record appears to support a right or legitimate interest in what, after all, is a generic adjectival phrase. Having standing confers no advantage in supporting an actionable claim for abusive registration.

It is not the purpose of the law to prevent all non-permissive uses of trademarks. Noncommercial or fair use of domain names incorporating trademarks is permitted if they are “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue,” paragraph 4(c)(iii) of the Policy. This includes according to the majority in Twentieth Century Fox Film Corporation v. DISH Network LLC, FA1010001350483 (Nat. Arb. Forum November 22, 2010) commercial, disputatious, sloganeering commentary built into domain names. The majority ruled that incorporating FOX into <foxshakedowndish.com>, <weofferedfoxafairdeal.com>, <foxrefused.com>, and <jointhefightagainstfox.com> were not confusingly similar, so never reached the issue of bad faith. The dissent disagrees and would find that the Respondent was “opportunistically preying upon the goodwill and/or notoriety of the FOX mark for Respondent’s own commercial gain.” However, if that were the consensus it would shut down public space.

It is generally the rule that inclusion of the trademark in a domain name is sufficient to gain jurisdiction (rather than to declare there is no confusing similarity) and from that finding to move to the other requirements of proof. Even if the domain name is confusingly similar, it can be non-infringing if speech is privileged. Criticism and commentary of trademark holders and their products or services as a carve out from the statutory privilege of exclusive use may be intrusive, even injurious but not actionable even if arguably defamatory. The majority cites a recent ACPA case, Ringcentral, Inc. v. Quimby, 711 F.Supp.2d 1048, 1060 (N.D. Cal. 2010) in which it quotes the Court as holding that if the name of the website at issue “itself makes clear that it is not affiliated with the plaintiff’s mark, there can be no likelihood of confusion.” However, the majority is confusing the trademark concept of likelihood of confusion with the jurisdictional requirement under the UDRP. The term “likelihood of confusion” is present only in paragraph 4(b)(iv) – “by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement [by the trademark holder].” Paragraph 4(a)(i) uses the term “confusingly similar.” The ACPA offers a remedy for “distinctive” trademarks; the statute is not limited to “famous” trademarks as the majority appears to imply. In any event, “Fox” in context in which it is being used is a famous mark.

There is no issue of “tarnish” in Twentieth Century Fox. However, since it is an element in paragraph 4(c)(iii) it should be noted in passing that the term “tarnish” is construed in favor of a person speaking his or her mind. A holder and its trademark is “tarnished” where the respondent has linked the website to which the domain name resolves to an unsavory image or information,, such as redirecting Internet users to pornographic images. Coopting the complainant’s mark for a sexually explicit web-site, especially where the complainant’s mark has been associated with household marketing, Williams-Sonoma, Inc. dba Pottery Barn Kids v. Ed Domains, D2004-0640 (WIPO October 8, 2004), entertainment personalities, Kidman v. Zuccarini, D2000-1415 (WIPO January 23, 2001), or children’s entertainment services, William H. Cosby, Jr. v. Sterling Davenport, D2005-0756 (WIPO August 30, 2005).

But, commercial speech deserves a more thorough analysis. In the case of Twentieth Century Fox, while the Respondent’s intent is not without “commercial gain” it clearly is not for the purpose of “misleadingly divert[ing] consumers or [] tarnish[ing] the trademark or service mark at issue.” It would have been more instructive for the majority to have provided some insight into sloganeering domain names as privileged speech. See, for example (although not of sloganeering), Howard Jarvis Taxpayers Association v. Paul McCauley, D2004-0014 (WIPO April 22, 2004) and the reasoning in Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003) (<taubmansucks.com>); Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D.Cal. 1998) (<ballysucks.com>). In Taubman the Court noted that “We find that Mishkoff’s use of Taubman’s mark in the domain name ... is purely an exhibition of Free Speech, and the Lanham Act is not invoked. And although economic damage might be an intended effect of Mishkoff’s expression, the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business. Such use is not subject to scrutiny under the Lanham Act.”

Seaports, airports, cities and municipalities have not fared well in their claims to take possession of disputed domain names. Geographic designations are either not registrable or when used as a badge for goods or services are considered generic. A list of unsuccessful complainants includes Port of Helsinki vs. Paragon International Projects Ltd., D2001-0002 (WIPO February 12, 2001) (denied complaint for <portofhelsinki.com> because geographic indicators are not per se trademarks, and Complainant failed to show any registered or common law trademark rights); BAA plc v. Bob Larkin, D2004-0555 (WIPO November 11, 2004) (<gatwick.com>) the Panel rejected Complainant’s contentions that as the operator of Gatwick airport it had a protectable right to the name “Gatwick” – agreeing with the Respondent that it could legitimately use the domain name descriptively; Ville de Paris v. Whois Privacy Services/Comar Ltd., D2009-1255 (WIPO December 3, 2009) (<wifi-paris.com>, denied because no exclusive right can be claimed to a geographic term).

Where the complainant has been successful there was some added ingredient. In BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, D2004-0717 (WIPO October 21, 2004) (<aberdeenairport.com>), for example, it was because the domain name included the term “airport” and the Complainant had a service mark, although the inclusion of the same term in an earlier case, Manchester Airport plc v. Club Club Ltd, D2000–0638 (WIPO August 22, 2000) (<manchesterairport.com>) did not persuade the majority that the Respondent had registered the domain name in bad faith. A consensus had developed more fully in 2004 regarding the scope of the Policy, but not in 2000, which is apparent from the majority’s conclusion that “in general, resolution of disputes related to violations of national passing off laws should be left to national courts.” There is every reason to believe that if a “Manchester Airport” case were ever again on the docket, the Complainant would prevail.

In fact, the latest entry on this issue, Town of Islip, a municipal corporation organized under the laws of the State of New York v. Black sheep Television Ltd., FA1008001339861 (Nat. Arb. Forum October 11, 2010) is not unlike Manchester Airport. The Complainant successfully sought to gain control over <macarthurairport.com>, <islipairport.com>, <islipmacarthurairport.com>, <islipairportonline.com>, <islipairportonline.net>, <macarthurairportonline.com>, <macarthurairportonline.net>, <ispairportonline.com>, and <ispairportonline.net>. Unlike the Manchester Panel, the Panel in Town of Islip was not of the view that “disputes relating to violations of national passing off laws should be left to national courts.” The Respondent had no right or legitimate interest in the domain names and had registered them opportunistically.

There are two added ingredients in Town of Islip. One is that the Complainant owns trademarks for LONG ISLAND MACARTHUR AIRPORT (both with and without a device) and claims common law rights to “Macarthur Airport”, “Islip Airport”, “Islip Macarthur Airport” and “ISP.” Although the registered trademarks post-date the registration of the disputed domain names, the unregistered trademark pre-date the registration by decades. The second ingredient is that the Respondent sought to convert its possession of the domain names into a business arrangement with the Complainant.

The registration of multiple domain names in Town of Islip brought into play paragraph 4(b)(ii) of the Policy. The Panel predicated bad faith on both 4(b)(i) and 4(b)(ii). The Respondent moved timely in federal court under the ACPA to block transfer of the domain names. A hearing is scheduled for December 1, 2010 to determine whether the 4(k) stay will be lifted. The likelihood is that the Court will side with the Town of Islip.

The Uniform Domain Name Resolution Policy does not protect holders, who in granting or acquiescing in the registration of domain names incorporating their trademarks, have failed to protect themselves by written contract. As the Policy is written, mala fide use is not a sufficient basis or removing the domain name from the respondent, although the view that it is has become part of the conversation. For that relief, the trademark holder has an actionable claim under the Anticybersquatting Consumer Protection Act. In DSPT International v. Nahum, 08-55062 (9th Cir. 10-27-2010) (an appeal from a jury award) the Court held that "[e]ven if a domain name was put up innocently and used properly for years, a person is liable under 15 U.S.C. § 1125(d) if he subsequently uses the domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom."

But the ACPA construction is not the UDRPs. Under the Policy as written a respondent will not be deprived of the disputed domain name even if it has no right or legitimate interest in it. An illustration of this is Red Bull GmbH v. Roy Kenneth Nabben, D2010-1358 (WIPO September 30, 2010), citing A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., D2010-0800 (WIPO August 31, 2010). The Panel "considers that, to satisfy the third requirement of the UDRP, a complainant must show that the domain name was both registered in bad faith and is being used in bad faith, and that a registration originally made in good faith cannot turn into a registration in bad faith because the registrant subsequently uses it in bad faith."

The exception is a transferee whose transferor used the domain name in bad faith. The consensus is that a transferee cannot rely on its transferor's good faith registration. It is only in this respect that UDRP jurisprudence is similar to that of the ACPA. Renewal of registration, however, "without change of ownership does not constitute a new registration for the purpose of this requirement." The Panel's conversation in Red Bull is with those panelists who would apply the ACPA jurisprudence.

The dissent in A. Nattermann, for example, traces the quasi-"legislative" history of the UDRP through WIPO and early statements of ICANN to reach a different conclusion and set the UDRP on a new jurisprudential path. He states that

The Panel in Red Bull (incidentally, the presiding panelist in the majority in A. Nattermann) does not buy the A. Nattermann dissent's argument. For him "where a company consents to the registration by a trading partner of a domain name incorporating its mark, the company can [that is, could] readily [have] protect[ed] itself by securing a clear written agreement specifying that it will own the domain name after the trading relationship comes to an end; and the agreement can further specify a cost effective means of dispute resolution." Bad faith use does not convert to bad faith registration. If a respondent has registered a domain name with the consent of the trademark holder it cannot be said to have registered the domain name in bad faith. "In any case, the Panel is obliged to apply the UDRP as it is, rather than as it could or should be.... There is no evidence that the registration was originally made by the Respondent in bad faith. The Respondent has remained the registrant of the Domain Name since then, albeit that he renewed the Domain Name after the Complainant demanded that he cease using it."

How Much Preparation is Enough to be Demonstrable Proof of a Right or Legitimate Interest?

Paragraph 4(c)(i) of the Policy contains three conjunctive elements: “before any notice to you of the dispute”, “[you made] demonstrable preparations to use” and the proposed use of the domain name was “in connection with a bona fide offering of goods or services.” The term “demonstrable preparations” requires proof of measurable preparations. Prior activity that meets the requirements of a bona fide business is evidence that the respondent registered the domain name for legitimate purposes and not to take advantage complainant’s trademark, while post-notice activity has the hallmarks of opportunism which negates rights or legitimate interests. The Respondent in Honeywell International Inc. v. Celeris Controls, FA1010001351938 (Nat. Arb. Forum November 15, 2010) contended that it was a legitimate enterprise in that Complainant both purchased services from it and supplied goods to it. The record, however, disclosed a different story, that rogue engineers employed by Complainant started a side business and were offering services competitive with it.

Honeywell International is not a case of Respondent lacking knowledge of the CELERIS trademark. Its core contention is that it is in a business relationship with the Complainant. The term “before the dispute” has been construed as meaning a prior history. In Honeywell International “Respondent endeavours to rebut the prima facie case essentially by advancing an argument based on the establishment of its business and its registration and use of the domain names for that business.” In support of “demonstrable preparations” the Respondent pointed to the registration of disputed domain names and use of one of them as part of an email address. “ With respect to the use of the domain name as part of an email address, as the Complainant points out [and with which the Panel agrees], it was noted in Alienware Corp. v. Dann, FA 1290045 (Nat. Arb. Forum December 28,2009) that ‘If the use of the disputed domain name by itself as an email address for the Respondent amounted to bona fide use, UDRP would become easily avoidable’.” The Panel continues: “The same consideration applies to the mere registration of the domain names.”

The third element is proof of a bona fide offering of goods or services. The respondent has the burden of production. In accessing this element there is a subtle interplay with paragraph 4(b) of the Policy, and although as a formal matter the Panel must conclude each requirement separately, it is likely to be influenced by the totality of the record. “More importantly, it must be remembered that the most important ingredient of Policy ¶ 4(c)(i) is that the conduct relied on by the Respondent to establish its right or legitimate interest must be bona fide.” The question is not whether a respondent’s business is legal in the goods or services offered, but whether the respondent’s offering is in good faith.

The Respondent in Honeywell International could not demonstrate the third element and this was underscored by the formation of the Respondent’s company. “The conduct relied on by the Respondent in the present case, where in reality its essence is two of the Complainant’s employees setting up a rival business and using the name that the employer has given to its own products and trademark and without permission from the employer, cannot be bona fide.” In such a way does bad faith negate good faith.

The Panel noted about Wal-Mart Stores, Inc. v. Sergio Cabrera, FA1008001344053 (Nat. Arb. Forum November 8, 2010) that is was an “extremely rare case.” The Complainant requested that the Panel issue an order to transfer registration of <walmartvendor.com>. The addition of the generic term “vendor” does not (the Complainant alleges) create a name distinctive from the trademark. However, the Panel held that “[w]hile Respondent ... is not a reseller, he does operate a bona fide business that relates exclusively to consulting services in support of vendors who want to do business with Complainant.” Nominative fair use is not mentioned in Wal-Mart Stores, but is clearly the underlying theory in denying the complaint. The Respondent argued that his use of the Complainant’s trademark “is strictly for purposes of differentiating vendors who may sell to other retailers.” There is also a suggestion, although not followed through in the legal analysis, of equitable estoppel against the Complainant in knowingly allowing the Respondent’s use of the domain name for over five years.

In this respect, Wal-Mart Stores is not much different from a recent case in the 9th Circuit Toyota Motor Sales USA Inc. v. Tabari, dated July 8, 2010 discussed in my Note of July 19. The Court reasoned in that case

What distinguishes Wal-Mart Stores from many others (in the Panel’s view) is that “Respondent’s business activity involves offering consulting services for the process of becoming or being a Walmart vendor and selling to Walmart.” Moreover, “[o]nce a potential vendor arrives at Respondent’s site, the information contained therein, including a disclaimer, indicates that there is no affiliation with or sponsorship by the Complainant, and Respondent stated that this non-affiliation is also made clear in initial contacts with clients or potential clients.” However, this is offset by counter facts. Complainant pointed out that it offers similar service without charge, that there are other competitive vendor-consultants who use appropriate domain names and “there are other domain names available [to Respondent] that do not incorporate its WALMART marks, which would allow Respondent to carry out its business intentions” and that Complainant itself.

In reaching its conclusion the Panel implicitly makes another point that differentiates UDRP jurisprudence from trademark law, namely that it is not a trademark court. “I make no comment whatsoever” (the Panel states) “on whether or not Respondent’s use of the Domain Name and Complainant’s WALMART marks on its website might otherwise be in violation of relevant United States state or federal trademark laws. He is simply concluding that “for purposes of the Policy, paragraph 4(a)(ii), Respondent has established a right or legitimate interest in the Domain Name through its continuous use for his consulting business.”

Complainant's Duty to Inform Itself as a Defense to Reverse Domain Name Hijacking

The sole remedy for respondents hauled into a UDRP proceeding without cause is a finding of reverse domain name hijacking. The term "reverse domain name hijacking" is defined in Rule 1 as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." The Rule is given substance in Rule 15(e) which states that

The Policy does not authorize the Panel to impose monetary sanctions. (As a footnote, the CIRA Domain Dispute Resolution Policy provides for damages up to $5,000 for "unfairly and without colour of right" commencing a proceeding to cancel or obtain a transfer of registration of the disputed domain name, paragraph 4.6.) Under the UDRP a finding of RDNH can be regarded more as a moral victory. It stigmatizes without tangible consequence.

RDNH, however, is not for the asking. It places on the respondent a burden of proof to demonstrate that in commencing the proceeding the complainant was acting in bad faith (see for example XIHA Oy v. Qiu Shengjie, Chen Qing Mei, D2010-1204 (WIPO October 28, 2010) discussed in Friday's Note and Altametrics, Inc. v. Ryan Sveinsvoll, FA1008001343628 (Nat. Arb. Forum November 11, 2010) ("unreasonable to expect Complainant, who originally filed this proceeding against a 'Domains by Proxy' undisclosed registrant, to know the myriad individual and corporate identities he maintains.") A domain name registered after the complainant's acquisition of a trademark requires more from the respondent to establish its bona fides; the reverse is true when the respondent registers a domain name prior to the establishment of a complainant's business. In Suzannah R. Noonan v. Kevin Sneed, FA1008001343308 (Nat. Arb. Forum October 22, 2010) the Panel stated that he was"troubled by Complainant's attempt to secure <energyfix.com>, a domain name that was registered and used to sell goods for months before Complainant's first use of the ENERGYFIX mark." Timing plus making a bona fide offering of goods or services is an insurmountable obstacle to bad faith and grist for RDNH.

This brings up an interesting point about a party's duty to investigate easily obtaining facts about domain names. Investigation is ordinarily discussed as the respondents duty imposed under its representation and warranty to the registrar and ICANN (paragraph 2 of the Policy). It is not generally thought about for the complainant, but it too has a duty of investigation. This is established in Rule 3(b)(xiv) – a Federal Rules of Civil Procedure Rule 11 equivalent – which provides that the complainant must

As the Panel in General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com, FA0602000651676 (Nat. Arb. Forum May 26, 2006 noted: "This is "essentially a certification and expansion of the duty of candor by legal counsel incorporated in ABA Model Rules of Professional Conduct 3.3."

The Panel in Suzannah R. Noonan held that a "simple WHOIS search would have informed Complainant that the disputed domain name had been registered seven months before her first use of the ENERGYFIX mark and therefore could not have been registered in bad faith. It is also evident from the Complaint that Complainant was aware that Respondent was selling goods using the disputed domain name, one of the activities that gives rise to rights and legitimate interests in a domain name.

Complainant waited 9 years before commencing the proceeding. "While the facts as to Complainant's actual knowledge cannot be established with certainty, the Panel concludes that the weight of the evidence indicates that Complainant was aware that she was not entitled to transfer of the <energyfix.com> domain name." All these reasons warranted a RDNH finding.

The doctrine that the first person to register a domain name is entitled to keep it does not secure a right under all circumstances, Educational Tertiary Service v TOEFL, D2000-0044 (WIPO March 16, 2000), although it will if the registration is made in good faith, XIHA Oy v. Qiu Shengjie, Chen Qing Mei, D2010-1204 (WIPO October 28, 2010). A registrant cannot, for example, intentionally appropriate a trademark for its domain name and claim priority because the trademark holder failed to register it first,which was the case in Educational Tertiary Service. Good faith is evidenced in one of two ways. The domain name was registered prior to the acquisition of a registered or common law trademark. Or, the domain name is composed of common terms that have currency in the marketplace without reference to the trademark.

A person who successfully registers a domain name and contends that he owns it despite the domain name being identical or confusingly similar to the complainant’s trademark is “subject to the three threefold requirements of the Policy,” VRL International Ltd. and International Lifestyles, Inc. v. Relevansanalys, D2009-0974 (WIPO September 3, 2009). The analysis necessarily focuses on the priority of rights. Targeting presupposes the existence of the complainant’s business and its trademark.

The unregistered trademark in XIHA Oy (a Swedish company) is an unusual combination of letters, but since it acquired its right to that mark many years after the respondent’s registration of the domain name it is in the unenviable position of making a claim that defies gravity. Under these circumstances “[i]t is not foreseeable that the Respondent could have had actual or constructive knowledge of the Complainant or the Complainant’s trademark XIHA at the time of registering the Disputed Domain Name.” The complainant carries the burden of proving a common law right if it allegedly preceded the registration of the domain name. However, the Complainant alleged no right prior to the registration of the domain name. It posited its allegation of bad faith on Respondent’s passive holding of the domain name and refusal to sell it at a price it deemed acceptable – “The Complainant had approached the Respondent some years ago by telephone to buy the Disputed Domain Name but the asking price was too high.” Neither of these facts can support bad faith. The Policy does not condemn marketing domain names for a price an arm's length purchaser is ready to pay.

Nevertheless, the Complainant argued “that despite the registration of the Disputed Domain Name pre-dating the Complainant’s trademark, the Disputed Domain Name was registered in bad faith.” There are, of course circumstances, under which bad faith may exist with a prior registered domain name, but it requires proof of “actual or constructive knowledge of an unregistered trademark or the application for registration of the trademark” by a well known complainant whose activities and plans have been widely reported in the media, citing several cases to this effect. However, the Panel was “unable to find any correspondence between these cases and the present proceeding.”

Registrations of domain names are not abusive merely because they happen to be identical or confusingly similar to a trademark. Something more is required, namely timing and targeting. The WIPO Final Report and UDRP recognize that the “behavior of innocent or good faith domain name registrants is not to be considered abusive.” A familiar complainant grievance is that “domain name dealers are cybersquatters because they acquire domain names without any intention of making any genuine active use of them and for no reason other than to sell them at a profit,” Solon AG v. eXpensiveDomains.com Project, D2008-0881 (WIPO August 1, 2008). However, as the Panel notes that “is not the definition of a cybersquatter envisaged by the Policy.” Although domain dealing carries with it certain duties of enhanced investigation which are greater than applied against individuals, it is not of itself either unlawful or the “vice at which the Policy is directed.” Rather, the vice is directed to registering and using domain names chosen intentionally to take advantage of the complainant’s reputation and trademark.

This reminds complainants that merely having or acquiring a trademark does not establish a right over an earlier registered, corresponding domain name. Neither use nor non-use by the respondent would justify forfeiture. The issue is illustrated in Almost Awesome, Inc. v. USAthletics, FA1009001344656 (Nat. Arb. Forum October 28, 2010). Concerned as the Policy is for protecting the rights of trademark holders it recognizes innocent choices. This is mostly seen in situations in which the complainant’s trademark right comes into existence after the registration of the domain name, although it does not exclude post-trademark rights for innocent registration of domain names composed of common terms. In Almost Awesome the domain name is composed of common terms – “walk,” “jog,” “run” – and the Respondent registered <walkjogrun.com> many years prior to the Complainant’s acquisition of its trademark.

The Policy is not in the business of awarding domain names to trademark holders even though the evidence may demonstrate that the respondent lacks rights or legitimate interests in the disputed domain name, as is the holding in Almost Awesome. Non-use supports lack of right or legitimate interest, but not bad faith. “[Here] the Respondent has registered a descriptive or suggestive domain name, ten years before a trademark has received protection through overcoming the descriptiveness through acquired distinctiveness on the basis of use.” To this is added the fact that “the Respondent has been consistent in its non-use and parking of the disputed domain name.” Ultimately, a complainant prevails on its claim only if it is able to prove that the respondent both registered and is using the disputed domain name in bad faith.

The conjunctive requirement for registration and use in bad faith is not relaxed or inapplicable for domain names passively held, although under the “retrospective bad faith” construction of the Policy discussed in earlier Notes a claim could conceivably spring from subsequent bad faith use. Although renewal of registration was not in issue in Almost Awesome, the Panel rejected the construction of the Policy offered in Eastman Sporto Group, LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) that a renewal triggers appraisal of the Respondent’s bad faith registration if current use is in bad faith.

A person is free to choose any string of phonetic elements or numbers as a domain name as long as the choice does not infringe the legal rights of any third party. In making a choice, the registrant is doubly bound. It represents and warrants in the registration agreement and further assents to a similar although more detailed provision in the Policy that

A respondent is more likely to be called to account and its actions found abusive where the domain name is identical or confusingly similar to a trademark with an established reputation, and less likely where the respondent has registered a domain name composed of common terms used in a non-infringing manner. Of recent cases, National Association of Realtors v. John Fothergill, D2010-1284 (WIPO September 20, 2010) is on one end of the spectrum (where it cannot plausibly deny knowledge of the complainant) and Halo Innovations, Inc. v. Name Administration Inc. (BVI), FA1009001344653 (Nat. Arb. Forum November 3, 2010) on the other (where it can). National Association of Realtors was discussed in the October 26 Note.

The domain name in Halo Innovations which was registered after the Complainant's application for its trademark SLEEP SACK is identical to the it (<sleepsack.com>). However, the Complainant ran into opposition to its proposed trademark and its application only advanced to registration on the Principal Register on March 30, 2010. The Respondent is a domainer, a class of registrants held to a higher standard of investigation under the representation and warranty provisions. The question is, What action must the registrant take to avoid infringement and what investigation satisfies its duty?

It is settled that a respondent cannot be willfully blind to a trademark holder's rights, but it is equally settled that a complainant cannot establish willful blindness by alleging that the domain name is identical or confusingly similar to a trademark. The Complainant alleged that

The phrase "should have" (the saddest combination of words in the lexicon) is not a substitute for proof. UDRP requires evidence of actual not constructive notice, although proof of the former may be inferred from the factual circumstances. In many of these cases it is found that whatever the complainant's reputation may be in the present it was not in the past. This places on the complainant a burden of demonstrating that so considerable was its reputation when the domain name was registered that it belies the respondent's denial of actual knowledge. However, the Panel agreed that the "domain name is comprised entirely of common terms that have many meanings and that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith." So, separate and apart from the fact that the Complainant in Halo Innovations did not satisfy that burden of proving actual knowledge, the Respondent's use of the website "to display[ing] links to camping goods is a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy."

The Panel in Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, D2010-1413 (WIPO October 27, 2010) notes that “we are dealing with an unusual situation” in this case. Unusual not because the Respondent defaulted in appearance or even that the record is skimpy but that the Panel “consider[ed] itself competent to independently visit the Internet to obtain additional information in a default proceeding.” There is precedent for this, despite Rule 15(a) of the Rules which states that a Complaint should be decided "on the basis of the statements and documents submitted." An early decision stated that the Panel could perform “limited modest factual research,” InfoSpace.com, Inc. v. Hari Prakash, D2000-0076 (WIPO April 6, 2000). The Consensus View is that the “panel may visit the internet site ... [and] also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision,” Paragraph 4.5 WIPO Overview of WIPO Panel Views on Selected UDRP Questions. But, what is “modest” and “limited”?

In Tradewind Media, the Panel essentially created a record, which ordinarily would be the respondent’s obligation in defending itself, and denied the complaint. The Panel’s investigations ultimately found a criticism site. Initially, he wanted to see whether the “INTOPIC mark is being tarnished or diluted” as the Complainant alleged. There was no “tarnishment” – as that word is used in paragraph 4(c)(iii) of the Policy – because the domain name resolved to a website claiming to be in “Maintenance Mode.” So the Panel did a further investigation that

Pure criticism sites are protected under free speech principles – “pure gripe sites are those that present no indicia of bad faith beyond the fact that they are highly critical of the target,” Bloomberg L. P. v. Secaucus Group, FA0104000097077 (Nat. Arb. Forum June 7, 2001) – but it is “unusual” for the Panel to make the respondent’s case. The decision in Tradewind Media turned on what the Panel did not see on first going into the website, but (persevering) saw in the cached snapshots. Ordinarily, respondents add a pejorative to the trademark to signal criticism, as in HBT Investments, LLC d/b/a Valley Goldmine v. Christopher D. Bussing, D2010-1326 (WIPO September 24, 2010) in which the Respondent added “–sucks”; or, in another recent country code decision, the Respondent added as suffix to the TLD “–ihate.”

The difference between Tradewind Media (Respondent keeps the domain name) and HBT (Respondent forfeits the domain name) is that in the latter the Respondent, a competitor, had an “impure” motive in “suck[-ing]” the Complainant. Its speech (according to the Panel) was with “intent for commercial gain ... to tarnish the trademark or service mark at issue.” That is not the case in Tradewind Media. As in “other disputes between two United States based parties which involve criticism, panels have recognized that First Amendment protections can give rise to a claim of fair use on the respondent’s part,” citing among other decisions Howard Jarvis Taxpayers Association v. Paul McCauley, D2004-0014 (WIPO April 22, 2004) in which the Panel noted that the “Policy is designed to prevent abusive cybersquatting, but under United States law, it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. That is true even if the critical views are unfair, overstated, or flat-out lies, and even if they are posted at trademark.TLD websites.” Like Howard Jarvis, the Tradewind Media Respondent is not a competitor, unlike the Respondent in HBT who is.

Abusive Registration Proved by Bad Faith Use Under Paragraph 4(b)(iv) of the Policy?

Paragraph 4(b)(iv) is different from the other examples of bad faith in that it refers only to "use" while (i),(ii) and (iii) refer only to registration. Paragraphs 4(b)(i) and (ii) include the phrase "primary purpose"; paragraph 4(b)(ii) implies it. The (4)(b) preface, however, reads that "[f]or 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." Paragraphs 4(a)(iii) and 4(b) have been construed to require that the complainant prove both registration and use in bad faith.

Further, according to those panels, the word "and" is used conjunctively not disjunctively; thus, it is plain and unequivocal that initial registration in bad faith by the Respondent is a prerequisite to success under the Policy." The Jappy Panel is of the view that "and" and "or" are interchangeable and offers in support what I previously termed a W.S. Gilbert quip from Lord Salmon (Note of November 1). The plain meanings of the words, however, as defined in The Third International Dictionary are: "and" means "along with" or "together with" as opposed to "or" which means "alternative to."

The Jappy Panel would reconfigure the UDRP to be more like the ACPA and country code policies in which a defendant/respondent is statutorily liable for cybersquatting when it violates Paragraph 4(b)(iv) of the Policy regardless whether it registered the domain name in good faith. While it is true that the precedential construction under the Policy leads to anomalous verdicts in which the respondent prevails despite its egregious bad faith use of the domain name it is (and for the last 11 years has been considered to be) the "policy" choice determined by ICANN as recommended by WIPO.

There are two hooks to the Jappy and Octogen construction. The linguistic hook is the absence of the word "registration" in paragraph 4(b)(iv) which yields the conclusion that bad faith use is abusive regardless of good faith registration. This (according to the Octogen Panel) is reinforced by Paragraph 2 of the Policy which reads: "[Y]ou will not knowingly use the domain name in violation of any applicable laws or regulations." According to the Octogen Panel "this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations." It is the lynchpin for the construction.

The UDRP is more forgiving than the Anticybersquatting Consumer Protection Act (ACPA) in that the complainant must plead and prove both registration and use in bad faith. So that, while (under the UDRP) bad faith registration presupposes bad faith use, bad faith use is not (at least, has not generally been found to be) conclusive of bad faith registration. In contrast, the ACPA clearly spells out a disjunctive requirement – "registers, traffics in, or uses a domain name"protected as a mark, 15 U.S.C. § 1125(d)(1)(A)(ii). This either/or model has also been adopted in country code policies. Although the "disjunctive approach to bad faith ... has much to recommend it," Editions Milan v. Secureplus, Inc., D2010-0606 (WIPO June 10, 2010), it is "not importable into the UDRP."

The conjunctive requirement, however, is coming under increasing attack, as is clear in Jappy GmbH v. Satoshi Shimoshita, D2010-1001 (WIPO September 28, 2010) in which the 3-member Panel announced that "and" can mean "or," quoting Lord Salmon's [Federal Steam Navigation Co Ltd v. Department of Trade [1974] All ER 97 at 112] W.S. Gilbert observation about these two words: "My Lords, I do not suppose that any two words in the English language have more often been used interchangeably than 'and' and 'or'. However unfortunate or incorrect this practice may be, many examples of it are to be found in all manner of documents and statutes. There are many reported cases which turn upon whether, in its particular context, the word 'or' is to be read conjunctively or the word 'and' disjunctively." The Jappy construction which rests on the Octogen line of cases and defies 10 years of precedent will be discussed in a later Note.

The precedential construction which Jappy opposes rests on the accepted definitions of "and" and "or". The less forgiving ACPA model -- the "either/or" model -- is illustrated by the decision in DSPT International v. Nahum, 08-55062 (9th Cir. 10-27-2010). The Court made it clear that a registrant's use of a domain name to leverage a benefit in a business dispute violates the statute even though it may have been registeredin good faith. "Nahum could not have reasonably believed that he could lawfully use 'eq-Italy' when he no longer worked for DSPT." The Court continued "Factor VI may fairly be read to mean that it is bad faith to hold a domain name for ransom ... where the holder uses it to get money from the owner of the trademark rather than to sell goods." So that

Under this reading it is not necessary to have any "direct evidence of an explicit offer to sell the domain to DSPT for a specified amount [.] [T]he jury could infer the intent to give back the site to DSPT only if DSPT paid Nahum the disputed commissions." The ACPA Factor VI [roughly similar to paragraph 4(b)(i) and negativing 4(c)(i) of the Policy] provides that it is "indicative" of a "bad faith intent to profit" from the mark "if the person offering to transfer the domain name to the owner of the mark has never actually used or intended to use the domain name for bona fide sales of goods." The logic of this conclusion which dovetails with the Octogen and Jappy analysis is that using a trademark incorporated domain name (paragraph 4(b)(iv) of the Policy) would a fortiori be bad faith regardless of the registrant's innocense in putting up the website.

The test for proving a common law right is demanding. It cannot be satisfied by asserting facts unaccompanied by evidence establishing their truth. The Overview of WIPO Panel Views on Selected UDRP questions at paragraph 1.7 states in relevant part

The objective evidence to meet the test is particularly within the complainant’s control, just as the evidence for a right or legitimate interest is in the respondent’s. Vehicle dealerships pass the WIPO Overview test, Weil Cadillac-Hummer, Inc. v. Stanley Pace, D2010-1711 (WIPO December 7, 2010), and cases cited therein; trademarks descriptive of the complainant’s services on assertions alone do not, ElderCare Advocates, Inc. v. Isaac Goldstein, FA 1357548 (Nat. Arb. Forum December 13, 2010).

In 3DCafe, Inc. v. 3d Cafe.com, FA1010001351489 (Nat. Arb. Forum December 20, 2010), like "Eldercare Advocates" another generic phrase unparticularized as to source, the Complainant alleged a common law trademark by assignment from an entity that operated its business prior to the registration of the domain name. However, the Complainant failed to name the entity or entities which allegedly traded under the mark since 1991. Commenting on this, the Panel observed that “[a]ssuming that it did have some right as an assignee to an interest in a common law mark if any, the fact that it may have had a presence on the Internet since 1991 is not enough. The one document made 19 years ago is hardly sufficient to provide evidence of a common law mark.” Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts, Time Equipment Corp. v. Stage Presence, D2003-0850 (WIPO December 23, 2003).

The Complainant in Tower Research Capital, LLC, managing member of Limestone Trading, LLC v. Limestone, FA 1349315 (Nat. Arb. Forum December 22, 2010) demonstrates expectation satisfied. It t “provided evidence to show that it has been in the business of futures trading since its first registered itself as a limited liability company with the state of Delaware on April 5, 2000.” It also offered proof that it has traded several million contracts since 2000 on various exchanges worldwide, and that it has done so extensively and continuously under the LIMESTONE TRADING mark. The disputed domain name is a string of letters abbreviating the dominant portion of its mark “lmst” with the suffix “fx” which is an abbreviation of the phrase “foreign exchange market.” The Panel agreed with the Complainant that the “Respondent’s use of an abbreviation for the dominant portion of its mark coupled with an abbreviation of a term that describes Complainant’s trading business renders the domain name confusingly similar to Complainant’s mark.”

There are two classes of respondents whose registrations have been found to be immune from presumptive bad faith use even though the websites to which the domain names resolve at the commencement of the proceedings contain links that would otherwise be considered a violation of the Policy. These are newly acquired domain names populated either by 1) a prior registrant who has allowed its registration to lapse and the successor registrant (the respondent) has not had time to post its own content [A. D. Banker & Company v. Domain Invest, D2010-1044 (WIPO September 30, 2010) ]; or, 2) the registrar for its own account before the registrant has launched its own website [Fireman's Fund Insurance Company v. Steve Schwartz, FA1010001355350 (Nat. Arb. Forum December 15, 2010)].

The "key issue" in A.D. Banker and other cases on the cusp of legitimacy, is "whether the Respondent sought ... to profit from the similarities between the Complainant's mark rather than any generic meaning of the domain name. If it did, the Domain Name is likely to have been registered and used in bad faith." The Panel resolved the key issue in Respondent's favor, not because it was overly persuaded by its arguments but that the Complainant failed to respond to the Respondent's "technical claims" in its supplemental submission. The "technical claims" relate to the timing of webpage changes, that there would not have been time for them to be "reflected in the various cached servers throughout the world." According to the Respondent and reluctantly accepted by the Panel"it would be unfair to draw any conclusions adverse to the Respondent's motivations and intentions from web pages that were dated the day after the Domain Name was transferred." The Panel's reluctance is noted in the final paragraph of the decision, inviting the Complainant to refile if subsequent use "would seriously undermine the credibility of a number of the assertions that have been made by the Respondent and which have been key to the Panel's findings in this case."

In Fireman's Fund, the Respondent persuaded the Panel that its registration for future use of <firemansfundblog.com> was not in bad faith. The domain name was confusingly similar to the Complainant's trademark, but he simply had not had time to post his commentary. Under these circumstances, "although the fair use criteria under Policy ¶ 4(c)(iii) is inapplicable to demonstrate Respondent's rights and interests in the domain name because the at-issue domain name is not being used, Respondent's reasonable future fair use of the domain name for non-commercial commentary, absent any compelling evidence to the contrary, precludes a finding of bad faith registration and use." Resting a defense on future use is not generally acceptable. Here, it is found acceptable because (presumably) the Respondent should be given reasonable time to launch his Blog and demonstrate his good faith regardless of the transient offensive links.

Domain names that mimic trademarks composed of common words that have achieved extraordinary penetration in the domestic and international marketplaces are more likely to be seen as opportunistic registrations [Honeywell International Inc. v. Celeris Controls, FA1010001351938 (Nat. Arb. Forum November 15, 2010)]; less likely with trademarks confined to niche markets [Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010) (<webvision.com>)]; and less likely further with trademarks composed of the commonest of dictionary words [CareFree Homes II, L.P. v. Worldwide Media, Inc. / Domain Administrator, FA1010001351494 (Nat. Arb. Forum December 7, 2010)].

Foreign complainants of trademark registrations consisting of plain English words that may have penetration in their domestic marketplaces but unrecognized out of it must establish that in registering the domain name the respondent had it in mind. An illustration of the evidentiary hurdle is Visa Europe Limited v. Name Administration Inc. (BVI), D2010-1531 (WIPO December 14, 2010). The Respondent contended that the “[w]here a domain name consisting of common terms [here, ‘premier’ and ‘card’] is demonstrably used for an advertising purpose suggested by the primary meaning of the constituent components of the domain name itself, such use is not illegitimate under the Policy.” The Complainant holds a trademark registration in France for PREMIER; the disputed domain name is <premiercard.net>.

“Premier” is a common qualifier in the banking industry “in connection with the marketing and promotion of premium banking and credit services (and, indeed, in respect of a wide range of goods and services in numerous industries), both in France and worldwide.” The component words are descriptive; and not specifically identifying the Complainant as the sole source of banking services.

Visa Europe’s “premier” business is centered in France. The Respondent operates an English language domain name for an English language website. It does not compete with the Complainant. Pay-per-click advertising is not per se illegitimate. “The crucial issue in respect of this proceeding is whether the Respondent was aware of the Trade Marks at the time it registered the disputed domain name. The Complainant has asserted that the Respondent clearly had knowledge of the Complainant and its Trade Marks at that time.” Being aware answers the question of targeting. Denial is made more plausible by distance; not in miles but in language. However, “[t]he lack of distinctiveness of the wording component of the Trade Marks lends weight to the Respondent's arguments, as do the facts the Complainant has used the Trade Marks primarily if not solely in the French market, whereas the Website operates entirely in the English language.” Thus, audience is singled out as a significant factor in determining whether the registration is abusive. See General Motors LLC v. Shenzhen Belding Golf Planning Co.,ltd., D2009-1781(WIPO February 10, 2010) in which the Chinese Respondent targeted an English language audience.

Omitting, Adding, Transposing and Substituting Letters as Evidence of Typosquatting

The Panel in Apple Inc. v. Andrew Sievright, Domain Source, D2010-1916 (WIPO December 8, 2010) (<appl.com>) notes that "[t]yposquatting is as close as it is possible to come to per se cybersquatting." The reason for this is the obviousness of respondent's knowledge of the trademark and its opportunism in making typographical variations of it for commercial gain. Omitting an "e", but populating the website with links to competitors is conclusive proof of abusive registration. Other 2010 cases illustrate the cat and mouse game by adding, transposing and substituting letters to defer or elude detection. The Respondent in Credit Agricole S.A. v. Dick Weisz, D2010-1683 (WIPO December 1, 2010), for example, added a hyphen and omitted the accent from the letter "e" in registering <credit-agricole.info>. It has long been established that "minor modifications to a trademark do not diminish in any significant way the likelihood of confusion between the disputed domain name and Complainant's trademark."

In many instances, respondents compose their domain names in the expectation that Internet users will mis-type or mis-remember the spelling of the the trademark. In Wells Fargo & Company v. Adjaele Global Internet Ltd., FA1010001352949 (Nat. Arb. Forum December 6, 2010) the respondent switched "e" and "r" which are side by side on the querty keyboard and spelled WELLS FARGO as <wellsfaego.com>. In McAfee, Inc. v. QTK Internet/Name Proxy/Private Registration /Damian Macafee, FA1010001351950 (Nat. Arb. Forum December 3, 2010), the Respondent added an "a" to MCAFEE to create <macafee.com>. These, like APPLE, are more obvious because the trademarks are well known or famous. The Panel in Apple, however, cautioned that not all mis-spellings of "apple" are typosquatting. He says, "[e]ven the renown of Complainant and its marks does not confer a worldwide monopoly on the right to use the word APPLE or a variant in a domain name, under the Policy or under United States trademark law. The Panel points this out in the hope that Complainant, unlike some other owners of famous brands that incorporate common words, will limit its vigilance to proper circumstances, as it apparently has so far done."

It happens that there are not a few cases in which typosquatting could be alleged because of a one letter difference, but there is no persuasive evidence of abusive registration. This was observed, for example, in Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010) discussed in the December 15 Note. The Respondent's domain name was confusingly similar to the Complainant's trademark by "reduc[ing the word from] a plural term to the singular," WEBVISIONS to <webvision.com>. The difference between the APPLE reduction and the WEBVISIONS reduction is that the content in Apple allowed for a strong inference of opportunism. If content clearly demonstrates a respondent active in a completely different line of business, using a confusingly similar name does not support lack of right or legitimate interest. Complainant's failure to prove paragraph 4(a)(ii) of the Policy or the respondent's proof it has a right or legitimate interest in the disputed domain name is conclusive against abusive registration.

A respondent's assertion that its domain name is composed of a generic term with an added "a", Cabela's, Inc. v. Elisa Browning, FA1009001345984 (Nat. Arb. Forum November 7, 2010) (<cableas.com> is as equally unfounded as a complainant who asserts its trademark is fanciful, Havanna S.A. v. Brendhan Hight, Mdnh Inc., D2010-1652 (WIPO November 26, 2010) (<havanna.com>). In Cabela's the respondent was tripped up on her content; in Havanna, the Complainant learned that "Havanna" is the correct spelling in a number of European languages for what in English is Havana and that Respondent's website contained links of travel information useful to European travelers to Cuba. Thus, while "[t]yposquatting is as close as it is possible to come to per se cybersquatting," some apparently incorrect spellings are, well, correct for the audience and content of the website. Omission of letters is the more likely candidate to have been registered in good faith ("appl" notwithstanding), as opposed to adding and transposing letters as seen in several of the cases noted above.

Legitimate Business Model to Use or Sell Domain Names Composed of Generic Terms Without Intention to Profit from Complainant's Trademark

In prosecuting a claim under the UDRP the complainant cannot prevail unless it demonstrates that the respondent had its trademark in mind when registering the domain name and intended to take advantage of it for commercial gain. There is no per se illegitimacy in registering and using a domain name identical or confusingly similar to a trademark. Some complainants, however, have an inflated view of their trademark’s fame and penetration in the market which leads to their belief that the respondent could only have been targeting them in choosing an identical or confusingly similar domain name.

The Complainant in Havanna S.A. v. Brendhan Hight, Mdnh Inc., D2010-1652 (WIPO November 26, 2010) argued “that a domainer operating a domain name linked to a link farm parking page to generate income through PPC advertisement can per se not have a right of legitimate interest in the domain name.” In VEDA GmbH v. Future Media Architects, Inc. / com fma, FA1009001347931 (Nat. Arb. Forum November 29, 2010) the Complainant “contend[ed] that none of Respondent's domain names have been used for any legitimate interests and contends that all of Respondent's web sites exhibit only token use for the purpose of UDRP proceedings.”

Although PPC advertising and “token use” of domain names do not of themselves support bad faith, they may support a respondent’s lack of right or legitimate interest. The consensus is that where the respondent “has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain,” lack of bona fide use on its own is insufficient to establish bad faith,” Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO October 12, 2001).

The Respondent in Havanna has as a target audience for its website European travelers to Cuba. In opposition to the Complainant who contends that “havanna” is not generic because the capital of Cuba is “Havana” or “La Habana”, the Respondent argues

This is a pursuasive argument. Respondent is found to have rights or legitimate interests because, among other things, “the web page under <havanna.com> does not on the present record appear to have links based on the value of Complainant’s trademark, but only on the generic meaning of Havana as the capital of Cuba.”

A complainant's trademark may be well known internationally in its particular market without being known generally or to the respondent. The disputed domain name in Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010), <webvision.com>, is almost identical to WEBVISIONS, differing only in omitting the plural "s". Changing the form of a name (which may be taken as typosquatting) does not distinguish the domain name from a trademark and is not sufficient to dispel any likelihood of confusion. Indeed, "many cases have found that the addition, omission or transposition of a single letter can be a common source of confusion." The "common source of confusion" in this sentence means confusing similarity between the domain name and the trademark rather than likelihood of confusion as to source in the trademark sense.

The difficult hurdle for the Complainant in Webvisions is to prove that the "reduc[tion] ... [from] a plural term to the singular" was intended to take advantage of its trademark, or merely adventitious. The Panel takes a step by step approach in reaching the conclusion that the evidence offered by the Complainant is insufficient:

Although the disputed domain name did not resolve to an active website for several years "[a]t the time this decision was prepared, however, the disputed domain name did resolve to a website that appears to offer a range of IT services, but not on their face the web hosting or ISP services for which the Complainant has secured a trademark registration." The Panel continued: "If this website accurately reflected the Respondent's activities, it might well found a basis for inferring that the Respondent was conducting a legitimate business that did not conflict with the Complainant's registered trademarks in the USA."

Although the Panel found that Respondent lacked rights or legitimate interests in the disputed domain name (principally a consequence of Respondent's decision not to answer the complaint and explain why the contact information was inactive), nevertheless "the website exhibits a degree of sophistication and scale of business which appears quite at odds with the Respondent's portrayal of himself in his emails requesting an extension of time, or assistance in making such a request, as a small business which was being unfairly taken advantage of by a much larger business."

The Complainant's inability to prove that the Respondent registered the domain name with its trademark in mind is not surprising limited tools of the UDRP. "Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant." The Panel explained that

The Complainant has to contend with two obstacles: that it is a niche provider of services and that the composition of its trademark is not remarkable. "Further, ... there has been a Webvision Corporation or Webvision Inc. operating at various times in the USA. While that entity is apparently now defunct and initially operated out of California, it does appear that it was based in Austin Texas for a period." The significance of this is that the Complainant cannot demonstrate conclusively that the Respondent had its trademark in mind in registering the domain name. The rule is that a trademark not alone used by a complainant undermines its contention that it was targeted by the respondent. More is required than a supposition of targeting.

In view of the fact that the UDRP is a paper only proceeding the pleadings and evidence must be developed with as much care and the record be as complete as a motion for summary judgment in a civil action. Proof of a fact is not satisfied by assertion or supposition, but requires concrete evidence. "'Concrete evidence' constitutes more than mere personal assertions," Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000). In Clark Associates, Inc. v. Belize Domain WHOIS Service Lt, FA1010001353058 (Nat. Arb. Forum December 6, 2010) the Panel found the Complainant deficient in making its prima facie case that the respondent lacked rights or legitimate interests in the disputed domain name, citing Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) for the proposition that parties have to allege and prove their contentions. In Yao Ming, the Complainant failed to "allege[] any facts related to Respondent's use of the disputed domain name" thus suggesting a pleading deficiency. If the facts are either not pleaded or if pleaded and not proved the "Panel has no knowledge of Respondent's use of the domain name upon which to base a decision under Policy ¶ 4(a)(ii) and (iii)," Yao Ming.

The Complainant in Clark Associates, as with a number of other recent complainants whose rights post-date the registration of the domain name, is essentially using the UDRP in an attempt to capture domain names that correspond with their newly minted trademarks. See for example X6D Limited v. Telepathy, Inc.,D2010-1519 (WIPO November 16, 2010) discussed in an earlier Note (reverse domain name hijacking granted); CareFree Homes II, L.P. v. Worldwide Media, Inc. / Domain Administrator, FA1010001351494 (Nat. Arb. Forum December 7, 2010)(reverse domain name hijacking denied); and Zerorez Franchising Systems v. Whois Privacy Protection Service, Inc. c/o Whois Agent, FA 1354124 (Nat. Arb. Forum December 6, 2010) (reverse domain name hijacking not put in issue). These are cases in which no assertion of fact can be validated and proved for a UDRP remedy.

Although there may be circumstances that support a finding of bad faith, an active or passively held domain name registered before a complainant's right has come into existence cannot have been registered with the complainant in mind. Such are the facts in Clark Associates with <webstaurant.com>. "The record shows that Respondent registered the disputed domain name August 18, 2004." But, "Complainant has failed to establish rights in the THE WEBSTAURANT STORE mark prior to June 29, 2009." The Complainant has standing based on its latterly obtained trademark but it has no actionable claim.

The sufficiency demanded in prosecuting or defending a claim applies in equal measure to both complainant and respondent. "Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the panel require that a respondent come forward with concrete evidence that the assertions made in the response are true," Do the Hustle. Thus, for example, a respondent's allegation that it is "commonly known by the domain name" is unpersuasive if the name was adopted for the registration. In Jay Leno v. Guadalupe Zambrano, D2009-0570 (WIPO June 25, 2009) the Respondent failed to understand the distribution of burdens. He argued against the grain that "it should be the Complainant's responsibility to prove that [the respondent] has benefitted from directing the disputed domain name to his website." Ingenious though this argument may be, it does not support any known defense.

In assessing whether a domain name is confusingly similar to the complainant's trademark the analytical procedure is to make a side by side comparison of the two. The "www" prefix and the "gTLD" are disregarded as functional elements. The focus is solely on the second level domain (SLD). As a general rule if the SLD contains the trademark in whole it is confusingly similar to the trademark. This assessment does not foretell the complainant's right to capture the domain name; it is a jurisdictional ruling which simply determines whether the complainant has standing to maintain the proceeding. The alternative is to dismiss the complaint notwithstanding the domain name incorporates the complainant's trademark. This latter procedure appears to make sense when the domain name that incorporates the trademark resolves to a website whose content is protected speech under paragraph 4(c)(iii) of the Policy. A recent example is Twentieth Century Fox Film Corporation v. DISH Network LLC, FA1010001350483 (Nat. Arb. Forum November 22, 2010) (a decision made over dissent) in which the Respondent incorporated commercial, disputatious and sloganeering commentary in the disputed domain names [<foxshakedowndish.com>, <weofferedfoxafairdeal.com>, <foxrefused.com>, and <jointhefightagainstfox.com>].

The question is, Is it appropriate to employ the latter procedure for domain names incorporating trademarks that are commercial in nature, rather than "noncommercial and fair use"? The purpose of such domains being registered is (unabashedly) to create income streams. The latest on this point is Hoffmann-La Roche Inc. v. Mikhail Pavlishin, D2010-0998 (WIPO December 3, 2010) which despite its case number has only just been reported [Hoffman-La Roche(2)]. The Panel dismissed the complaint on <buygenericaccutane.org>; the Respondent defaulted in appearance. The Panel noted that she was aware "of a substantial line of cases in which panels appear to have effectively applied this principle [that is, incorporating in full the trademark] under the first element of the Policy as a per se rule." She continued: "Notably, one panel recently ruled that the domain name <buygenericaccutane.net> is confusingly similar to the mark ACCUTANE. Hoffmann-La Roche Inc. v. Michail Sidorenko, WIPO Case No. D2010-0581[Hoffman-La Roche(2)]."

So what we have are two panelists with different views (one I think correct) about the proper analytical procedure involving the same Complainant and the identical SLD. This is not good advertisement for consistency of jurisprudence and predictability in the resolution of disputes. ICANN panelists early recognized that UDRP should not be a roulette wheel; that they should aim for a high degree of consistency (the achievement of which is the basis for predictability). The goal is achieved through "a strong body of precedent" which "is strongly persuasive" even if not binding, Pantaloon Retail India Limited v. RareNames, WebReg, D2010-0587 (WIPO June 21, 2010).

The "precedent" ignored by Hoffman-La Roche (2) is compelling. She flatly states that she "does not agree with the approach" of a significant body of precedent reaching back to the beginning of UDRP. She cites half a dozen cases with which she "disagrees" and there are dozens of other cases cited in those cases for the proposition that incorporation of a trademark in whole supports confusing similarity. The reasons for the "disagreement", however, is unpersuasive (at least to this reader), and that is "it effectively transforms a general principle into a mechanistic rule severed from the general principle's underlying logic." This "logic" does not make sense (at least for domain name created for commercial gain) when the reason for the analytical procedure is simply to determine whether the Complainant has standing to maintain the proceeding. For claims within the Policy's jurisdiction past Panels have emphasized that decisions "should consist of more than, 'It depends [on] what panelist you draw'," Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001) (<lifemagazine.com>). Hoffman-La Roche(2) drew the wrong panelist!

Offering to Sell a Domain Name Not Bad Faith Unless Registered with that Specific Intent

It is not selling domain names that is unlawful under the UDRP but registering them “primarily” with that purpose in mind to the trademark holder or competitor. The Complainant in X6D Limited v. Telepathy, Inc.,D2010-1519 (WIPO November 16, 2010) contends that the disputed domain name, <xpand.com> has been used in bad faith because the Respondent indicates on its website that it “is likely to ignore offers below USD 40,000 for a domain name.” The Complainant in Bible Study Fellowship v. BSF.ORG / Vertical Axis Inc., D2010-1338 (WIPO November 29, 2010) points out that Respondent is offering <bsf.org> for sale through the web site “www.domainbrokers.com” for the minimum price of USD 10,000 and contends that the amount requested by Respondent is in gross excess of Respondent’s direct out-of-pocket costs for the Domain Name, which of course it most likely is.

Complainants’ underlying assumption in these cases is that they have a superior right to the domain names because (arguably at least) they correspond with their trademarks regardless of when the respondents acquired the domain names or the circumstances of their acquisition. But, common words and phrases that holders have turned into trademarks are not by virtue of their registrations withdrawn as coin in the virtual marketplace. “Due to the commercial value of descriptive or generic domain names it has become a business model to register and sell such domain names to the highest potential bidder,” X6D. Domain names acquired without knowledge of another’s trademark rights or prior to any trademark rights coming into existence do not support an inference of bad faith. “Making an offer to sell a domain name at a market-valuation price, even if it could have been above the out-of-pocket costs directly related to the domain name, when solicited by Complainant ten years after the registration, is no evidence of knowledge of Complainant at the time of registration,” Bible Study Fellowship.

Earlier registered domain names regardless of their website content can never have been registered in bad faith, although they may have become infringing in use. The question in both X6D and Bible Study Fellowship is whether the Complainants abused the Policy by commencing the proceedings. In X6D, “the Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its XpanD Mark. ... The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.”

Bible Study Fellowship got away with a rebuke but not reverse domain name hijacking because although the “Complainant’s allegations have not been substantiated by relevant evidence ... the lack of explanation on the generation of the web page displaying Bible links is not suggestive of a good faith behavior of Respondent.” This emphasizes the evidentiary requirement for the respondent to prove bad faith on complainant’s and good faith on its part to be entitled to a RDNH finding.

Domain Names Similar But Not Confusingly Similar to Trademarks in Determining Threshold Issue

That respondents can avoid the ultimate penalty of forfeiture with a trademark plus negative or disputatious terms is well established as a defense under paragraph 4(c)(iii) of the Policy. There is another class of domain names incorporating trademarks or their dominant features that although similar in part are not confusingly similar so as to sustain an actionable claim. This is when the lexical elements "eliminate the possibility of confusion," Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC v. EnviroCitizen, LLC., FA1008001342402 (Nat. Art. Forum November 26, 2010). In the case of Morgan Stanley the added part is "screwed by" to form <screwedbymorganstanley.com>. This is a name (to quote from another case) "which, by its very nature, declares" its hostility to the complainant, America Online, Inc. V. Johuathan Investments, Inc. & Aollnews.com, D2001-0918 (WIPO September 14, 2001)(<fucknetscape>). "Screwed by" and "fuck[tradmark]" "clearly indicat[e] that the domain name is not affiliated with the trademark owner."

Even though the possibility of confusion is eliminated, which supports finding no confusing similarity, two approaches have developed: terminating the proceedings forthwith and noting complainant's failure of prove its trademark right while remarking on the evidence as to the second and third elements. With respect to the first approach, if the complainant fails to prove the threshold element it should be conclusive regardless whether the content of the website is protected speech under paragraph 4(c)(iii) of the Policy. The second approach is suggested in Medimmune, Inc. v. Jason Tate, D2006-0159 (WIPO April 14, 2006). The Panel found that Respondent's "site does not even seem to carry any genuine message at all." He concluded that these "[s]o-called 'sham speech' domain names [are] selected not for any genuine purpose of providing critical commentary about a product or company but rather solely for the purpose of avoiding transfer under the Policy while accomplishing some unrelated business purpose (e.g. obtaining click-through revenue)." Nevertheless, the phrases "bad for you" and "not safe" added to SYNAGIS are instantly clear of their purpose and that finding is conclusive of the issue of confusing similarity.

While domain names instantly clear of their purpose or "by its very nature [hostile]" should conclude the issue of confusing similarity it can nevertheless shelter respondents who have "no genuine purpose of providing critical commentary." Pure as opposed to sham speech is properly protected. Paragraph 172 of the WIPO Final Report states that "Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial consideration ... [are] ... not [] considered to be abusive." But, sham speech creates an opportunity for commercial gain for which, the Mediumme Panel suggests, is not actionable. There have been exceptions to the rule that added terms, negative or otherwise, eliminate the possibility of confusion. In Baylor Univ. v. Sysadmin Admin, FA 1153718 (Nat. Arb. Forum Apr. 11, 2008) for example the Panel found that <ihatebaylor> was confusingly similar to the BAYLOR mark. But, the consensus appears to support terminating the proceeding regardless whether the speech is sham. For example, the additions in Citigroup, Inc. v. Allman, FA 1066738 (Nat. Arb. Forum October 16, 2007) adding "rip-off" (<primericaisarip-off.com>) and the Royal Bank of Scotland Group plc v. natwestfraud.com, D2001-0212 (WIPO June 18, 2001) adding "fraud" (<natwestfraud.com>) were of the hostile kind, thus no purpose for pursuing the assessment further.

In contrast to Morgan Stanley and Medimmune and consistent with America Online, Citigroup and Royal Bank of Scotland, the majority in Twentieth Century Fox Film Corporation v. DISH Network LLC, FA1010001350483 (Nat. Arb. Forum November 22, 2010) which is discussed in the November 26 Note voted to terminate the proceeding after concluding that <foxshakedowndish.com>, <weofferedfoxafairdeal.com>, <foxrefused.com>, and <jointhefightagainstfox.com> were not confusingly similar to the Complainant's trademark.

Where a number of parties share a right to a trademark the complainant has the burden of demonstrating that it was the one targeted by the respondent. In OVB Vermögensberatung AG v. Michele Dinoia and SZK.com, D2009-0307 (WIPO May 6, 2009) for example it was clear from the website content that the Respondent had another company in mind; not the Complainant. “The use of a domain name for third-party advertising is not per se illegitimate under the Policy, provided that the respondent is not seeking to take advantage of the complainant's rights.” Yeshiva University v. SS Media, Joy Dhivakar S Singh, D2010-1588 (WIPO November 24, 2010) is a variant of OVB in that the website appears to be for an entity, Einstein College of Engineering that (if it truly exists) has an equal right to the trademark, EINSTEIN. The disputed domain name is <einstein-college.com>. The ambiguity in Yeshiva University – the Complainant was unable to determine whether Einstein College of Engineering truly existed – is the Respondent’s connection to the engineering college whose images appear on the website. The evidence points to the Respondent targeting Einstein College of Engineering rather than Yeshiva University.

To prevail on its claim for abusive registration the general rule is that the complainant must “prove that the respondent has been targeting [it] in some way, such as by attempting to extort money from the complainant for a transfer of the disputed domain name, or by riding on the back of the complainant’s goodwill in its trademark by attempting to attract to a website at the disputed domain name Internet users looking for the complainant’s website.” The “relevant bad faith must be specific to the Complainant, or at very least the Respondent must have had the Complainant in mind when he registered the Domain Name,” Builder’s Best Inc v Yoshiki Okada, D2004-0748 (WIPO November 17, 2004) and “not just ‘someone’s’ mark.” In the case of Builder’s Best, the Respondent showed that there were many NNN trademarks.

Only if a respondent has registered a disputed domain name because its real value is the same as, or confusingly similar to, the complainant’s trademark, will the registration have been made in bad faith. In Yeshiva University, “each of these matters of general principle creates a difficulty for the Complainant.” Even though the Complainant has programs currently running in India, the difficulty is in proving that it was the Respondent target. In an attempt to search out facts, the Panel filed a Procedural Order requesting the Complainant to provide further information on the issue of the existence of the Einstein College of Engineering. “In its statement in response, the Complainant side-stepped giving any clear answer to the second of those questions, by stating in its answer to Question 1 that there ‘may be’ a college or school of engineering called ‘Einstein College of Engineering’ in the relevant location, and then contending that Question 2 was not applicable because it had answered Question 1 ‘in affirmative’.” The Panel noted that it “was not impressed with those answers from the Complainant.”

The complainant’s hurdle in these cases is to marshal evidence; not to speculate on what may be. “The College website provides what appear to be perfectly clear details of the claimed location of this college, complete with a postal code and a telephone number.... Taking account of the Complainant’s statement (in its answer to the Panel’s Question No. 2) that it had answered the Panel’s Question 1 in the affirmative, the Panel concludes, on the balance of probabilities that such an institution probably does exist.” And, because the institution exists and there is no evidence that the Respondent was targeting Yeshiva University – that it was not Yeshiva University that the Respondent had in mind – the Complainant fails to satisfy its burden of proof. This does not answer the trademark question, whether the use of EINSTEIN infringes the Complainant’s right. Infringement is an unsettled question, which leads the Panel to make the following observation: “Where the Respondent appears to have been targeting the Einstein College of Engineering and not the Complainant, there is no proper basis for an order directing the transfer of the Domain Name to the Complainant.”

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.” Strictly speaking, paragraph 4(b)(iii) applies only if the respondent’s conduct is directed to the “business of a competitor.” The term “disruption” is unique to this provision. It denotes an intentional act by a competitor who has “registered the domain name primarily” for that purpose, and if for another purpose the provision does not apply, InfoSpace.com, Inc. v. Tenenbaum Ofer, D2000-0075 (WIPO April 27, 2000). Registering a domain name in the belief that the complainant’s trademark is generic does not absolve the respondent competitor, Avaya Inc. v. Holdcom, FA0806001210545 (Nat. Arb. Forum August 9, 2008) (<magiconhold.com>) although it may be some evidence that the respondent reasonably believed “that the use of the domain name was a fair use or otherwise lawful,” phrasing picked up from the Anticybersqatting Consumer Protection Act.

However, in the absence of any persuasive explanation or defense a disputed domain name that resolves to an active website that diverts complainant’s customers to respondent’s competing business presumptively violates the Policy. It is per se disruptive. The latest example is Consumer Opinion Corp. v. John Cross, FA1012001362852 (Nat. Arb. Forum January 21, 2011) which is an interesting hybrid since the Respondent is both a competitor and at the same time uses the website for pay-per-click revenue. Assuming the disputed domain name is identical or confusingly similar to the trademark, the first violates 4(b)(iii) and the second 4(b)(iv) of the Policy.

Both Complainant (<pissedconsumer.com>) and Respondent (who added the article “the” and the word “off”, <thepissedoffconsumer.com>) provide space for consumer complaints. The Consumer Opinion Respondent asserted a paragraph 4(c)(iii) defense, which the Panel rejected because “[a] visit to Respondent’s website reveals that there are advertising activities which disproves Respondent’s assertion that the site is conducted in a noncommercial manner.” Also, Respondent’s website had the “look and feel” of Complainant’s website. The Respondent explained that this was because in creating the website it used “a stock joomla template called 'JA Barite Red,' and that no changes were made by Respondent to the website’s template. Respondent indicates that he chose the color red because it is a common color associated with anger or being ‘pissed off’.” But, this admission undermined the Respondent’s assertion that it had a right or legitimate interest in the domain name.

Selecting a template closely resembling the complainant’s and duplicating the complainant’s color scheme is also a factor in determining good and bad faith. A disputed domain name that resolves to a website that likely confuses the Internet user into believing that it is on the trademark holder’s website has been registered in bad faith. That the use of the domain name to operate a competing online dating website supports a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy paragraph 4(b)(iii) of the Policy.

Website as Evidence of Abusive Registration, But the Infringement is the Domain Name

In determining whether a respondent has violated the UDRP the examination focuses on the domain name and the trademark not the website and the trademark, although the website (whether or not it exists and its content) is supportive evidence of the alleged infringement. The Panel draws this distinction in Xcentric Ventures, LLC d/b/a www.RipoffReport.com v. Report a Rip Off, Inc., FA1012001363406 (Nat. Arb. Forum January 18, 2011). He notes

In making its choice, the registrant is doubly bound: by its representations and warranties in the domain registration agreement and paragraph 2 of the Policy to the effect that the domain registration does not infringe a third party's rights. This has been construed to mean any intellectual property right, Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009), but a copyright violation independent of a trademark violation is not actionable under the UDRP.

In Xcentric Ventures the Respondent mimicked the Complainant's website (a copyright infringement), although it claimed to be using a different technology than the Complainant: "The disputed website is a PHP clone script. There are no laws governing PHP clone scripts, development of such, and the sale and distribution of such. In addition, "Report A Ripoff" uses its own technology, SEO technology, and its own databases, report fields, RSS technology, Directory technology, Search Engine listings capabilities, which are not the same technology used on the Complainant's website." It is this "defense" to which the Panel refers in stating that the "Respondent has fundamentally misunderstood the nature of the domain name dispute procedure under the Policy."

Copyright infringement is evidence of bad faith, but not necessarily conclusive of it if respondent's proof demonstrates fair use of complainant's materials. This is illustrated in Victoria's Secret et al v. National Rag, FA0101000096492 (Nat. Arb. Forum April 3, 2001) in which the Respondent prevailed on the noncommercial and fair use defense. The Panel observed, however, that "given that the UDRP specifies that bad faith is not limited to the specific circumstances enumerated in Paragraph 4(b), certainly violations of United States Trademark and Copyright law may be considered as evidence of bad faith."

The Respondent in Xcentric Ventures changed the order of the words of the trademark, RIP-OFF REPORT to <reportaripoff.com> and "virtually copied the Complainant's website and domain name." Reversing the order of words is an example of typosquatting. The second act, copyright infringement is evidence of bad faith which is conclusive (surplusage even) when coupled with typosquatting.

Choosing a Domain Name With a ".co" Extension that Has No Independent Presence on the Internet

The extension ".co" (country code for Columbia) is perfectly respectable although confusing with ".com" where the second level domain is identical to a trademark, there is no explanation for the registration and the respondent has no relationship with Columbia. It suggests a deliberate attempt to use "a particular ccTLD space" for illegitimate purposes, which in fact was the holding in New Dream Network, LLC v. Yuanjin Wu, DCO2010-0013 (WIPO October 25, 2010). In certain circumstances registering a ".co" can be regarded as typosquatting:

An alternative analysis to typosquatting – which should be reserved to changes to the second level domain – would be to focus on the respondent's failure to explain its "connection ... [with the country] to which the ccTLD relates."

The more typical analysis is found in Anachusa Ltd. v. Prasad Jason, advertoglobe, DCO2010-0041 (WIPO January 5, 2011) where the Respondent registered <pokerstrategy.co> which is virtually identical with the Complainant's domain name [<pokerstrategy.com] and identical to the trademark POKER STRATEGY. In this case the Respondent attempted an explanation, but it was unpersuasive in light of the facts. The Panel's summary of the explanation is as follows:

That a trademark is generic does not for that reason alone make it unprotectable. In Anachusa the domain name had no active, independent presence on the Internet, but was redirected to the respondent's own website <winner.com>. The Respondent lost on the inferences the Panel drew from the totality of admitted facts, among them the redirection, but also on the Respondent's acknowledgment of the success of the Complainant's website which had been in operation for a number of years prior to its registration of the disputed domain name. The Panel inferred that

When a complainant proves that there is "enough goodwill and reputation in and to a name and sufficient association of the same with the [complainant], no matter how strong or weak those trademark and service mark rights may be" that is sufficient to satisfy the first element the Policy, Action Sports Videos v. Jeff Reynolds, D2001-1239 (WIPO December 13, 2001). Similarly in Anachusa even though on the application the Complainant disclaimed the words "poker" and "strategy" except as used with the mark as a whole.

Of the three defenses [4(c)(i-iii) of the Policy], the first and third require proof of a legitimate use. The first defense expressly requires proof that the legitimate use or demonstrable preparations for it preceded notice of the dispute. The third defense is not explicit that the "noncommercial or fair use" use be before notice of the dispute, but it cannot be after because a post notice change cannot legitimize pre-notice infringing use. The second defense requires proof that the respondent is commonly known by the domain name whether or not the domain name resolves to an active website. Commonly known is construed to mean known prior to the acquisition of the domain name. Adventitious naming (by which I mean adopting a name consistent with the domain name to make the registration appear legitimate) is a subterfuge. This was pointed out in Hennessy Industries, Inc. v. Private Whois Service c/o ammco.com., FA 1360143 (Nat. Arb. Forum January 17, 2011) where the respondent listed itself on the WHOIS directory as "ammco.com" in an attempt to position itself to claim a right or legitimate interest under 4(c)(ii) of the Policy.

No amount of legerdemain transforms AMMCO (the Complainant's trademark) into two "common generic term[s]." According to the Respondent "AMMCO is ... composed of the three letters 'amm' and 'co', which is an abbreviation for the common generic word 'company'." While it may be true that the "mere registration of domain names that contain generic terms [assuming 'amm' is such] establishes a legitimate interest under the Policy," a lexical string that forms a well known trademark cannot be deconstructed into its elemental parts without violating the anti-dissention rule.

A respondent seeking to bring itself within the second defense must proffer "affirmative evidence" that prior to the acquisition of the domain name it was who it now claims to be, Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003). "Mere 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," Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum January 13, 2003) (the Respondent called itself NEIMAN-MARCUS). The "consensus ... is that Respondent must already have been known [by the disputed name] at the time of registration or acquisition of the domain name in issue," Nobel Learning Communities, Inc. v. Chesterbrookacademy, D2005-0753 (WIPO September 20, 2005) [<chesterbrookacademy.com>].

The pretense of claiming to be who one is not is a factor in determining the issue of bad faith. It carries over from the second to the third element; is some "evidence of" the respondent's mala fide intent in registering the domain name. The additional evidence lies in the use of the domain name, which in the case of Hennessy Industries, resolves to a website populated with links to the Complainant's competitors that clearly takes advantage of the Complainant's reputation. It is not a defense for the respondent to pass the blame for the website to the registrar who populates, but rather affirmative proof of infringement.

The Panel in Hennessy Industries held (consistent with precedent) that "[although] revenues accrue to the domain name registrar who offers a 'parking service' for domain holders until they are ready to post their own content ... [the] respondent is spared the cost of website hosting fees, which inures to [the] respondent's commercial benefit. Therefore, [the] respondent has allowed the domains to be used to attract, for commercial gain, Internet users who may be confused as to [the] complainant's affiliation with those sites." This "is sufficient evidence of [the] respondent's bad faith registration and use pursuant to Policy ¶ 4(b)(iv)."

UDRP's Jurisdiction Does Not Extend to Cases Where a Registered Domain Name is Subject to a Legitimate Dispute

The UDRP offers a forum with limited jurisdiction to resolve a particular type of dispute in which a domain name registrant has allegedly misappropriated a trademark for commercial gain at the holder's expense. The Policy does not presume to adjudicate claims for trademark infringement or business disputes that concern more than the domain name. The forum is neither a substitute for a court of law nor a trademark court. Yet within the scope of the Policy a trademark holder can obtain declaratory and injunctive but not monetary relief against a domain name registrant infringing its rights similar to although not as extensive as that which is available in the U.S. under the Anticybersquatting Consumer Protection Act. It accomplishes this in double time plus and at a fraction of the cost of a federal lawsuit.

In noting the Policy's limitations it is necessary to add as qualification that "the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw," ICANN's Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, October 29, 1999, paragraph 4(c). But, if the UDRP is not a trademark court, What is it? Abusive registration (a term equated with but arguably more extensive than cybersquatting) is a judgment that in registering and using the disputed domain name the respondent violated the Policy. The violation may also be a trademark infringement, but that is not the basis for the Panel cancelling the respondent's registration or ordering the domain name transferred to the complainant. Trademark infringement is simply one of the factors in considering whether the respondent acted in bad faith.

While what constitutes "a legitimate dispute" is clear on both sides of the divide, the center is murky. Claims found to be outside the scope of the Policy most generally involve disputants in contractual or fiduciary business relationships. Employer/employee disputes have a mixed history (the murky center), sometimes within and other times outside the scope of the Policy [Adya, Inc. v. A Clark / Intensity Webhosting, FA1011001360903 (Nat. Arb. Forum January 10, 2011) (outside); Honeywell International Inc. v. Celeris Controls, FA1010001351938 (Nat. Arb. Forum November 15, 2010)(within the scope)]. The common denominator is that the claim is not, at bottom, actionable for abusive registration. Other recent examples are between partners or former partners, J. Kyle Mathews, M.D., P.A. d/b/a Plano Ob/Gyn Associates v. C. Keith Grisham, FA 1358903 (Nat. Arb. Forum January 10, 2010); purchaser and seller, ESI Canton, LLC v. David Epstein, FA 1356618 (Nat. Arb. Forum December 28, 2010); trademark holder and investor, David and Rainy Robinson v. DRIVERSITY OF ANTIOCH /STEPHANIE ANIU, FA1010001350486 (Nat. Arb. Forum November 24, 2010).

To take one of the cases as illustration. ESI Canton involved contract claims relating "primarily ... to the execution of the Bill of Sale. Specifically, the parties dispute whether Complainant adequately performed under the Bill of Sale in rendering payment." In the Panel's view "[r]esolution of this dispute likely involves issues pertinent to the common law of contracts in the appropriate jurisdiction and is not appropriately addressed to this forum." This is not to say that any dispute which calls for contract interpretation is outside the Policy's scope; that would be too narrow a construction, Honeywell International for example.

In the case of ESI Canton, the Panel's decision rested on Rule 18(a) which "gives the Panel discretion to terminate a proceeding '[i]n the event of any legal proceeding initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint'." The Respondent had not actually commenced a lawsuit, but represented that "a cause of action for breach of contract appears imminent and the disputed facts are not readily decipherable from the parties' submissions."

First generation registrants are favored under the UDRP even if use changes to bad faith while transferees are answerable for their choices from the date of the new registration. It is not disallowed to commence a second proceeding for the same domain name if against a different respondent. At its first performance in 2008, the Complainant in Games Workshop Limited v. Admin, Domain, D2008-1321 (WIPO November 27, 2008)("Games Workshop 1") clearly had so little appreciation for its burden that despite "[being given] more than ample opportunity to file an appropriately detailed complaint, [it] ...failed to do so. In those circumstances it cannot be surprised at the result." That was then. But, sometime between November 27, 2008 and January 5, 2010 (the date at which the Complainant first became aware of the current Respondent) there was a transfer. Transfer equals a new registration, which is the date from which is measured a respondent's right or legitimate interest and its good or bad faith.

The filing of a second complaint as opposed to a refiling is not barred under the doctrine of res judicata. See January 3 Note (Standards for Refiling Complaint). The distinction is made in Games Workshop Limited v. Forge World Quebec Blog, D2010-1844 (WIPO December 21, 2010) ("Games Workshop 2"). In Games Workshop 2 "the Complainant contends that it is entitled to bring this Complaint irrespective of the previous decision due to the fact that there has been a change in registrant of the disputed domain name," citing AB Svenska Spel v. Andrey Zacharov, D2003-0527 (WIPO October 2, 2003). This time round, the Complainant must have educated itself because it improved its performance. The Panel held

Games Workshop 1 can be cited as an example of complainant self-destruction in that it utterly failed to make a case despite warning from the Center of deficiencies in the complaint. Because this is an evidentiary misstep the demands upon the parties should be fully understood. The Complainant lost despite the Panel's apprehension – it "confesses to some slight disquiet about the result" – because the "Complaint contains no information about the Complainant's business, no information as to the fame of the Complainant's trade mark and no information as to the use being made of the Domain Name by the Respondent." Further,

The second time round (made possible only because of the change of registration) the Complainant learned to support the relevant facts with documentary proof. "The Complainant has provided printouts of the website resolving from the disputed domain name that clearly show sponsored listings for companies who provide similar goods and services to the Complainant and can therefore be considered competitors." Unusual combinations of words – here, "forgeworld" – "combined with the content on the Respondent's website leads to the conclusion that the Respondent had knowledge of the Complainant and its rights when it registered the disputed domain name." Bad faith use subsequent to good faith registration would have made no difference to the original registrant.

The importance of the AB Svenska decision cited in Games Workshop 2 is in its affirming a distinction suggested in an earlier case between "(i) Refiled Complaints that concern the act which formed the basis of the original complaint, and (ii) Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint," Creo Products Inc. V. Website In Development, D2000-1490 (WIPO January 19, 2001). Games Workshop 2 and AB Svenska are in the second category and for that reason are considered new actions under the Policy.

Potential, inadvertent and artless misspelling of trademarks by Internet users while typing in the domain name was quickly exploited by entrepreneurial registrants as a source of income. The first appearance of a typographical error – omission of a dash in the trademark C-COM – was not recognized as such by the Complainant who alleged that <ccom.com> was identical (rather than confusingly similar) to its trademark, Chernow Communications, Inc. v. Jonathan D. Kimball, D2000-0119 (WIPO May 18, 2000). The dissent saw no reason for the respondent forfeiting the domain name because the second level domain was not identical to the trademark and the Complainant had not alleged confusing similarity. He “[saw] no need to supplement the allegations that Complainant actually made with others that Complainant chose not to include, or to afford Complainant a second opportunity to allege what frankly is an obvious component of a prima facie case under the UDRP.” This uncharitable view failed to impress his colleagues, thenwas tacitly rejected in contemporary cases, and has left no mark on the jurisprudence.

In a number of cases contemporary with Chernow, respondents repeated the affix “www” within the second level domain, for example, <www.wwwge.com>, General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, D2000-0377 (WIPO July 19, 2000). The Panel noted that “slight changes to, adds to, or subtracts from, the trademarks and service marks of others, in the apparent hope that those who seek to visit the web site of the mark holders might inadvertently make a typographical error and potentially could be taken to a web site constructed by Respondent to profit from this confusion .... has been dubbed “typosquatting.” Illustrations of “slight changes” in cases decided in the first full year of the Policy include “attt” (repeating a letter), “american-on-line” (adding a letter) and “ayhoo” (transposing a letter).

Views sharpened against typosquatting as the practice accelerated in the second and third years of the Policy. In a 2003 case, the Panel held that de minimis changes to trademark terms is “inherently parasitic and by itself evidence of bad faith,” Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO January 21, 2003). This came after the same respondent had argued in two earlier cases, Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, D2000-0578 (WIPO August 28, 2000) and Eddie Bauer, Inc. v. John Zuccarini aka Cupcake Party, D2001-0224 (WIPO April 26, 2001) that he had as much right to register typosquatted domain names “as the person who owns the correct spelling of domain name.” That contention was given short shrift. De minimus changes “immediately raise[] suspicions and call[]or an explanation,” CareerBuilderLC v, L. Azra Kha, D2003-0493 (WIPO August 5, 2003).

In almost every other circumstance, the complainant must prove that the respondent both registered and used the domain name in bad faith. With typosquatting, the proof is unitary. By 2010, it was possible to conclude that typosquatting is “as close as it is possible to come to per se cybersquatting,” Apple Inc. v. Andrew Sievright, Domain Source, D2010-1916 (WIPO December 8, 2010) (omitting final “e” from trademark, <appl.com>); also, Apple Inc. v. Oakwood Services Inc. - N/A N/A, D2010-1917 (WIPO December 28, 2010) (<aplle.com>, on the qwerty keyboard, striking “l” instead of “p”, which is above it on the right).

Absent a plausible explanation, one can infer from “slight changes” that the respondent 1) had knowledge of the complainant’s trademark; 2) made the changes intentionally; and 3) expected to obtain a benefit from registering and using the domain name. The only other example of per se cybersquatting is phishing.

ICANN's Rules for the Uniform Domain Name Dispute Resolution Policy provide that "[a]ny person or entity may initiate a complaint" against a registrant who it accuses of registering a domain name identical or confusingly similar to a trademark in which it claims a right, Paragraph 3(a). WIPO's Supplemental Rules state that "[a]ny term defined in the [ICANN] Rules shall have the same meaning in these Supplemental Rules." The National Arbitration Forum's Supplemental Rule 1(e) is more interpretative. It defines the party initiating a complaint as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint" (emphasis added).

Typically, the complainant is a single person or entity, although the "any" phrase has long been construed to include more than one and may be several persons or entities. The Panel in Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, D2002-0760 (WIPO November 1, 2002) rejected the Respondent's argument that a complaint must be filed by a single complainant. He held that "[t]he naming of a parent and subsidiary as Complainants is permissible in a proceeding in which the Respondent is using domain names which are confusingly similar to trademarks owned by the parent company and its subsidiary." And, continued, that it "is preferable that a dispute concerning the domain names be considered in a single proceeding than in a multiplicity of proceedings." This is the generally accepted majority view as expressed in paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

If not related, entities would have to qualify (if they can) by having a "common grievance" which is a more difficult standard. The Panel in National Dial A Word reasoned that

In both National Dial A Word and Grupo Bimbo the disparateness among the Complainants was too great to have a "common" grievance even though each Complainant separately had a legitimate grievance against the Respondent. The difficulty is heightened where to the exclusion of every other complainant each has a separate vested right in its own trademark, that is where there exists no linkage by license. The existence of "potential[ly] ... different outcomes of one or more domain name disputes based on the differing nature of the rights asserted by the individual Complainants" [Grupo Bimbo] answers the second question posed in National Dial A Word in the negative, namely whether "it would be equitable and procedurally efficient to permit consolidation." Under those circumstances it would be neither equitable nor procedurally efficient.

Paragraph 4 of the Policy describes the arbitral procedure as a "mandatory administrative proceeding." This should not be misunderstood to mean that the respondent is compelled to appear. Indeed, statistically respondents default 85% of the time. The term "mandatory" is used in the sense that respondents are "obliged by virtue of the [registration] agreement to recognize the validity of a proceeding initiated by a third-party claimant," Storey v. Cello Holdings, L.L.C., 347 F.3d 370, 381 (2nd Cir. 2003). It also does not mean that the respondent has no jurisdictional alternative. The first sentence of paragraph 4(k) of the Policy provides that "the mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded."

The term mandatory administrative proceeding refers to the respondent's contractual agreement to submit the claim to an impartial or neutral arbitrator to determine the merits of the complaint. "It is these Rules with which all applicants for the registration of domain names agree to be bound," Cimcities, LLC v. John Zuccarini D/B/A Cupcake Patrol, D2001-0491 (WIPO May 31, 2001). Respondent is also bound by its representations and warranties to the Registrar, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, D2002-0806 (WIPO October 16, 2002).

While it is not "mandatory" to appear in a proceeding, default in answering a complaint has consequences even though not tantamount as it is in a court of law to an admission of abusive registration. However, failure to explain or submit exculpatory evidence is as much a part of the record as that which is offered and even though the burden of proof remains with the complainant throughout the proceeding, silence (metaphorically) speaks. This being said, a complainant is not entitled to relief simply because it has a trademark and a respondent does not suffer forfeit of the domain name simply because it defaults. It is not bad faith to speculatively register domain names for presumed future value. A holder of a future acquired trademark, for example, has no legal right to an earlier registered corresponding domain name. Nor is it cybersquatting to register a domain name found to be identical or confusingly similar to a complainant's trademark, as long as the domain name is not registered to take economic advantage of an existing trademark.

Non-appearance raises an issue that goes to the "validity of a proceeding", namely proper service of the complaint. However, once compliance with due process has been determined, the ultimate goal of the UDRP proceeding is the disposition of the domain name. Respondents have three options upon service of a complaint: to answer, default or commence a proceeding in a court of law. The Whois database is the primary resource for identifying the registrant and its contact information. Indeed, "the integrity and effectiveness of the Policy, and of its dispute resolution mechanism, depend on registrants providing honest, complete, and accurate contact information," Dell Computer Corporation v. Clinical Evaluations, D2002-0423 (WIPO June 30, 2002). Inaccurate or false contact information supports the conclusion that the respondent is hiding itself, which in turn supports bad faith registration.

Competition for domain names productive for non-trademark business and those corresponding to trademarks is intense. Dictionary words alone or combined to form likely and unlikely phrases are all grist. The right term for domainers is one that both attracts Internet users and avoids infringing third party rights. Holders of dictionary word and descriptive phrase trademarks must prove that the disputed domain names were chosen opportunistically, for the value of the trademark rather than the word or phrase. “Clean” and “keys” are nondescript but are unusual in combination, Cleankeys Inc. v. Registrant [3291906]: Bing Liu, D2010-1810 (WIPO December 14, 2010), while the combination of “eldercare” and “advocates” is generic, ElderCare Advocates, Inc. v. Isaac Goldstein, FA 1357548 (Nat. Arb. Forum December 13, 2010).

Just as holders of trademarks associated with particular Classes of goods or services have no right to exclude others from using the same term in another Class as long as there is no likelihood of confusion, neither may they capture corresponding domain names registered in good faith without intention or knowledge of the complainant. In Greenply Industries Limited v. Matthew Poston, D2010-1748 (WIPO November 29, 2010) each party held a trademark for GREENPLY in the same Class; the Complainant in India, the Respondent in the U.S. Simply having a trademark is not a sufficient reason to win a transfer where there ismissing proof of intention and knowledge.

For trademarks on the lower end of the protective scale it is not unlikely that domain names incorporating the whole or their dominant parts will be registered and put it to use in a productive way. The tide comes in regardless of the outstretched hand that forbids it. Some terms have been used a multiple of times, “web” and “vision”, Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010) (“there has been a Webvision Corporation or Webvision Inc. operating at various times in the USA”); Future Steel Holdings, Ltd. v. Private Whois Service, FA1010001350737 (Nat. Arb. Forum December 6, 2010) (<steelmaster.com>; “at least six other parties own trademark registrations for this term.”); or the terms are standard in a particular industry, Visa Europe Limited v. Name Administration Inc. (BVI), D2010-1531 (WIPO December 14, 2010) (“premier” and “card”; “Many ... entities ... make use of the word ‘premier’ as trade marks in respect of the marketing and promotion of their banking and credit card products and services.”).

Domain names composed of the dominant or identical term of a trademark plus a dictionary word do not become distinctive so as to defeat a holder’s right; a fortiorori when the added dictionary word suggests the complainant’s business. The portmanteau word “alienware” plus “laptop” violates the Policy despite the Respondent’s argument that the Complainant’s trademark is ALIENWARE not <alienwarelaptop>, Alienware Corporation v. James Dann, FA0910001290045 (Nat. Arb. Forum December 28, 2010). “Alien” could have passed the test as did “allocation” in Allocation Network GmbH v. Steve Gregory, D2000-0016 (WIPO March 24, 2000) as long as the domain name was not “chosen with the intent to profit from or otherwise abuse Complainant’s trademark rights.” The evidence in Alienware was that is was so chosen.

Complainants whose businesses come into existence and whose trademarks are acquired after the registration of the disputed domain name may have a right to maintain the UDRP proceeding, but they are tilting at windmills. A respondent can alienate or not what it owns at a price it deems the market will bear. The complaint in X6D Limited v. Telepathy, Inc.,D2010-1519 (WIPO November 16, 2010) contends that the disputed domain name, <xpand.com> has been used in bad faith because the Respondent indicates on its website that it “is likely to ignore offers below USD 40,000 for a domain name.” Under these circumstances it is irrelevant that the price is greater than the out-of-pocket cost for acquiring the domain name.

Refiling a complaint against the same respondent for the same domain name is not permitted as "of right." It was early decided that "[o]nce a party has been given a defended hearing ... and a decision rendered, then a case cannot be re-litigated," Grove Broadcasting Co. Ltd. v. Telesystems Commc'ns Ltd., D2000-0703 (WIPO November 10, 2000). However, a closed case may be reopening under certain circumstances where the complainant demonstrates that it comes within the narrow class not barred by res judicata or foreclosed by issue preclusion, but not where the factual circumstances remain the same. In that event, the earlier adjudication bars a reopening of proceedings.

Recent illustrations of the standards for refiling a complaint are AMP Floracel v. Jean Perrin, FA 1358993 (Nat. Arb. Forum December 20, 2010); and VRSim, Inc. v. John Makara, FA1003001314947 (Nat. Arb. Forum April 30, 2010). In common law jurisdictions to reopen a closed case requires proof of 1) serious misconduct by a judge, juror, witness or lawyer; 2) perjured evidence being offered to the Court; 3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and 4) a breach of natural justice /due process. Grounds 2 and 3 are the usual battlegrounds in a UDRP case. In neither a court of law nor a UDRP proceeding is a complainant permitted to commence a new proceeding to supplement a prior deficient record. The party offering proof has to get it right the first time.

Some Panels have invited refiling if the circumstances change, although whether the evidence would be sufficient "would be a matter for a subsequent panel to determine," A. D. Banker & Company v. Domain Invest, D2010-1044 (WIPO September 30, 2010). The Panel noted that

The Panel denied the complaint in Jetfly Aviation SA v. Jens K. Styve / Domains by Proxy, Inc. and Happy Landings S.A., D2010-0244 (WIPO April 5, 2010) because of a pending court proceeding. It would not preclude a refiling "if the Geneva court hands down a decision to the effect that the Respondent has no rights or legitimate interests in respect of the Domain Name, but does not order transfer of the Domain Name to the Complainant, or the said court proceeding should be otherwise discontinued without resolution." Under those circumstances, "[if] the Complainant thereafter wishes to refile the Complaint with the Center, the Panel believes that the Complainant should be permitted to do so."

The alleged subsequent acts alleged in AMP Floracel and VRSim, however, were essentially "either a repetition of, or substantially the same as, the acts on which the previous complaint was based," Furrytails Ltd. v. Mitchell, D2001-0857 (WIPO September 6, 2001). The deficiency in AMP Floracel concerned its alleged trademark rights. It was not the trademark holder of record and "[d]espite the passage of two years [since the earlier decision], the Complaint in this case suffers from the same defects [, namely that it] has once again failed to demonstrate any rights in the trademark, either by assignment or otherwise."

VRSim failed the first time because the USPTO rejected its trademark for the Principal Register on the grounds that "vrsim" is descriptive for the services being offered, that is "virtual reality simulation." Registration on the Supplemental Register conferred no priority of right.

Invoking the ACPA Against Defendant with Knowledge of Plaintiff's Use in Commerce Prior to Application for Trademark

The disjunctive feature of the Anticybersquatting Consumer Protection Act makes it less tolerant than the UDRP of registrants of domain names identical or confusingly similar to trademarks. The ACPA is also unlike the UDRP in that it requires the court to qualitatively balance a basket of nine factors, which includes UDRPs four bad faith [rolled into factors 5 and 6) and three affirmative defenses [factors 2, 3 and 4). Factor 1 which asks whether the defendant owns any trademark or other intellectual property in implicit in paragraph 4(c) of the Policy. While a concurrent right in a trademark is a legitimate interest, a legitimate interest is not a legal right. The additional two factors, "registration or acquisition of multiple domain names" [factor 8] and "extent to which the mark is distinctive and famous" [factor 9] are implicit in UDRP and although not expressly named are never far from the assessment. Because of the conjunctive feature of the UDRP it is possible for a respondent to prevail, Volvo Trademark Holding AB v. Volvospares / Keith White, D2008-1860 (WIPO February 10, 2009) but as a defendant to succumb in an ACPA suit, Volvo Trademark Holding AB v. Volvospares, 1:09 cv 01247 (E.D. Va. April 1, 2010).

This Note, however, reports on an ACPA case having factual circumstances familiar to UDRP disputes, with the same result. The plaintiff in Carnivale v. Staub, LLC, Civ. No. 08-764-SLR (DDel December 13, 2010) owned a common law trademark for "the affordable house" which predated registration of the domain name and offered books and architectural blueprints from its website at <affordablehouse.com>. It subsequently but only after the defendant registered the domain name filed a 1(a) application with the USPTO for registration of THE AFFORDABLE HOUSE on the principal register. Significantly, the defendant admitted knowledge of the plaintiff and its website prior to its registering <theaffordablehouse.com>. The district court held that the defendant registered the domain name in bad faith.

This result caused one blogger to raise an alarm that "[m]ore often than not, the ACPA has simply become yet another weapon in nefarious trademark owners' arsenals to use against speakers that the trademark owners generally wish, for one reason or another, would go away." Even more galling to this blogger

The question is, Has the ACPA really, really become "yet another weapon in nefarious trademark owners' arsenals"? Or, is the decision of the garden variety type that would have fared similarly if brought in a UDRP proceeding. One part of the ACPA judgment which is outside UDRP's scope is an assessment of damages for $25,000. Otherwise, Carnivale is not "a poster-child example of a court's failure to apply the ACPA in a way that has anything to do with cybersquatting." While it is true that THE AFFORDABLE HOUSE is on the lower end of the trademark classification scale it is nevertheless, the plaintiff having received a registration on the principal register and established secondary meaning, it is "inherently distinctive" [factor 9].

It is clear from the district court's conclusion that prior knowledge of the plaintiff is the key factor: "Although defendants did not hoard and sell domain names registered under a false name [factor 8], defendants settled on the domain name www.theaffordablehouse.com to promote their business [factor 5], even after learning that plaintiff maintained a website at www.affordablehouse.com for similar commercial purposes." A mind game may be played as to whether the outcome would have been different if the defendants had no knowledge of the plaintiff's trademark when they registered the descriptive phrase as a domain name. After all, without knowledge and offering goods or services consistent with the domain name -- that is there is “some semantic relationship between [it] and the website" [See Friday's Note, 7(S) Personal GmbH v. Zhaohua Luo, D2010-1953 (WIPO February 3, 2011)]-- is not illegtimate and supports a conclusion in favor of defendant [factor 3 which is equivalent to paragraph 4(c)(i) of the Policy].

Where a trademark preexists a domain name the registration may be suspicious but “a legitimate right or interest can certainly be created in an arbitrary or entirely fanciful mark, through lawful adoption and use,” 7(S) Personal GmbH v. Zhaohua Luo, D2010-1953 (WIPO February 3, 2011). “[Un]lawful adoption and use” are complainant’s burdens. Suspicion itself is not proof of either:

The principal interest in 7(S) lies in the views expressed in the dissent and concurring opinions. The disagreement centers on a coincidence, namely that the domain name which is identical to “an arbitrary or entirely fanciful mark” redirects to another of the Respondent’s websites that carries content unrelated to any “semantic” understanding of the domain name. The dissent insists that there be “some semantic relationship between the domain name and the website for that use to be bona fide.” If it were otherwise (according to the dissent), then any redirecting would “trigger a right or legitimate interest in the domain name.”

Ordinarily, redirecting a domain name to another website supports the complainant’s argument that the respondent lack rights or legitimate interests in the domain name. However, the concurring opinion in 7(S) explains why there can be no bright line in reaching judgment on this issue:

While it is true that “Respondent’s use of ‘7S’ does not appear to have a natural connection to a website in the field of categorical geometry... [and] is not literally descriptive of the subject matter of its website ... that would not preclude the Respondent from acquiring legitimate interests or rights in the mark through appropriate means.” The reason for this is that “[t]rademark rights are fundamentally grounded in use; where the Respondent can provide tangible evidence of lengthy use (such as the 12 year period in this case) a portion of which actually predates the Complainant’s proven rights, then Respondent’s use can support a finding of legitimate interest or rights even in an arbitrary mark that is unrelated to the character or nature of the Respondent’s business.”

This does not mean that in every instance “Respondent’s use can support a finding” but it does where “we are presented with such use of the disputed domain name over a long period of time, together with the paucity of evidence that the use was pretextual or otherwise illegitimate.”

One can think of a record (the kind submitted in support of legal relief) as a combination of statements and silences. What a party omits in its submission can be equally as important as what it includes. Drawing inferences from silences is not a one-way street. Default in answering a complaint has consequences, even though silence in a UDRP proceeding is not an admission of abusive registration. So too for consequences is a complainant's silence about facts over which it has control, when for example it claims an international reputation when the domain name was registered but fails to provide evidence of such, Viko Elektrik Ve Elektronik Endüstrisi Sanayi Ve Ticaret Anonim S,irketi v. UniqueBrandNames, D2010-1856 (WIPO January 26, 2011). Contentions alone are insufficient to prove or defend a case.

There are two rules covering silence. Paragraph 5(e) of the Rules of the Policy reads: "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint." "Complaint" in this context is more than the complainant's presentation of its formal charges; it must refer to the record as a whole. Paragraph 14(b) of the Rules applies to either party. It reads: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate." If a complainant does not present evidence of its reputation, the inference must be that it had none.

Ordinarily, because defaults in answering complaints are more common than complainant silences, most of the analysis is directed to respondents. Although a respondent is not obliged to participate in a domain name dispute, "if it were to fail to do so, it would be vulnerable to the inferences that flow naturally from a complainant's not unreasonable assertions of fact," MC Enterprises v. Mark Segal (Namegiant.com), D2005-1270 (WIPO January 27, 2006). There are two forms of allegation, facts verified by evidence and statements disguised as facts which are merely assertions. The Panel in Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000) dealt with this head on:

The Panel concluded that "[i]n the absence of a response [properly certified], it is appropriate to accept as true all allegations of the Complaint." Accepting "as true all allegations of the Complaint" (emphasis on "all") goes further than necessary. Credible assertions of fact may support bad faith "unless clearly contradicted by the evidence," Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000). But, where the Respondent fails to contest the contentions and submits no evidence the Panel "is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant," Talk City. Further, "[e]ven were the February 16, 2000 e-mail treated as an answer, it would not affect this decision ... because, in addition to the absence of the required certification, Respondent's e-mail made no attempt to respond directly to the allegations of the complaint." Panels are charged with rendering their decisions "on the basis of the statements and documents submitted," Rule 15(a).

The UDRP is a "conjunctive" regime, which means that a finding of abusive registration requires proof that the respondent both registered and is using the disputed domain name in bad faith. Some country code dispute resolution policies such as ".uk" and ".eu" are "disjunctive" regimes, under which the respondent forfeits the domain name if it either registered or is using it in bad faith. "The consensus view since the Policy was implemented in 1999 has been that the conjunctive 'and' indicates that there must be bad faith both at the time of registration and subsequently," Mile, Inc. v. Michael Burg, D2010-2011 (WIPO February 7, 2011). In passing the Anticybersquatting Consumer Protection Act, of course, the U.S. Congress chose the disjunctive regime.

A recent competitive construction of the UDRP that has not achieved consensus, a line of cases deriving from City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, D2009-0643 (WIPO July 3, 2009) ("Mummygold") unifies "registration" and "use" where the respondent is shown to use the domain name in bad faith under paragraph 4(b)(iv) of the Policy by holding the respondent to its representation and warranty. Paragraph 2 of the Policy provides that

According to the 3-member Panel in Mile, the Mummygold and like-minded Panels "observed that this warranty could be breached by post-registration abuses and concluded, as expressed in Octogen [Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009)] that such conduct 'may be deemed to be retroactive bad faith registration'." The Mummygold/Octogen construction has its admirers, but its acceptance would upset the precedential consistency of the UDRP which has been a decade in the making.

It is not that the Mummygold/Octogen construction is without merit, but for the UDRP it is too late. Thus, noted the Panel in Mile "[i]f a consensus developed that a line of prior decisions had reached the wrong result, and if panels generally adopted a new approach on an issue, this Panel also would be open to considering whether a new approach was appropriate, both substantively under the Policy and in order to promote consistency." However, as the the Mile Panel concluded the "Mummygold/Octogen reasoning has not prompted any such consensus; to the contrary, a number of decisions have expressly considered and rejected it." That being the case, it would be too disruptive to overturn a fundamental jurisprudential construction which could only happen at the expense of consistency.

This does not "discount the relevance of paragraph 2 of the Policy to the question of bad faith registration in appropriate cases." Paragraph 2 of the Policy "may create an obligation on a registrant to conduct some due diligence in order to determine whether the domain name at issue infringes any third party rights, especially if the registrant intends to use it for commercial purposes such as a PPC website," Mile. This refers to the heightened due diligence obligation of respondents in the business of monetizing domain names, a construction formulated in Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006) that has attracted a consensus.

An unregistered trademark is no less entitled to protection, 15 U.S.C. §1125 (Section 43 of the Lanham Act) if it has secondary meaning, but distinctiveness is not presumed. A claim for common law protection must be earned. It has been noted that “Panelists with WIPO and NAF have sometimes approached the issue of proof of trademark ‘rights’ ... in a slightly more relaxed manner than does the USPTO when it requires proof of secondary meaning,” NJRentAScooter v. AM Business Solutions LLC, FA0909001284557 (Nat. Arb. Forum November 4, 2009). “Relaxed” nonetheless, for standing secondary meaning must be established. Assertion of recognition of not evidence.

The penalty for insufficiency is illustrated in Mega Shoes, Inc. v. Gregg Ostrick / GNO, Inc., FA1012001362894 (Nat. Arb. Forum February 1, 2011) (Respondent appeared). It is true that the more distinctive the trademark the less proof and vice versa. “Mega” is not distinctive. Mega Shoes can be contrasted with The Ogilvy Group, Inc. d/b/a The Lacek Group v. Tony Y. Jackson, D2010-2015 (WIPO January 31, 2011) (<lacekgroup.com>, Respondent defaulted) in which the Panel found

While MEGA SHOES is a registered mark presently it is offset by the fact that it acquired the right six years after the registration of the domain name. The Panel continues

It is precisely because the registration post-dated the domain name that assertion must be supported with evidence. The Complainant's Declaration failed to provide it:

Finally, there is the mark itself. UDRP does not authorize forfeiture of domain names consisting of common terms, unless the proof demonstrates an intentional appropriation of the complainant’s marketplace identity. The first to register a common term is entitled to it. “Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis,” Zero International Holding v. Beyonet Services., D2000-0161 (WIPO May 12, 2000) (<zero.com>). Similarly with “target” as in <target.org> when used consistent with the cultural understandings of the word and not targeting the trademark owned by Target Brands, Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004).

Trade names such as the “Lacek Group” that have taken on the characteristics of trademarks and are themselves badges recognized by the relevant public pass the threshold test for standing under the UDRP. The fact that a respondent is the first to register the trademark as a domain name confers no rights, but is evidence of abusive registration whether it not it is active.

Reverse Domain Name Hijacking Presupposes Complainant Acted for an Improper Purpose

Neither mere lack of success of the complaint nor presenting a weak case is sufficient in itself to constitute reverse domain name hijacking under paragraphs 1 (definition) and 15(e) of the Rules. Reverse domain name hijacking is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The complainant must be found to have acted intentionally for an improper purpose. Paragraph 3(b)(xiv) of the Rules of the Policy defines “improper purpose” as including harassment. It provides that in commencing the administrative proceeding, the complainant certifies that “the information contained in th[e] Complaint is to the best of [its] knowledge complete and accurate [and] that th[e] Complaint is not being presented for any improper purpose, such as to harass [the respondent].”

The fact that a domain name was registered prior to the complainant acquiring a trademark is not ipso facto harassment. The test is “whether a complainant should have appreciated at the outset that its complaint could not succeed,” Prime Pictures LLC v. DigiMedia.com L.P., D2010-1877 (WIPO February2, 2011), citing Yell Limited v. Ultimate Search, D2005-0091 (WIPO April 6, 2005). “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy,” Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO January 8, 2001).

A complainant may not necessarily have knowledge of all the facts at the outset to have appreciated the respondent’s right or legitimate interest in the disputed domain name. However, if on its face a “complaint includes facts that demonstrate no likelihood of success, the respondent is entitled to a finding of Reverse Domain Name Hijacking,” Urban Logic, citing 1 Model Management, LLC. v. L.A.S. Inc., Latifa Aadess, 1 Models LLC, D2008-1173 (WIPO October 24, 2008). It is said that there must be a colorable claim. The complainant cannot use “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy,” Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004).

The definition and the Rule mark out wide boundaries of abusive conduct. A complaint is unjustified for a number of reasons of which the most prominent is the timing of the respondent’s registration of the disputed domain name. The Complainant has to proffer some evidence “as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its [trademark],” Labrada Bodybuilding Nutrition.

Conversely, the Respondent must show knowledge on the part of Complainant of Respondent's right or legitimate interest in respect of the domain name at issue and evidence of harassment or similar conduct by the Complainant in the face of such knowledge. Where the parties have communicated with each other prior to the commencement of the proceedings, but the respondent has withheld materials it later submits in its defense, RDMH will be denied because “Complainant had no actual knowledge of Respondent’s prior use” of the mark in its own business, Intellogy Solutions, LLC v. Craig Schmidt and IntelliGolf, Inc., D2009-1244 (WIPO November 24, 2009).

To satisfy its burden of proof the respondent must show that it disclosed evidence to the complainant of such quality that a fortiori it was abusive to have commenced a proceeding. For example, in Altametrics, Inc. v. Ryan Sveinsvoll, FA1008001343628 (Nat. Arb. Forum November 11, 2010) the Complainant in argued and the Panel concurred that it is “unreasonable to expect Complainant, who originally filed this proceeding against a ‘Domains by Proxy’ undisclosed registrant, to know the myriad individual and corporate identities he maintains.”

In contrast, the Complainant in Prime Pictures acquired its trademark years after the Respondent registered the domain name and offered no evidence, leading the Panel to conclude that “[a]ny reasonable investigation would have revealed that there was a fundamental weakness in the Complainant’s case, in that there was no basis in the Complaint and cases cited therein for alleging that the Domain Name was registered in bad faith.”

When the respondent captures revenue from advertising links to companies that compete with the complainant and lacks rights or legitimate interests in the domain name it presumptively registered the domain name to take advantage of the complainant's trademark. Respondents have made a number of attempts to evade the consequences by arguing that the registrar is responsible for establishing the links. As a general rule this argument is without merit. There is another class of respondent without any history of abusive registrations with registrar populated links who are given the benefit of the doubt. This is illustrated in Groupalia Compra Colectiva, S.L. v. Andrea Santini, D2010-1979 (WIPO January 26, 2011) (discussed in Note for February 9 on another subject), where in a footnote the Panel carved out an exception to the general rule:

This being an exception -- "the Panel is not persuaded" -- what is the general rule? The general rule is that respondent alone is responsible for the content posted on its website, regardless of the entity that places the links or derives income, StaffEx Corp. v. Lionheat Publ'g, FA 1069901 (Nat. Arb. Forum October 18, 2007) (Third party placement of links "no excuse"), although a distinction is made by the 3-member Panel in A. D. Banker & Company v. Domain Invest, D2010-1044 (WIPO September 30, 2010) for transient posting of links. Transient is where the respondent has not had time to propagate its own content. Apart from respondents with "no intention to deceive" or who have not had time to expunge the prior owner's links, respondents cannot avoid imputation of bad faith by arguing that it contracted the responsibility to a third party, any more than in civil law is there any exonerative principle that shields a principal from liability for the acts of its agent.

A consensus has formed on the issue of responsibility: "the fact that a third party is effectively operating the website on behalf of Respondent, and making payments to the Respondent on the basis of that use, does not insulate Respondent from the conduct of its authorized agent," Park Place Entertainment Corporation v Anything.com Ltd., D2002-0530 (WIPO September 16, 2002) (<flamingo.com>). Even though the owner of a parked domain name may not control the content "it is ultimately [the] respondent who is responsible for how its domain name is used," State Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum November 20, 2007).

In a case not otherwise remarkable, the Respondent in Disney Enterprises, Inc. v. Cyber Domain Services Pvt.Ltd., FA1012001365612 (Nat. Arb. Forum January 31, 2011) asserted in defense that he had a common law trademark for the domain name <waltdisneyswan.com> despite trafficking on a famous trademark. He based his right on a recent case from the district court from the Eastern District of Virginia, Weitzman v. Lead Networks Domains Pvt., Ltd., l:09-cv-01141 (October 26, 2010) in which the court (adopting the report and recommendation of the magistrate judge) entered an order granting judgment to return the domain names to the plaintiff. The magistrate judge found that the plaintiff, a domainer whose domains names were fraudulently transferred, was entitled to a remedy under the Anticybersquatting Consumer Protection Act. The Plaintiff argued that he had a common law trademark “because his advertising services are distinctive and pertain specifically to users clicking on the disputed Domain Names.” The “real question [noted the magistrate judge] now turns” on whether

The magistrate judge held that the plaintiff - domainer had trademark rights in the domain names and was entitled to recover them from the defendant.

There is precedent under UDRP for complainants to recover domain names fraudulently transferred where their trademarks were incorporated in the domain names. However, it is an open question whether a complainant (like the plaintiff in Weitzman) who rests its trademark on the stolen domain names would have an actionable claim under the UDRP; that is, whether it would satisfy the first element of the Policy. Put another way, would Weitzman if he had commenced an administrative proceeding have been successful in recovering the stolen domain names. A remedy for fraudulent transfer or hijacking is clearly outside Policy where the complainant is unable to satisfy the threshold test, Lawrence Gurreri v. To Thai Ninh, FA1006001328554 (Nat. Arb. Forum July 12, 2010)

However, a reading of the decision in Edward G. Linskey Jr. v. Brian Valentine, D2006-0706 (WIPO September 18, 2006) indicates that a Weitzman-like complainant could succeed. The Panel held that the “Complainant’s evidence in this proceeding ... is not sufficient to demonstrate any use of <finances.com> as the source of his claimed consulting services or any public recognition of his mark or website.” The evidence showed only the Complainant’s use of <finances.com> as a web and email address. “There is no evidence of any person visiting that website or sending or receiving emails from that email address. That alone does not establish trademark rights in <finances.com> sufficient to invoke the Policy.” By implication, if the Complainant had demonstrated that the general public recognized “<finances.com> as the source of his claimed consulting services or any public recognition of his mark or website” then the Panel would have moved on to the second and third elements of the Policy.

The decision in Lawrence Gurreri, however, by dicta similarly indicates that the problem for the Weitzman-like complainant is an evidentiary one. “Although Complainant provides some evidence of an association between his personal name and the INTERNATIONAL CIRCUIT mark, he has not established sufficient secondary meaning in the mark [<internationalcircuit.com>] to create common law rights in the mark.”

"It is for the Complainant to prove its case under the Policy, not for the Respondent to prove his defense," Groupalia Compra Colectiva, S.L. v. Andrea Santini, D2010-1979 (WIPO January 26, 2011). Although the respondent has a burden of persuasion on the issue of right or legitimate interest, it is the complainant who bears the burden of proof on the third element. So that, if neither party presents a strong case where they ought and the scale is in equipoise on the third element, the complainant loses.

The word "groupalia" is the dominant term of the Complainant's trademark, GROUPALIA COMPRA COLECTIVA (a figurative mark) and GROUPALIA TRAVEL, but it has no trademark for "groupalia" standing alone. However, the parties have European residency. Geographical congruity is generally a basis for concluding that respondent was likely aware of the complainant and its trademark. In this case, the Respondent appeared and offered what the Panel held was a plausible explanation for its choice of domain name, even though the Respondent's testimonial proof was contradictory in that he claimed both that he was unaware of the Complainant and that he was aware of the Complainant's website.

The Panel excused Respondent's contradiction in Groupalia Compra Colectiva as follows: "The inconsistency in the Response to which the Panel has drawn attention could be an indication of untruthfulness, but it could equally well be a result of the fact that the Respondent is not working in his mother tongue. There is no evidence before the Panel to show that the Respondent has a history of domain name abuse." Complementary to the inconsistency of the Respondent's testimony is the Complainant's unsatisfactory record. "While there are aspects of the Respondent's story, which are unsatisfactory (e.g., the absence of any evidence to support the existence of his plans for the website to be connected to the Domain Names and the inconsistency relating to his knowledge of the Complainant at time of registration of the Domain Names), there are also unsatisfactory aspects of the Complaint."

Groupalia Compa Colectiva is a case that could have gone either way. What one Panel finds "unsatisfactory" about a complainant's record will give no pause to another. When more credit is given to one party over the other the result is a benefit of the doubt decision. What the Panel in Groupalia Compa Colectiva found "unsatisfactory" is that the Complainant failed to proffer evidence on the date the domain name was registered its website "indicate[d] that [it] then had [unregistered] trademark rights in respect of the name 'Groupalia'." Further,

The Panel ultimately was unable to "make a finding to the effect that the Respondent has been untruthful," the inconsistency in its response and the fanciful explanation notwithstanding.

Complainants sometimes have an inflated view of their international reputation: that it has penetrated to the far corners of the world; that it is inconceivable that the respondent was unaware of them; which it may have been when it registered the domain name; even though conceivably no so in the present. But for the complainant the emphasis of evidence should on the past. The Panel in Viko Elektrik Ve Elektronik Endüstrisi Sanayi Ve Ticaret Anonim S,irketi v. UniqueBrandNames, D2010-1856 (WIPO January 26, 2011) notes

In too many of these cases, the complainant focuses its evidence on the present; but the tortuous act occurred in the past; so that the evidence necessary to prove the case must be its reputation then, not now. "However, there is no evidence before the Panel to suggest that back in November 1998 the Complainant's name was so well-known internationally that the Respondent must be taken to have heard of it." Further, "[w]hether or not that use of 'Viko' was sufficient to give rise to unregistered trade mark rights in respect of the name prior to registration of the Domain Name in November 1998, the Panel is unable to say, as there is no material before the Panel to enable the Panel to assess the nature and extent of the Complainant's business prior to registration of the Domain Name." Unless the complainant offers evidence of its reputation when the domain name was registered, "it would be difficult to say that the Respondent, in registering the Domain Name, was seeking to take advantage of any such rights."

In order to establish bad faith registration, the complainant must demonstrate directly or by persuasive inference that the respondent had it "in mind." One piece of evidence could be the content of the website; another could be the close geographic proximity of the parties; another could be the uniqueness of the term. Here [in Viko Elektrik], noted the Panael

Further, the Respondent "produced evidence to show that [Viko] is a mark used by several different entities around the world," thereby establishing that the name is not unique to the Complainant.

The fact that there are potential purchases of the <viko.com> and the domain name is for sale does not support a claim under paragraph 4(b)(i) of the Policy. "Respondent states that several companies have approached it to purchase the Domain Name, some being prepared to pay a six-figure sum for the name." "So, what? [notes the Panel in response to the assertion that the domain name is being held passively]. "There is no obligation to make use of a domain name any more than one is required to take one's car out of the garage or use one's telephone." The "so, what" is equally applicable to selling the domain name. A respondent is entitled to sell its assets, unless the proof demonstrates that it (in fact) had the complainant in mind. That evidence was missing in Viko Elektrik.

While a respondent’s failure to act timely does not effect its right to contest the UDRP order it will lose control the domain name to the complainant pending the outcome of the litigation.

The Policy provides that either party may commence an action “in at least one specified Mutual Jurisdiction.” A Mutual Jurisdiction is “a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider,” Rule 1.

If the order denies the complaint, the complainant may commence an action under the ACPA against the registrant directly if it is amenable to service, or if not amenable an in rem proceeding in the location of the Registrar or the Registry. The ACPA enlarges venue to include the “registry,” 15 U.S.C. §1125(d). Statistically, judicial challenges by losing complainants are likely to be successful, while those by respondents are likely to be unsuccessful, although there are exceptions the earliest of which was Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 626 (4th Cir. 2003), summary judgment in favor of plaintiff, formerly Respondent in Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc. D2000-0505 (WIPO August 7, 2000).

Deference flows in only one direction. Courts of law do not defer to UDRP decisions. It has been held that “a federal court's interpretation of the ACPA supplants a WIPO panel's interpretation of the UDRP,” Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 28 (1st Cir. 2001); again, “because a UDRP decision is susceptible of being grounded on principles foreign or hostile to American law, the ACPA authorizes reversing a[n] [arbitration] panel decision if such a result is called for by application of the Lanham Act,” Barcelona.com; again, that a UDRP decision is not an “arbitration” as envisioned by the FAA, Parisi v. Netlearning, Inc. 139 F. Supp. 2d 745 (E.D.Va. 2001) construing 9 U.S.C., §§ 1-14; again, the “[r]eview []must be de novo and independent of any WIPO panel conclusion,” Parisi, supra; again, “the UDRP explicitly contemplates independent review in national courts,” Sallen, supra.

The Regional Court in Cologne in a de novo action by the Respondent in XM Satellite Radio Inc. v. Michael Bakker, FA0612000861120 (Nat. Arb. Forum February 27, 2007) held that "[w]hether the requirements stipulated by Paragraph 4(a) UDRP (on which the NAF Panel had based its decision) are satisfied or not is considered irrelevant." Further, "[a]s the (US based) Complainant did not have any trademark rights for ‘XM’ in Germany (where both the Respondent and the Registrar were located) the court rejected any claims under applicable trademark law” Case no. 33 O 45/08, 16 June 2009. The Court contined (translatation in part at adr.eu) “In court proceedings under Paragraph 4(k) UDRP the national court shall only apply the relevant national law (e.g. trademark or unfair competition law)."

A holder's right accrues when it acquires its trademark. It is a going forward right; not one that reaches back, which means that earlier registered domain names have priority in the use of the term. If the trademark was not in existence when the respondent acquired the disputed domain name it could not be charged with abusive registration. By virtue of the complainant holding a trademark it has standing to maintain a proceeding but no actionable claim. In such a circumstance, one of the questions is whether the complainant has overreached in commencing the UDRP proceedings and be exposed to a ruling of reverse domain name hijacking. The answer is "yes" in Webpass, Inc. v. Paul Breitenbach, D2010-1796 (WIPO December 2, 2010) ("The Complainant knew when it filed the Complaint that the registration of the disputed domain name preceded by several years any rights that the Complainant may have acquired in the mark WEB PASS."). And, "no" in Dynamis, Inc. v. BB & TT, FA1012001364095 (Nat. Arb. Forum January 26, 2011).

There is a penumbral line in reverse domain name hijacking. In denying the request for a ruling against the Complainant the Panel in Dynamis explains "[i]n the first place ... [the] Complainant does have rights in the name DYNAMIS." But, so did the Complainant in Webpass! The focus should not be on what right the complainant has in the present, but on what it has done in the light of its knowledge of the respondent's right. It clearly cannot be that simply having a trademark is sufficient to protect the complainant from an adverse ruling. The second explanation by the Panel in Dynamis is particularly on point. "Secondly, it is not clear from the record what information about Respondent's use of the Domain Name was reasonably available to Complainant prior to filing its Complaint."

If there is a standard of proof for finding of reverse domain name hijacking it is not applied consistently. RDNH is defined in Rule 1 as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Rule 15(e) fills in the blanks by authorizing the Panel "to declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding ... [i]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder."

RDNH by definition is intensely fact driven and decided on a case-by-case basis. The conduct that draws the sanction is of two types, either "an attempt at Reverse Domain Name Hijacking" (as that term is defined in Rule 1) or commencing a proceeding "primarily to harass the domain-name holder." There are two standards: "malice aforethought" [Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000)] and "utterly clear" [Great American Insurance Company v. Ron Hamilton, FA109753 (Nat. Arb. Forum October 14, 2002)].

The "malice aforethought" standard demands proof positive from the respondent of complainant's abusive intent [Mess Enterprises v. Scott Enterprises, Ltd., D2004-0964 (WIPO January 25, 2005) ("Respondent registered the domain name ... in spite of [its] knowledge, then proceeded to intentionally secure a trademark registration with an express purpose of fraudulently invoking the Policy as a means to wrest the disputed domain name from the Respondent."] In the case of Dynamis, the Panel gave the Complainant the benefit of doubt, thereby indicating that it is in the "malice aforethought" camp, meaning that the Respondent's evidence was insufficient.

The "utterly clear" standard returns the burden to the complainant to rebut an allegation of abusive intent. The Complainant in Altametrics, Inc. v. Ryan Sveinsvoll, FA1008001343628 (Nat. Arb. Forum November 11, 2010) argued and the Panel concurred that it is "unreasonable to expect Complainant, who originally filed this proceeding against a 'Domains by Proxy' undisclosed registrant, to know the myriad individual and corporate identities he maintains." In contrast, and equally "utterly clear" the Complainant in Webpass offered none of the extenuating cirmsances proffered in Altametrics.

Fortuity can enter into the choice of name, but it is tenuous when the trademark is an arbitrary collation and less suspicious when it is generic or descriptive. Take for example MOWITANIA, the Complainant's trademark in Mowitania Wendt & Molitor GbR v. Eric Clermont, D2011-0052 (WIPO February 22, 2011). According to the Complainant the "mowi" component is formed by combining the "first syllable of Mr. Molitor's surname ('Mo') and the first syllable of Mrs. Wendt's first name ('Wi')." The Complainant offers no explanation for the "tania" part of the trademark, but it sounds like a fanciful addition. The Respondent, on the other hand, had a fulsome explanation for its second level domain, namely that it registered the disputed domain name "for a project involving modern wines in Tanzania and that the disputed domain name is effectively an abbreviation of that term." The component parts are, allegedly: "Modern+ Wines+Tan(zan)ia" = MoWiTania." The Respondent would have the Panel believe that the "identical spelling to the disputed domain name is a matter of fortuitousness."

One should never rule out fortuity, but stories should be believable. This one includes an alleged unidentified principal who is claimed already to have incurred significant costs in the Tanzania wine project. When a party advances a barely credible story it is expected to flesh it out with evidence only it could have access to. Here, "[t]he Respondent fails to provide an adequate explanation for why, since the disputed domain name came to the attention of the Complainant in early 2010, it has only ever been used in connection with accommodation services, of an increasingly close connection to the business of the Complainant."

It is some evidence of good faith that a respondent registered the domain name prior to the complainant's registration of its trademark; also that the parties reside in different countries far removed from each other, as in Mowitania the Complainant in Germany, the Respondent in Tailand. These facts raise issues of knowledge and targeting. If the respondent had (could not have had) knowledge of the complainant it undercuts any inference of bad faith registration regardless of subsequent bad faith use. However, allegations of ignorance are not conclusive. "Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right," WIPO Overview at paragraph 3.1. The WIPO Overview continues:

In Mowitania, the Panel found that the Complainant had unregistered rights predating the registration of the domain name. It also found evidence of bad faith registration from communications between the parties prior to the commencement of the proceedings. The Panel noted:

But, "an email from Booking.com's legal counsel to the Complainant ... clearly states that the user of the disputed domain name is a business partner of that organization in terms of its affiliate program." The inference is that "Respondent's enrollment of the disputed domain name in such a program signifies clear commercial intent to use the disputed domain name in connection with accommodation services." Why, if the Respondent's purpose for registering the disputed domainname was to promote Tanzanian wines, the website would contain accommodation services rather than information about the Tanzanian wine project is not explained.

A party's explanation fails of persuasion if implausible. "Furthermore ... the Panel has serious doubts regarding the credibility of the Respondent's submissions regarding its alleged project given that the Respondent has entirely failed to provide any supporting evidence thereof." Incredibility supports a conclusion that the Respondent registered the domain name with knowledge of the Complainant – not fortuity at all in its choice – and for the purpose of shaking down the Complainant with a made up story of a Tanzanian wine project.

In denying relief to a trademark holder for a claim that exceeds the Policy's scope Panels explain that "the decision should not be read as a substantive decision on the merits of any trademark infringement claim," Intertek Group Plc. v. ADFA Co., D2010-2128 (WIPO March 8, 2011). This is because the UDRP proceeding is not a trademark court; at least not formally. Its limited jurisdiction extends only to the issue of cybersquatting. It is conceivable for a respondent to have a right or legitimate interest in a domain name under UDRP jurisprudence, yet be an infringer under the Lanham Act of which the Anticybersquatting Consumer Protection Act is part and parcel. The Panel in Intertek concluded that the "Complainant has failed to establish that Respondent is not an authorized user of Complainant's marks."

This raises an interesting point about the UDRP. While it is true that it is not a trademark court, it is not entirely true. A cybersquatter is a registrant who knowingly occupies a trademark holder's reserved space. The representation and warranty provisions of the registration agreement and paragraph 2 of the Policy could not be more clear about a respondent's choice. Paragraph 2 reads in part "It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." Thus, in effect the Panel determines what a court of law would, namely that the respondent has or has not "infringe[d] or violate[d] someone else's rights."

Now, this determination may not be the last word because the losing respondent has a right to challenge it in a court of law. However, for the prevailing trademark holder the Panel is a surrogate judge. It should be quickly noted that for the most part losing respondents also lose under the ACPA. The most recent specimen of this is Lahoti v. Vericheck which had two rounds in the 9th Circuit both favoring the trademark holder and affirming the district court's finding that the plaintiff acted willfully in registering and using the domain name. In the second round decided on February 16, 2011 the Court held: "In light of our conclusion that the VERICHECK mark is distinctive, the district court's conclusion that Lahoti violated the ACPA is also AFFIRMED," no citation as yet. The Court also affirmed attorney's fees as well as statutory damages. Not a pretty outcome for the domain name registrant and likely to be a disincentive for other respondents thinking about their chances in federal court.

So, to return to the issue of the UDRP as a trademark court. If the finding favors the trademark holder it is a proto-trademark court; a first go through of the evidence of bad faith registration and use. The UDRP is not a proto-trademark court, however, when the finding exculpates the respondent of cybersquatting. In Intertek, the Complainant failed to rebut an inference of authorization. "Respondent may be acting pursuant to authorization that was granted to it by Complainant which has never formally been terminated." In these situations the Panel acts modestly, which is the reason for its comment that the "Complainant [may] ultimately ... choose to bring" the issue of trademark infringement to court, because in the presence of a genuine issue of material fact that is the only proper venue.

A reasoned decision that a dispute is outside the scope of the Policy has the effect of leaving the domain name with the respondent. It is also a juridical first look at the merits of the case based on the documentary and written testimonial evidence marshaled by the parties to support their respective claims. Both disputants in K & K Promotions Inc. v. Route 44 Leathers, D2011-0088 (WIPO March 10, 2011) exploit the name of Evel Knievel, a daredevil motorbike entertainer in the 1970s and 80s who was inducted into the Motorcycle Hall of Fame in 1999 and died in 2007. The Complainant holds a basket of EVEL KNIEVEL trademarks; the Respondent, allegedly received the blessing for merchandising "Evel Knievel" clothing directly from his friend Evel Knievel himself. The Panel summarizes the Respondent's contentions and submitted evidence as follows:

As to the second element of the Policy, Respondent contends that he and Robert C. Knievel were close personal friends.... [That] he and Knievel entered into an agreement as early as 1997 which authorized Respondent to be the sole designer, producer and supplier of Evel Knievel branded merchandise.... [Further] that he registered the Disputed Domain Names in connection with this merchandising business.... [That in support he] provides photographs of two handwritten notes, one of which is dated March 7, 2003, allegedly drafted and signed by Evel Knievel himself ... [and as] a result, Respondent contends that he possesses legitimate rights with respect to the Disputed Domain Names.

The Complainant acquired the trademark rights from Robert Knievel in 2007. There is, then, as is said in opposing a motion for summary judgment, a genuine issue of material fact, namely that the Respondent allegedly received permission to use the trademark "in connection with this merchandising business." The Panel noted that in this case "the first factual predicate, registration in bad faith, is challenging because the exact date on which Respondent registered the Disputed Domain Names is uncertain." In addition, there is also the issue of Evel Knievel's authorization before he transferred his trademark rights to the Complainant. "During this time, Respondent has offered evidence that Respondent and Knievel were in a contractual relationship authorizing Respondent to make a bona fide offering of goods in connection with the Disputed Domain Names," citing Schneider Electronics GmbH v. Schneider UK Ltd., D2006-1039 (WIPO October 21, 2006):

Complainant cannot prevail in a UDRP proceeding because it failed to "address whether, prior to [its] taking ownership of the Marks, Respondent may have had such authorization and provides no information about Respondent's prior relationship with Knievel." Further "[e]ven if Complainant could establish that Respondent's current use of the Disputed Domain Names were unauthorized and in bad faith, this alone is insufficient to satisfy the third element under paragraph 4(a)." On these facts the Complainant is not entitled to what in essence is summary judgment compelling transfer of the disputed domain names.

Paragraph 4(a)(i) of the Policy requires a complainant to demonstrate that it has a trademark. If registered, the requirement is easy of proof, and although an unregistered trademark is no less entitled to protection, 15 U.S.C. §1125 (Section 43 of the Lanham Act), distinctiveness is not presumed; protection must be earned. It has been noted that "Panelists with WIPO and NAF have sometimes approached the issue of proof of trademark 'rights' ... in a slightly more relaxed manner than does the USPTO when it requires proof of secondary meaning," NJRentAScooter v. AM Business Solutions LLC, FA0909001284557 (Nat. Arb. Forum November 4, 2009). However, secondary meaning has to be established in both instances.

If panelists are more relaxed – a complainant's should not be in their proffer of evidence – it is because for the UDRP the issue is standing to maintain the proceeding; is not conclusive of any right to the domain name; whereas for the USPTO the issue is more fateful; it is a matter of which Register. A domain name composed of generic or descriptive elements may pass the 4(a)(i) test, but not be eligible for the Principal Register. In the case of NJRENT A SCOOTER the mark was simply too descriptive. In St Andrews Links Ltd v. Refresh Design, D2009-0601 (WIPO June 22, 2009) THE OLD COURSE identifies the source of the Complainant's services; had standing; and the Respondent forfeited <theoldcourse.com>. In other instances, the mark has passed the USPTO test but its very descriptiveness supports the respondent's defense that it has a right or legitimate interest in the domain name, Discount Embroidery Supply v. AllStitch LLC, FA1007001336136 (Nat. Arb. Forum September 6, 2010) (<discountembroiderysupplies.com>).

The standard of proof is summarized in Camco Manufacturing, Inc. v. CheapYellowPages.com and Brian Wick, FA1102001370745 (Nat. Arb. Forum March 18, 2011). "To support a finding of secondary meaning, a panel may consider factors such as the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. These factors are considered in conjunction with all of the evidence and the nature of the claimed mark (i.e. whether it may be generic or descriptive)." A similar conclusion was reached in Wickless Scentsations, Inc. v. TimG Niche Marketing / Timothy Gorman, FA1012001365753 (Nat. Arb. Forum March 15, 2011), citing cases from U.S. federal courts and an early UDRP decision that succinctly states what the complainant must offer to satisfy its burden, British Heart Foundation .v. Harold A Meyer III, AF0957 (eResolution November 13, 2001):

Even disclosure of first use in commerce on a trademark application (which is merely an unverified statement) is not probative of secondary meaning. The principle of relation back only applies to the date of application; not to first use in commerce. For standing in a UDRP proceeding, the complainant must prove (not simply allege) the earlier date "in commerce." Xoft Inc. v. Name Administration Inc. (BVI), FA1154179 (Nat. Arb. Forum April 25, 2008): "the date of registration does not relate back to the date that the application was filed unless there is clear evidence of use in commerce sufficient to create a secondary meaning in the mark." This leads to the anomaly that although a declaration of continuous use of a descriptive mark for at least five years prior to the application may be sufficient for trademark registration it is not necessarily adequate to prevail under the UDRP, Discount Embroidery Supply, supra.

I briefly mentioned Quester Group, Inc. v. DI S.A., D2010-1950 (WIPO February 14, 2011) in my Monday Note and think it worth another visit. The Complainant is in the business of selling guitars; the Respondent is in the business of aggregating links for buyers of guitars. It is mainly interesting because of the split decision in the Respondent' favor. The majority noted that "[t]he dividing line can be difficult to draw," particularly where the trademark is composed of a descriptive phrase, ULTIMATE GUITAR. In this respect, the problem is self created. "In fact, it is the very ability to draw consumers by the descriptiveness that leads mark owners to choose such terms in the first place." For a trademark holder of generic and descriptive terms it must present evidence of targeting, which was lacking in Quester Group's record.

The record in Quester Group revealed that the Respondent acquired the domain name prior to the registration of the trademark. In itself, this would not prevent a complainant from maintaining a UDRP proceeding if shows common law rights to the term. In fact, "[t]he [Quester] Complainant provided copies of six United States trademark registrations as Exhibits to its Complaint. Three of these registrations are on the Supplemental Register; the other three are on the Principal Register but refer to Section 2(F)." This signifies for the Section2(F) registrations that the phrase ULTIMATE GUITAR was registrable only because the Complainant established secondary meaning to the mark. "Registration of a mark on the Supplemental Register ... constitute[s] an admission that the mark is merely descriptive," 15 U.S.C. § 1115(a), although it does not preclude proof of acquired distinctiveness, 15 U.S.C. § 1095.

Registering a descriptive term is not for that reason alone evidence of abusive registration. More is required. In this case, "Respondent supplied evidence of its business model which is based on registration and monetization of domains that use terms of common meaning." The majority noted that

The question is whether the domain name was acquired for an illicit reason to take advantage of the trademark. "In this case," (noted the dissent) "the website at the disputed domain name links to websites and itself contains material that is directly competitive with the Complainant's business." He offers the following analogy:

The dissent concluded that the Respondent "is intentionally capitalizing on the similarity between the Complainant's trademarks and the disputed domain name and the confusion caused to Internet users."

The majority's belief that the Complainant's argument is weakened because the Respondent acquired the domain as part of a sizable portfolio purchased from another dealer is challengeable and not satisfactory because domainers have a duty on acquisition – remember acquisition = registration – to investigate whether any domain in a "sizable portfolio" infringed "upon or otherwise violate[d] the rights of any third party." There was no evidence of any investigation in Quester Group.

Since the complainant has the burden of proof, any doubt that the respondent registered and is using the domain name in bad faith necessarily favors the respondent. Doubt is the consequence of an insufficiency of evidence. The most dramatic illustrations are cases in which the complainant has failed over many years to police its trademark and demands that the domain name be transferred to it. But Panels are reluctant to order forfeiture despite the non application of laches; generally for good reason. In The Economist Newspaper Limited learned this in its claim against TE Internet Services, D2007-1652 (WIPO February 5, 2008) (<theeconomist.com>) the Complainant waited 11 years. In a more recent case, Betty Bossi Verlag AG v. SinoSwiss Co., Ltd., D2010-2264 (WIPO February 22, 2011) the Complainant also waited 11 years to claim <bettybossi.com>, determined incidentally by the same panelist as in The Economist.

In problem in both The Economist and Betty Bossi is not just the sitting on one's rights over an extended period, but the difficulty of marshaling conclusive evidence of abusive intent at the time of the registration. "The longer the interval between registration of the disputed domain name and the filing of a complaint under the Policy" (noted the Panel in Betty Bossi) "the harder it becomes for a complainant to prove bad faith registration and bad faith use. Both need to be proved." One Commentator noted with regard to the Betty Bossi case that "[u]nfortunately, I think the Panel got hoodwinked." But, was the Panel really hoodwinked or is the commentator overlooking the Panel's genuine doubt? What is really the case!

It may appear that way because (I can hear the Commentator saying) there is surely a difference between the second level terms of the two cases, The Economist and Betty Bossi. "The economist" (after all) is a common phrase even though distinctive when referring to the news magazine known as The Economist. However, the Respondent appeared and explained why he had chosen the domain name: "I considered this powerful man [Alan Greenspan], who was an economist to be 'the Economist'." I do not have any particular interest in economics. I was simply fascinated with Alan Greenspan." By itelf, this would not support a passing-off action.

The term "betty bossi" on the other hand does not appear to be common; at least, is not common on the surface. But, apparently (as the Panel notes) "betty bossi" was "a fictional character – a cook – whose name was invented in the 1950s and first used in a cooking magazine in 1972." There is no evidence that the Complainant invented the fictional character, therefore had no intellectual property right to it, so the term must have become a cultural commonplace in Switzerland where the Complainant does business and where one of the principals of the Respondent came from. So in the "betty bossi" case, a name that on its face appears arbitrary is actually a common term until exploited in the marketplace. But, who is to say whether trademark of a cultural term registered in one jurisdiction has priority over the same term registered in another jurisdiction? In makes no difference that the Respondent business entity included a Swiss national because he was equally exposed to the common term as was the Complainant.

The problem (if we may express it that way) is that expressions common in a particular community are not owned by A anymore than B unless they have already become for A distinctive as the source of its goods or services before B has used the same expression for its own goods or services. However unsatisfactory the respondent's explanation in Betty Bossi for its choice of name (and, frankly, the explanation is difficult to credit), it appeared to be making a bona fide offering of services in a market far removed from the complainant's. Its right is further enhanced by the fact that it obtained a trademark for the services it offered in that remote jurisdiction. "The available evidence shows" (notes the Panel) "that the Respondent has been using the disputed domain name for 11 years in connection with its apparently legitimate business of offering career-enhancement for women. It obtained registered trademarks in Thailand, the country where it is located."

Although not quite apropos, but emphasizing that benefit of the doubt favors the respondent is the Panel's observation in Quester Group, Inc. v. DI S.A., D2010-1950 (WIPO February 14, 2011): "[While the] descriptive use of common dictionary words to link to sites that deal in the described goods may not avoid capitalizing on a similar trade mark using the same words ... that is an exposure that owners of descriptive marks must accept when the select their brands using common product names." In Betty Bossi, the Complainant chose as its mark a name it did not own circulating in its culture. In that respect "it must accept" the possibility that others thought the name would also work for them as a trademark. That is not evidence of abusive registration!

Some respondents believe that registering lapsed domain names establishes a possessory right – a finders keepers attitude – invulnerable to a claim of abusive registration. This explains why in VIRBAC v. PrivacyProtect.org, Mantow Tian, Preventic China Systems, Isaac Goldstein, D2011-0026 (WIPO February 23, 2011) one of the Respondents is so indignant at being accused of bad faith. The "Center received an email from Mantow Tian informing the Center [that it] will contact Chinese authorities and courts if you steal our domain name." But the indignation is is misplaced. Inadvertent lapse in renewing a domain name has no effect on trademark holders' rights. There is no principle of law that bars a trademark holder from recovering a lost domain name; the only bar is the complainant's inability to prove its case. In VIRBAC, the Respondent allegedly purchased the domain name from another named respondent who registered it after the Complainant inadvertently failed to renew its own registration. However, having issued the threat none of the Respondents appeared.

It should not be thought that the business model of registering lapsed domain names is in itself abusive. Domain names are abandoned all the time for who knows what reason. But domain names with heavy traffic signify the prior registrant's market penetration thereby putting the new registrant on notice that the second level domain may be a trademark. The VIRBAC Complainant states that it "ranks today as the 8th largest veterinarian pharmaceutical group in the world. Its wide range of vaccines and medicines are used in the prevention and treatment of the main pathologies for both companion and food-producing animals." The domain name is identical to the arbitrary trademark, PREVENTIC. As the Complaint points out "preventic" is "not a common word in English or in French." Indeed, "[s]imple Internet searches under the Trade Mark immediately refer to the Complainant and its products under the Trade Mark."

The governing principle on this issue began emerging quickly after the initiation of the UDRP. "Intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith," Red Nacional De Los Ferrocarriles Espanoles v Ox90, D2001-0981 (WIPO November 21, 2001). Registrants of lapsed domain names cannot be blind to the possibility – are in fact expected to perform some due diligence under paragraph 2 of the Policy – that the lapsed domain name is a trademark.

Domain name registrants represent and warrant at the time of registration that "to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party," Paragraph 2 of the Policy. The Panel in mVisible Technologies Inc v. Navigation Catalyst Systems Inc., D2007-1141 (WIPO November 30, 2007) held that "a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights," adding that "a failure to conduct adequate searching may give rise to an inference of knowledge [of the complainant's mark]."

Whoever Mantow Tian may be, Isaac Goldstein is no stranger to UDRP proceedings; rather, a professional domainer as he states in his Twitter account: "I own many premium domain names, and I am currently investing in several coming web projects." However, a domain name containing the trademark "preventic" will not be one of the "coming web projects."

Engaging in Extensive, Widespread Publicity of Website and Service Prior to Domain Name Registration

As a general rule, domain name registrations that precede trademark rights cannot have been in bad faith even though (and when) there is subsequent use in bad faith. However, where the complainant has extensively publicized its goods or services in the same jurisdiction in which the respondent resides and particularly if the respondent is a competitor, the complainant is deemed to have the requisite trademark rights to maintain a UDRP proceeding. This principle of standing is restated in the WIPO Overview at paragraph 3.1: it applies where the respondent acquires advance knowledge through the media and "registers the domain name to take advantage of any rights that may arise from the complainant's enterprises."

In News Digital Media Pty Limited v. Steve Tope, D2010-1608 (WIPO February 3, 2011) the Respondent argued (among other points) in opposing standing that "The Complainant uses consistent design and stylistic features to identify the 'True Local' business and these are not incorporated into the Respondent's website. Further, there is no reference to 'True Local' as being the name of the Respondent's business. Therefore, the disputed domain name is not confusingly similar to the Complainant's trademarks." The argument that website content and design affects the confusing similarity analysis has been similarly rejected. The consensus is stated in the WIPO Overview at paragraph 1.2:

The commonness of the trademark in News Digital notwithstanding, TRUE LOCAL, the crux is the publicity preceding registration of <truelocalaustralia.com> and the propinquity of the parties. Had the respondent been a person resident on another continent and plausibly without knowledge of the complainant the registration of a common term would be no more than adventitious. That is not true where the respondent is in the same jurisdiction and a competitor:

In News Digital Media, "the Respondent is using the disputed domain name for the very services covered by the Complainant's rights in the [same] territory." It is "[i]n light of this" (continues the Panel) that "the Panel finds that the Respondent intentionally chose the disputed domain name in order to cause confusion in the mind of Internet users as to the affiliation between the Respondent's website and the Complainant's trademarks and as such attract them to its website."

Dueling Constructions of the Policy When Panelists Concur as to Respondent's Bad Faith Use

In words or substance panelists have stated in thousands of decisions that the UDRP is not a trademark court. Its jurisdiction is limited. It is not convened to determine trademark infringement or passing off claims. To find cybersquatting the trademark holder must prove that the respondent both registered (past tense) and is using (present tense) the domain name in bad faith. The jurisprudence of other dispute resolution policies and the ACPA are different. Some panelists have argued that the UDRP should be construed to eliminate the "and" where bad faith use is found under paragraph 4(b)(iv) of the Policy. Recourse where the respondent registered the domain name in good faith but is using it in bad faith is an action in a court of law. There is no prohibition for a foreign trademark holder to commence an ACPA action against a domestic respondent, although the cost may exceed the benefit – which is one of the reasons for trying the administrative route in the first place.

The dueling constructions of the Policy are presented again in Xbridge Limited v. Marchex Sales, Inc., D2010-2069 (WIPO March 1, 2011). The panelists do not disagree that the Respondent lacks rights or legitimate interests in the domain name:

Three member Panels debating the conjunctive as opposed to disjunctive constructions of the Policy disagree that the Respondent registered the domain name in bad faith. The domain name in Xbridge, <simplybusiness.com> is a common phrase. There is no evidence that it was registered with the Complainant in mind – "At the time of registration, the Respondent could not have contemplated the Complainant's then non-existent right. In such circumstances, the Respondent (under the name MDNH Inc.) did not acquire or register the disputed domain name in bad faith" – although its subsequent use takes advantage of the Complainant's trademark.

The voices that support the disjunction model for the Policy would re-engineer it as a trademark court. "If that was the intent of those who crafted the Policy, one wonders why the word 'or' was not actually used."

In connection with a study mandated by The Trademark Technical and Conforming Amendment Act of 2010, the USPTO has requested "feedback from U.S. trademark owners, practitioners, and others regarding their experiences with litigation tactics ... and is [soliciting] suggestions to address any allegedly problematic litigation tactics." The question defines a trademark "bully" as a "trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow." Responses from a number of trademark organizations flatly reject the implication that aggressive tactics equate to bullying. For example, the AIPLA notes that the definition of bullying "unfairly characterizes trademark owners who assert their legitimate rights under the law and assumes ill intent without defining what might be considered 'harassment' or 'intimidation'." The question is, How far is too far?

The responding trademark organizations point out that trademark holders have a duty to protect their intellectual property, or lose it. Aggressive protection does not necessarily rise to the level of bullying, although this is the target's subjective believe. "The One concern that some respondents to the ABA-IPL survey identified is that the alleged 'victims' of trademark bullying often believe that a trademark owner is asserting rights too broadly, even though owners are required to protect their rights." A Rule 11 sanction is a possible remedy against the overly aggressive that tips into bullying , although (as the ABA-IPL response also points out) "courts are generally reluctant to award sanctions or attorneys' fees and frequently decline to invoke [them]."

Those answering the ABA-IPL survey believed that the issue "should be left to the judiciary on a case-by-case basis." A good illustration of this is the David and Goliath duel in Toyota Motor Sales USA Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010) applying the nominative fair use defense. Although "bullying" is not mentioned Judge Kozinski concludes his opinion with the following statement: "Many of the district court's errors seem to be the result of unevenly-matched lawyering, as Toyota appears to have taken advantage of the fact that the Tabaris appeared pro se."

The "bullying" theme has also been raised against complainants to a UDRP proceeding. In a comment posted on UDRP-Search, for example, referring to a pending WIPO case by Massachusetts Financial Services Company for the domain names <mfsforex.com>, <mfsfunds.org,> <mfsmarkets.com> had this to say "The BIG guy like MFS is taken an advantage on small guy. I would like to whole world to know this."

Panelists have a Rule 11 kind of tool for declaring "bullying" (or "reverse domain name hijacking" in the lexicon of the UDRP). Parties are required to sign their pleadings with a certification that "the information contained in th[e] Complaint is to the best of [its] knowledge complete and accurate [and] that th[e] Complaint is not being presented for any improper purpose, such as to harass [the respondent]," Paragraph 3(b)(xiv) of the Rules of the Policy. This is "essentially a certification and expansion of 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).

Paragraph 4(a)(i) of the Policy is silent on whether the right the complainant is seeking to vindicate must be registered, but panelists within a few months of the UDRP’s implementation held that it was not necessary for a trademark to be registered by a governmental authority or agency for such rights to exist. The Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names,” The British Broadcasting Corporation v. Jaime Renteria, D2000-0050 (WIPO March 23, 2000).

Under U.S. trademark law for registration on the Principal Register the registrant must prove that it has made “substantially exclusive and continuous use [of a designation] as a mark ... in commerce for the five years before the claim of distinctiveness is made,” Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f). A symbol or badge is entitled to legal protection if it acquires a secondary meaning that distinguishes the goods/services it represents from the goods/services of another, which it does when it has been used in such a way that its primary significance in the minds of the prospective purchasers is not the product/service itself, but the identification of the product/service with a single source.

Despite initial hesitations the equal protection principle applies to unregistered trademarks whether accrued under common law or civil law jurisdictions. Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions published in 2005 notes that “[u]nregistered rights can arise even when the complainant is based in a civil law jurisdiction.” The issue is discussed in S.N.C. Jesta Fontainebleau v. Po Ser, D2009-1394 (WIPO November 21, 2009) and most recently in MCP Holding Ltd. v. Linh Wang, D2010-1999 (WIPO February 4, 2011) which cited the earlier case. S.N.C. Jesta Fontainebleau is a French company. The “domain name is very similar to the name of the hotel complex operated by the Complainant, differing as it does by a letter or two at the end of the name, a distinction which makes no difference to either the pronunciation of the name or its overall appearance.” Since S.N.C. Jesta Fontainebleau has no registered trademark rights “the question is ... whether or not it has unregistered common law trade mark rights or their equivalent for the purpose of the UDRP,” (emphasis added).

The evidentiary requirement for the “equivalent” to unregistered common law trademark rights is not significantly different, although the reasoning tacks to a passing off analysis. “Under highly specific circumstances, unregistered trademarks based in civil law jurisdictions may yet be protected under the Policy if narrowly defined requirements are fulfilled. In order to qualify for such protection, Complainant would have to show successfully that its name for example has become a distinctive identifier associated with its business or services.” The S.N.C. Jesta Fontainebleau Panel explains that

Under whatever analysis, the complainant has a heavy burden to demonstrate that at the time of the registration of the domain name it had “a reputation and goodwill in respect of the name of sign in question” and that the respondent’s use of it is likely to cause “deception in the marketplace.”

Finding Confusing Similarity Only Establishes the Complainant’s Right to Maintain the Proceeding

Providing that there is no intent to take advantage of another’s rights, employing linguistic elements common to a community of speakers for commercial gain is a legitimate enterprise. One aspect of this was discussed in my last Note on USA DANCE, INC. v. Rhapsody Ballroom, FA1102001372072 (Nat. Arb. Forum April 4, 2011) (<usadance.com>). Trademarks on the weaker end of the classification scale coupled with proof of a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy defeats complainant’s claim that the respondent is violating its rights. Dictionary words used in their ordinary sense and “registered because of their attraction as dictionary words, and not because of their value as trademarks” do not contravene the Policy, The Landmark Group v. Digimedia L.P., FA285459 (Nat. Arb. Forum August 6, 2004) (LANDMARKS and <landmarks.com>).

Another aspect of employing a common term, in this case evoking enchantment associated with a fictional character is found in AIDA Cruises - German Branch of Costa Crociere S.p.A. v. Futuron Internet Oy/ Noponen Consulting, D2011-0405 (WIPO April 11, 2011) (<aidacharter.com>. The question is, Is the respondent using the domain name for furtherance of its business – “[using] the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” – or violating a trademark holder’s rights? A finding of confusing similarity does not answer the question. It only establishes the complainant’s right to ask it.

In General Motors LLC v. Shenzhen Belding Golf Planning Co.,ltd., D2009-1781(WIPO February 10, 2010), for example, the Respondent registered <cadillacgolf.com> and argued that because the first part of the term was “an historical personality, Antoine de la Mothe Cadillac, the French Governor and founder of Detroit, it could not be monopolized by the Complainant. However, the evidence established both the trademark fame of Complainant as well as its international use for “golfing products and accessories and the sponsoring of golf exhibitions and tournaments.” Thus, the answer to the question in General Motors “Is the domain name being used in furtherance of a legitimate business?” is “no.” The purpose for registering <cadillacgolf.com> was to capitalize from the fame of the trademark rather than to promote a bona fide business using an historical personality.

The issue in many of thee cases is not the validity of the trademark but the respondent’s knowledge of it as a trademark and the manner in which it is using the domain name. In AIDA Cruises, there is sufficient similarity to find the domain name confusing because there is little distinction between “cruises” and “charter.” However,

Moreover, the Respondent “established that the name ‘Aida Charter’ is officially used as the auxiliary trade name of the company Noponen consulting [and that it] ... corresponds to the Respondent’s apparent charter sailing service,” which in addition supports a paragraph 4(c)(ii) defense.

It is not unusual to find trademarks composed of common terms competing in the cyber marketplace for the attention of Internet users or for an arbitrator to conclude that the coincidence is not an actionable offense. Recent examples include <kineret.com> (a Biblical geographical place name) [Swedish Orphan Biovitrum AB (pub) v. Zahav.net Inc., D2011-0257 (WIPO March 18, 2011)], <ultimateguitars.com> [Quester Group, Inc. v. DI S.A., D2010-1950 (WIPO February 14, 2011)], and <dealbook.com>[The New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010)]. Neither is it conclusive of abusive registration even if there is an existing relationship between the parties and likelihood of confusion. The threshold question is, What was the purpose for registering a domain name and the circumstances of acquisition?

The parties in USA DANCE, INC. v. Rhapsody Ballroom, FA1102001372072 (Nat. Arb. Forum April 4, 2011) (<usadance.com>) are not strangers. According to the Complainant and not denied, "Respondent is owned and operated by Richard and Laurie Collett ... [who] were members of Complainant's Southern Star Chapter until about 2004 ... [and who] continue to maintain a close relationship with USA Dance, Inc., Tampa Chapter." Respondent alleged that it had operated a Ballroom business since 1992 and in 2006 "opened and has since maintained an Ebay store selling dance shoes and dancewear for all styles of dance." The disputed domain name became available for sale in 2007. The Complainant knew about its availability and decided not to register it for its own account. The Respondent "expended considerable funds to purchase the Domain Name, along with its archived web pages and feeder pages."

The critical facts are the Respondent's purpose and the timing of the acquisition. According to the Respondent and not disputed, its "sole intention was to use the Domain Name and website to advertise and promote [its] online dance wear sales ... [which it has done] to drive traffic to and generate sales from the Ebay store." Also not disputed, that "Respondent has invested substantial time and money updating and maintaining the Domain Name and the website."

On the timing of the acquisition, the Complainant changed its name in 2005 from United States Amateur Ballroom Dancers' Association, Inc. to "USA Dance, Inc." It acquired a trademark for USA DANCE in 2009. The facts surrounding the acquisition of the domain name are also not disputed. According to the Respondent "the president of Complainant's Southern Star Chapter in Tampa, Florida knew about and encouraged Respondent's acquisition of the <usadance.com> domain name." It is alleged and not disputed that Complainant also knew about the availability of the domain name and "chose not to purchase the domain name because it was too expensive." There is no issue that the first holder of the domain name acquired it in good faith as the first to register the combined common terms "usa" and "dance."

Where the respondent is found to be making a bona fide offering of goods on its website confusion can be ameliorated by disclaimer. In USA Dance, the Respondent "placed a disclaimer on its resolving website in a prominent, conspicuous place disclaiming any affiliation with Complainant to avoid confusion [that] ... include[ed] a link to Complainant's website." Satisfying the legitimacy test under paragraph 4(c)(i) of the Policy Proof is conclusive because it negates bad faith registration.

Mere delay by a trademark holder in claiming abusive registration is not barred by the doctrine of laches, although this is not without qualification. Paragraph 197 of the WIPO Final Report “recommended that a time bar to the bringing of claims in respect of domain names (for example, a bar on claims where the domain name registration has been unchallenged for a designated period of years) should not be introduced.” In fact, a “time bar” was rejected in a coda to “Time Limitations for Bringing Claims.” Panelists in the formative decisions adopted this view and held that “there is no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions,” Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO February 1, 2002). However, this view has progressively eroded to a point where the question now is, Why not a laches defense?

One step down from “no room for general equitable doctrines” is the view that laches should be available in particularly compelling sets of facts.” The most outspoken panelists hold that it “should be expressly recognized as a valid defense in any domain dispute where the facts so warrant,” 3-member Panel in The New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010). According to the New York Times Panel there appears to be no “sound basis for ignoring the potential defense.” This view is endorsed in NaturaLawn of America, Inc. v. Jeff Edwards, FA1102001372111 (Nat. Arb. Forum March 16, 2011) and even though the Panel decided the case on substantive grounds it is nevertheless an important marker along the way to acceptance of a laches defense. NaturaLawn initially put the Respondent on notice in 2002 and only commenced the proceeding in 2011.

The Panel leaves no doubt that if the Complainant had succeeded on the threshold test it would have failed on the defense of laches. The substantive grounds for dismissing the complaint in NaturaLawn, however, is that the Complainant failed to prove that the domain name <naturallawns.com> was confusingly similar to NATURALAWN OF AMERICA, NATURLAWN and NATURALAWN. Where there is more than one trademark, the question is which of them (if not all) is the one infringed. In NaturaLawn of America it could not be the first of the trademarks because

For each variation of the other two trademarks the difference is minor but (as has been pointed out in many UDRP cases) “small differences” matter. The difference between “naturallawns” and NATURLAWN is an addition of an “a”, and “l” and an “s”; between “naturallawns” and NATURALAWN an “l” and an “s.” The Panel held that in cases where panels have agreed that additions or subtractions of a letter or two are significant in finding confusing similarity it is because the additions or subtractions “have not changed the meaning or colouration of the trademark or changed it in such a way that it sounds or looks like an entirely different concept.” A complainant who has modified common words creates a brand but it cannot prevent others from using the common words in their ordinary sense. Thus,

As a result “consumers and Internet users [will] understand that ‘Natural Lawns’ is a descriptive term referring to lawns cultivated and maintained by natural means, and will not necessarily assume that <naturallawns.com> refers to Complainant simply because Complainant owns a the NATURALAWN mark, which covers goods and services produced under that name.”

To have a trademark when commencing the proceeding is sufficient to satisfy the requirement , but not enough to prevail on a claim of progressive encroachment. Domain names registered in good faith and later re-tasked to take advantage of a trademark may be infringing, even be actionable in a court of law, but not abusive under the Policy, unless the complainant is able to demonstrate that the respondent had its trademark in mind. The Complainant in Public Safety Group, Inc. v. Kwang pyo Kim, D2011-0075 (WIPO March 31, 2011) held a later filed trademark for "thefirestore.com". The disputed domain name is <firestore.com>. "Whether the Complainant had rights in the trade mark at the time of registration of the Disputed Domain Name may be relevant to the consideration of bad faith under paragraph 4(a)(iii) of the Policy, but it is not relevant for the purposes of determining whether the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights."

Progressive encroachment in which the domain name commences life in good faith and changes over time to bad faith use is a problem the Policy is not designed to remedy. The presiding panelist alluded to but rejected the theory of retroactive bad faith, preferring the construction set forth in Camon S.p.A. v. Intelli-Pet, LLC, D2009-1716 (WIPO March 12, 2010). "In particular, the Panel in [Camon] looked at recent decisions which found that the wording of paragraph 4(b)(iv) of the Policy is such that it is not necessary to prove registration and use in bad faith, and that the type of use described in this paragraph is to be taken as evidence of bad faith registration as well as bad faith use." The Panel in the Camon and Public Safety did not agree with the disjunctive approach and "favoured the stricter, conjunctive requirement approach."

The other two panelists concurred with the result but had different views on the issues of rights and legitimate interests and reverse domain name hijacking. The presiding panelist held that because the Respondent did not have the Complainant in mind Complainant failed to satisfy paragraph 4(a)(ii) of the Policy. One concurring panelist was not "sympathetic" to this approach because:

The second concurring panelist who espouses a stricter standard for reverse domain name hijacking was of the view that the Complainant had "no ground for filing the complaint and that this was known to the Complainant." This was so "because the Complainant has made the unusual but frank admission that the domain name was not registered in bad faith. That being so, the Complainant must have been fixed with knowledge, at the time it filed the Complaint, that it would not be able to prove one of the elements required to be proved, namely that within the meaning of paragraph 4(a)(iii), the Disputed Domain Name had not only been used in bad faith, but had been registered in bad faith." Thus, the "case for a finding of reverse domain name hijacking in the present proceedings is therefore not a marginal one but a strong one. In fact, the Respondent's description of it as 'quintessential reverse domain name hijacking' is probably apposite." Nevertheless, panelists are generally reluctant to make an adverse declaration against a trademark holder as illustrated by the two who in Public Safety Group denied a declaration of reverse domain name hijacking.

Paragraph 4(c)(iii) of the Policy is a two part either/or test. The respondent must show that A) it is using the domain name for “a legitimate noncommercial or fair use” purpose and B) its use is “without intent for commercial gain to misleadingly divert consumers” or “to tarnish the trademark or service mark at issue.” “Legitimate noncommercial” stands in contrast to “legitimate commercial” use in paragraph 4(c)(i). The term “fair use” refers to Constitutional and statutory privileges of non-actionable expression. The term “commercial gain” is construed to mean gain by any party with whom the respondent is associated. Thus, if a domain name is diverted to a second website the respondent must prove that it receives no benefit from the receiving website. These principles are on display in Galderma S.A. v. Domains by Proxy, Inc. / Aegis Holdings Group, Inc., D2011-0146 (WIPO March 27, 2011). A respondent’s post hoc offer to use the website for a noncommercial purpose “does not provide a defense under the Policy,” Avon Products, Inc. v. Mary Ultes, D2009-0471 (WIPO June 3, 2009).

What distinguishes speech critical of a complainant that overrides its demands for transfer of the domain name from critical speech that violates the Policy cannot be reduced to a simple formula. The principle of free speech is clear, but the packaging of the speech and other factors necessarily determine whether the respondent is safely harbored. It is certain that a domain name that resolves to a site used primarily to comment or criticize the complainant is protected under paragraph 4(c)(iii). Criticism in fact has been held to include commercial, disputatious, sloganeering commentary built into domain names. In Twentieth Century Fox Film Corporation v. DISH Network LLC, FA1010001350483 (Nat. Arb. Forum November 22, 2010), for example, the majority ruled that incorporating FOX into <foxshakedowndish.com>, <weofferedfoxafairdeal.com>, <foxrefused.com>, and <jointhefightagainstfox.com> were not confusingly similar.

Galderma is typical of a “pure” website. The Panel points out that the “WIPO overview deals in particular with the divergence of opinion as to whether a domain name that is not identical to a trademark but includes some modifier may be used for a domain name in these circumstances.” The modifier in Galderma is “review” added to the trademark EPIDUO to form <epiduoreview.com>. In cases where the domain name comprises a trademark without any modifier, “the degree of initial interest confusion on the part of an Internet user may well be such that it would not be legitimate for the domain name to be used for a criticism site,” citing Covance, Inc v. The Covance Campaign, D2004-0206 (WIPO). “However” (the Panel continues) “where, as in this case, the word ‘review’ is added to the trademark then the degree of initial interest confusion is likely to be rather less.”

The Complainant’s argument in Golderma that “the criticisms made of its products are not fair or justified or supported by real evidence” is beside the point. The assertion that there is no evidence that the “Respondent ... actually used EPIDUO and does not comment on whether the alternative or competing products mentioned are themselves likely to cause the same side effects as EPIDUO” does not constitute tarnishment as that term is construed under the Policy. Rather, Respondent’s “home page ... is headed Epiduo Review and then goes on to describe EPIDUO and its constituents and assert various side-effects that users are likely to suffer.” Other pages comprise blogs that include commentary on acne and its causes as well as further criticism of EPIDUO and commentary on other products or substances that may be used to treat acne.” Disagreeing with a respondent’s criticism of its product is not evidence of infringement. The “Panel does not consider that there is anything to suggest that the content is other than genuine criticism or review.”

License May Be Evidence of a Right But Is Not Evidence that Licensee Has the Right For Transfer of Infringing Domain Name

“Kineret” or “Kinneret” is the Biblical name for the Sea of Galilee. It is also the name of a drug produced by Swedish Orphan Biovityrum AB allegedly under license from Amgen Inc. While a licensee with authority to protect the trademark may have a right, a bare license is insufficient to maintain a UDRP proceeding. “The issue for the Panel [in Swedish Orphan Biovitrum AB (pub) v. Zahav.net Inc., D2011-0257 (WIPO March 18, 2011)] is as to whether the Complainant has any relevant trade mark rights. If it does indeed have the benefit of a trade mark licence as asserted by the Complainant, then it is likely to have the relevant rights.” However, Complainant failed to produce any evidence that it had trademark rights in “Kineret” to maintain a UDRP proceeding. The “extraordinary aspect of this Complaint” the Panel noted

In any event, Amgen’s trademark KINERET for “pharmaceutical preparations for the treatment of autoimmune and inflammatory disorders in which Amgen Inc. appear to have made a first use claim from November 26, 2001.” The disputed domain name was registered in 1998.

Ordinarily, complainant’s failure to prove a trademark right is conclusive and would support dismissal of the complaint. In Swedish Orphan the Panel passed over the issue of the Respondent’s right or legitimate interests in the disputed domain names but opted to review the allegations of bad faith registration, presumably because “the Respondent has behaved somewhat erratically” in using the domain names. The question is whether the Respondent in 1998 had the KINERET trademark in mind when registering the domain names? The answer has to lie in response to a number of questions and can only come from the Complainant however “erratic” the Respondent in his present use of the domain names. The Panel frames two questions: 1) “When did it reach the market?” and 2) “When might the Respondent have been expected to have first learnt of its existence?”

Under trademark law, the filing date of a trade mark application on its own “is rarely likely to be determinative.” A trademark holder may prove a common law right extending backwards in time where the basis for the application is that goods are presently in commerce. In Swedish Orphan the evidence suggest that the Kineret drug reached market in 2001, and although the trademark application post-dated the domain name the first use in commerce predated it. “It is possible of course that plans for its launch were publicized at an earlier date and it may appear something of a strange coincidence that the initial trade mark application and registration of the Domain Names took place around the same time.”

But, coincidences do happen. It is not a respondent’s burden to prove that it registered a domain name in good faith in the absence of evidence to the contary. “[T]he fact is ... there is insufficient evidence before the Panel for the Panel to conclude with any degree of confidence that the Respondent had the KINERET trade mark in mind when registering the Domain Names.”

Domainer's Responsibility for Creating a Filtering System to Prevent Competitive Links

Domainers are held to a higher standard for investigating bulk acquisitions. Denying knowledge of the complainant and its trademark is an insufficient defense. They are expected to deploy technology to prevent infringing activity. Paragraph 2 of the Policy reads in part "[i]t is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." The Respondent in Carol House Furniture, Inc. v. Registrant [3458020]: Oversee Domain Management LLC, D2010-2103 (WIPO March 21, 2011) "claims it had no knowledge of Complainant prior to this dispute, and that during the registration process, neither Respondent's automated filtering system nor Respondent's human reviewers identified <carrollhouse.com> as confusingly similar to a trademark." Complainant has used its mark in commerce for 45 years.

Although not phonetically identical, "carroll" and "carol" have identical pronunciation. By itself, this would not ordinarily be suspicious, but alarm is sounded with proof that the Respondent's "dynamically generated PPC links ... have been optimized to boost 'furniture' to the most prominent links on Respondent's site." Whoops (I didn't mean that!) is not a defense. A unanimous 3-member Panel rejected Respondent's contentions because it was not forthcoming in its disclosures:

Moreover, Respondent failed to answer questions about its reviewing procedures; answers to which are entirely within the Respondent's control:

The Panel was emphatic (without citing paragraph 2 of the Policy) that "Respondent's use of automated technologies does not relieve [it] of its responsibilities to avoid infringing on the rights of third parties." If there is an explanation for the competitive links to furniture, it must come from the respondent. "As between Complainant and Respondent, the latter should be able to provide its own data," which it failed to do. The "possibility that furniture-related PPCs links can appear on Respondent's web page, combined with the certainty that the web page included these links when Complainant accessed it, negate Respondent's claim that its landing page had a 'permissible purpose' weighing against bad faith registration."

Where a domainer has the technological means to prevent infringement of third party rights there is "no reason why Respondent, as a domain name company with filtering technology, could not have added code to its web page system in order to avoid furniture-related PPC links." The coda: "For a firm in the business of registering domain names so that they can be linked to PPC web pages, this course of technical operation would presumably be standard practice and Respondent cannot assert that it has no responsibility in the matter."

Constructive Notice of Trademark Does Not Satisfy the Knowledge Requirement of UDRP

The Lanham Act, 15 U.S.C.A at § 1072 provides that registration of a trademark on the principal register is constructive notice of the registrant's claim of ownership. This statutory concept eliminates lack of knowledge as a defense. The UDRP is constructed on a different model. The complainant has to establish that the respondent had actual knowledge of the trademark at the time it acquired the domain name. Awareness has been found to satisfy the requirement of actual knowledge. However, the "mere existence of Complainant's trademark rights at the time Respondent registered the disputed domain name does not ... create any presumption of knowledge," Salmi Oy v. PACWEBS, D2009-0040 (WIPO February 4, 2009). Asserting knowledge does not prove it. Save the Children Federation, Inc. v. Proservices, D2011-0615 (WIPO May 19, 2011).

In Save the Children, the Panel "reluctantly" issued a Procedural Order (Rule 12[a]) to determine this precise point. He directed the Respondent to provide an answer to the following question: "In February 2011 were you aware of the existence of Save The Children Federation Inc.?" The question came with the following admonition

The not surprising answer was "No." There is no way to look behind a certification or declaration absent other indicia.

The domain name <mysavethechildren.com> is clearly confusingly similar to the Complainant's trademark SAVE THE CHILDREN – the addition of "my" does not distinguish it from the trademark – but the phrase is descriptive of the Complainant's as well as the Respondent's mission. As the Panel notes "whether actual knowledge of Complainant's marks can be found or imputed, is a murky one." A panelist only has the written record, which in this case includes the certification by the Respondent that at the critical moment of registration she had no knowledge of the Complainant's trademark. Because the Panel does not have available cross-examination or discovery "[t]he determinative factor that tips the balance in this proceeding to a decision for Respondent" must be "other indicia of cybersquatting." There was no "other indicia."

There are UDRP decisions in which constructive notice is found to satisfy the requirement, but not without other indicia such as "pages of hyperlinks [and] multiple infringing registrations" that would allow the Panel to infer a level of awareness that would satisfy the requirement. This view is set forth in the WIPO Overview at 3.4: "some panels have been prepared to [apply constructive notice] in certain circumstances including where a respondent was located in the US and a complainant had a federal US trademark registered before the domain name was obtained by the respondent, and there are indicia of cybersquatting".

The Respondent in Save the Children Federation has no right or legitimate interest but the evidence is insufficient to prove bad faith registration. The Panel's nostrum (set forth in a footnote) is cautionary advise to the Respondent that should the Complainant commence an infringement action against her the legal standards favor the trademark holder. "Not only will constructive notice be available to Complainant, but trademark infringement (unlike the Policy) is a strict liability tort – bad faith is usually not required. Respondent should be advised to consider a reasonable settlement proposal from Complainant as an alternative to possibly lengthy and expensive litigation."

The UDRP forum is available to trademark holders to resolve disputes of cybersquatting, but not for commercial disputes in which domain names are merely incidental to other claims. Claims for breaches of contract and fiduciary duty that require the Panel to delve into the parties' legal relations are generally outside the scope of the Policy. There has to be a clean and persuasive record. "Although the Panel has broad discretion to make a determination where there is a dispute over ownership ... [the Complainant has] to come forward with sufficient proof to satisfy the panel that a UDRP determination is appropriate without making a legal determination over the parties' contract rights or the enforcement of the various legal proceedings," Kyowa America Corporation v. Quilite International L.L.C., FA1103001376292 (Nat. Arb. Forum May 17, 2011).

The term "cybersquatting" may be narrow when measured against the universe of claims involving domain names, but jurisdiction under the Policy includes claims for the more inclusive cause for abusive registration. Cybersquatting and abusive registration are theoretically synonymous, but cybersquatting carries a meaning implicitly narrower. A complainant is entitled to relief if it presents a persuasive record of bad faith in the wider sense. The record was not persuasive in Kyowa America. Subject matter jurisdiction will not be found to extend to a complainant's demand for transfer of a domain name which it alleges passed by contract but which the right is contested and the facts inconclusive owing to alleged collateral disputes.

The Complainant in Kyowa America argued that it acquired its rights to the domain name by a settlement and security agreement with Respondent which it perfected by foreclosing under the Uniform Commercial Code the defaulting Respondent's interests in its trademark and other intellectual property. "Complainant alleges that it subsequently took ownership of Respondent's intellectual property pursuant to a Bill of Sale and Assignment Agreement, which Complainant recorded against Respondent's registered trademarks and patents with the USPTO." However, the Respondent took a different view of the parties' rights to the domain name, <quilite.com>. It "argues that there are ongoing commercial disputes between itself and Complainant, denies the QUILITE mark was ever transferred to Complainant, and Complainant has no rights or legitimate interests which would justify it to bring this Complaint." There is precedent for resolving these issues.

Where the parties differ markedly with respect to the basic facts and the dispute involves serious contractual issues that raise questions of governing law and proper forum "courts are better equipped to take evidence and to evaluate [parties'] credibility," Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007). The "Policy's purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes," Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO September 6, 2005). In this respect, the nature of the dispute and the serious contractual issues put the claim in Kyowa America outside the scope of the Policy.

Determining subject matter jurisdiction rests with the Panel. However, even when the Panel finds jurisdiction it also has the discretion to terminate the proceedings if there is a prior pending action. In Kyowa America the parties were already before a court. Rule 18(a), which I will discuss in the next Note, authorizes the Panel to terminate the UDRP proceeding for that reason.

Discretion to Terminate a Proceeding When Parties Have Also Commenced a Court Action

The UDRP is not a coordinate forum to a court of law and was not designed to supplant a court of law. It offers has a circumscribed jurisdiction that empowers the Panel to order a domain name cancelled or transferred to the complainant. That is the extent of the relief a Panel may grant; either form is akin to a mandatory injunction. Nevertheless, a Panel has the discretion to continue the proceedings even in the face of a prior pending action in a court of law. Paragraph 18(a) of the Rules of the Policy provides that "[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision." Discretion is discussed in Acumen Enterprises, Inc v. Jonathan Morgan, FA1104001381503 (Nat. Arb. Forum May 17, 2011).

The Complainant in Acumen Enterprises (the plaintiff in a prior pending action in federal court) argued that there was precedent for the Panel to reach a decision "regardless of any concurrent legal proceeding, and that several panels have proceeded to a decision in similar circumstances." However, proceeding to a decision is rare when the record discloses that the prior pending action comprehends the subject matter of the proceedings. "The Panel ... notes that the relief of transfer of the domain name sought before the U.S. Court is essentially the same as the relief sought in the present proceeding."

There is, also, another factor to consider concerning the paper only submission in a UDRP proceeding. There is no "full hearing." "[I]t is obvious that in the court proceedings the controversy about factual issues can be resolved after a full hearing, where witnesses declare under oath and cross-examination is available." Proceeding with a UDRP hearing where an ultimate issue has been submitted to a court of law would be unwise and a waste of arbitral resources. Considering that it was Complainant who initiated litigation in the U.S. Court before filing its UDRP complaint, the Panel in Acumen Enterprises "believes the best course of action is to defer to the U.S. District Court, and accordingly to terminate the present UDRP proceeding, without prejudice of any filing of a future UDRP complaint as appropriate after conclusion of the proceedings in the U.S. District Court."

Rule 18(a) imports into the UDRP proceedings the familiar prescript of judicial economy exercised in a court of law. Generally, it makes no sense to proceed to decision in a second proceeding where there is a prior action pending or new action timely filed concerning the disputed domain name. Whether the Panel exercises its discretion "to suspend or terminate the administrative proceeding" depends on a number of factors including the status of the pending action.

There is no basis for suspension or termination where, for example, the "filing of the Complaint was done in accordance with a court order, that the matter be referred to arbitration under the Policy despite the pendency of that action," BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight, D2009-0958 (WIPO September 15, 2009). The reverse is true where a court of law is in a position to fully resolve the claims. Deference flows in one direction only. "[C]omity alone militates in favour of paying deference to the decision of the court where the very issue that is fundamental to this administrative proceeding is to be determined," Aussie Car Loans Pty Ltd v. Wilson Accountants Pty Ltd, (formerly Wilson and Wilson Accountants), D2008-1477 (WIPO Dec. 9, 2008).

Recognizing the Rights of a Beneficial Owner of Domain Name Held In Another's Name

Concealing the identity of the beneficial owner of a domain name is perfectly legal. There is no prohibition for using masking services to protect one's privacy. In any event, the beneficial owner's identity is ordinarily (although not always) disclosed prior to the Provider forwarding the complaint and record to the Panel. The qualification "not always" applies to defaulting proxies. Insisting on anonymity carries a strong negative inference that the respondent's intention for registering the disputed domain name was to take advantage of the complainant's trademark. Sometimes, the complainant is aware of the beneficial owner's name and contact information, evidenced by pre-arbitration correspondence. This was the case in Akris Prêt-à-Porter AG v. Fresh Enterprise Limited and Andrew Kris, D2011-0366 (WIPO April 22, 2011).

If "foul intent" is alleged it has to be proved. For example, in The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC., D2009-0057 (WIPO March 24, 2009) (<jenniferlopez.net> and jenniferlopez.org) the Panel held that the Respondent's "manipulations are "strongly evocative of cyberflight, and appear to have been calculated to obstruct or delay this proceeding under the Policy." Manipulations refer, for example, to inaccurate information on the Whois database which is a violation of the respondent's registration agreement and suggests obstruction.

The main question when the "first respondent" relies on the testimony of the "second respondent" is whether the first respondent, the proxy can rely on its principal's testimony. The Panel found that it could:

Ordinarily, transfer is equivalent to new registration, which would defeat the beneficial owner regardless of the argument that the beneficial owner acquired the domain name prior to the complainant's trademark. In ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., D2009-0785 (WIPO August 5, 2009) the domain name holder, the "first" respondent was a transferee, as is the respondent in Akris. However, the cases are distinguishable. There is a critical difference between ehotel and Akris which the Akris Panel explains as follows:

Where (quoting Akris) the transfer from the beneficial owner to another is "not accomplished to conceal the Second Respondent's identity, i.e. to frustrate assessment of liability in relation to the registration or use of the domain name)" and the "evidence clearly establishes an unbroken chain of underlying ownership by the Second Respondent" it will not be regarded as a new registration to support forfeiture.

A Complainant's Right to Maintain a UDRP Proceeding Not Defeated Because Its Trademark is From a Different Jurisdiction Than Respondent's Domicile

A complainant has standing to prosecute a UDRP dispute regardless of the jurisdiction in which it acquired its trademark or of the parties' residencies in different countries. That a trademark is registered or acquired in a different jurisdiction than the respondent's domicile does not defeat the right to maintain a UDRP proceeding, although it may be a factor in determining bad faith. The term "rights" means a ripened trademark in any jurisdiction in the world. It is immaterial the relative locations of the parties. The Policy does not require the complainant's trademark to have been obtained in a country in which the respondent resides or operates, only that the complainant can establish rights in some jurisdiction. Koninklijke KPN N.V. v. Telepathy, Inc., D2001-0217 (WIPO May 7, 2001), but the Complainant failed to establish bad faith for the combination "money" and "planet" in <moneyplanet.com>. The Panel in Renaissance Hotel Holdings, Inc. v. Renaissance Cochi, FA 932344 (Nat. Arb. Forum April 23, 2007) held that the Complainant need only show that it has established a trademark in "some jurisdiction." In Luby's Fuddruckers Restaurants, LLC v. David Black, FA1104001382232 (Nat. Arb. Forum May 10, 2011) the Complainant is a U.S. business and the Respondent is domiciled in the Phillip pines. The only question in these cases is whether the remoteness of the parties undercuts bad faith or supports a defense of good faith.

Even if a trademark has been abandoned and cancelled in one jurisdiction it is not a basis for denying UDRP standing. In Asia Pacific Breweries Limited v. Chris Kwan, D2003-0920 (WIPO January 20, 2004), for example, the Respondent contended that the Complainant had lost or abandoned trademark rights in the United States or Canada. But, proof of trademark rights registered or unregistered "in any country is sufficient for the purposes of paragraph 4(a)(i) of the Policy, and the fact that the Complainant may have elected to submit to the jurisdiction of the Courts of Canada, the local jurisdiction of the Registrar, for the purpose of resolving any challenge to this decision, is irrelevant," Borsig Process Heat Exchanger GmbH f/k/a Borsig GmbH v. David Webb, FA0608000766319 (Nat. Arb. Forum September 19, 2006).

The domain name in Luby's Fuddruckers differed from the Complainant's trademark in two ways: it deleted an apostrophe and removed the spaces between the words of the mark, otherwise <worldsgreatesthamburgers.com> is identical to the Complainant's WORLD'S GREATEST HAMBURGERS. The "use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark," Chernow Commc'ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000); neither does "eliminating the space between terms of a mark," George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007).

It has been pointed out by Panels from the earliest cases that geographic remoteness can defeat a complainant's claim when there is no evidence that the respondent could have known about the complainant's trademark. KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO April 20, 2001); Jet Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006) (<jettour.com>). That is more likely where the trademark is composed of common elements, or in the case of KCTS Television a string of letters argued to be an acronym rather than identical to the Complainant's television call sign. A more recent example is Retail Royalty Company, and AEO Management Co. v. Modern Empire Internet Ltd., FA1103001378458 (Nat. Arb. Forum April 21, 2011) (77 and <seventyseven.com>). However, to prevail on a good faith defense a respondent has to offer an explanation which is more persuasive if the domain name is active since use is compelling evidence of intention.

In Luby's Fuddruckers, the Respondent appeared by counsel but offered no plausible explanation for having acquired a domain name identical to a registered trademark. And, even though the lexical string WORLD'S GREATEST HAMBURGERS is a common hyperbole of restauranteurs and could plausibly be used by another business offering the same cuisine, in Luby's Fuddruckers the Respondent was holding the domain name inactive. Inactivity of domain names formed with uncommon strings has long been held to support bad faith registration, but inferences of bad faith can also be drawn from common lexical strings when the domain name is identical to the trademark.

Good Faith in Registering Common Words and Phrases Exploited for Their Generic Meanings

It is not illegitimate to use domain names for pay-per-click revenue. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Para. 2.6: "Panels have generally recognized that use of a domain name to post parking and landing pages or pay-per-click [PPC] links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' or from 'legitimate non-commercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder."

The legitimacy issue is surveyed by two 3-member Panels involving the same respondent. Skycam, Inc. v. Administrator, Domain / Vertical Axis, Inc., FA1102001372311 (Nat. Arb. Forum April 29, 2011) and BrightSign LLC v. Administrator, Domain / Vertical Axis, Inc., FA1103001379395 (Nat. Arb. Forum May 4, 2011). Both complaints were denied. The question is whether the "PPC links genuinely relate[] to the generic meaning of the domain name at issue." The Panel in Skycam noted that only "some of [the links] bear a semantic relationship to the domain name." How much this matters depends on the reputation of the trademark claimed to be infringed. The WIPO Overview, same paragraph, continues that the use of "domain names consisting of dictionary or common words or phrases supporting posted PPC links genuinely related to the generic meaning of the domain name may be considered as a permissible use." The Panel in BrightSign notes that the "more descriptive a mark, the more difficult becomes Complainant's burden of proof to establish registration and use with Complainant's mark as a target."

There is clearly a line separating the legitimate from Panel illegitimate. BrightSign's Semantic relationship is one test. One of the panelists in Skycam noted that "[i]t may be and sometimes is the case that a domain name is so generic or descriptive that the objective bystander could not responsibly conclude that it is evoking the trademark," but of course this depends on the website's content and linking history. If there is no "semantic relationship" or if the website contains linking to websites competitive with the complainant then the line is crossed to abusive registration. There is significant precedent for holding high volume registrants (such as the Respondent in Skycam and BrightSign) to a higher level of investigation to satisfy its representation and warranty under paragraph 2 of the Policy.

Panels have expressed different views whether a respondent is making a bona fide offering of goods or services in displaying pay-per-click links. The complainant can prevail on the second requirement and lose on the third. In fact, the BrightSign Panel treats the second and third requirements together while the Skycam Panel declines to reach a decision on the rights and legitimate interests element.

Some Panels hold that a respondent's use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee does not support rights or legitimate interests in the domain name. Other Panels hold that operating a pay-per-click search engine is a bona fide offering of goods or services "because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products," Accetta v. Domain Admin, FA 826565 (Nat. Arb. Forum January 2, 2007).

How does a trier determine that the respondent registered a disputed domain name in bad faith when the respondent fails to make an appearance in the proceeding? Whereas in a court of law a defendant’s default in answering a complaint is an admission of liability, in an ICANN proceeding the complainant prevails only if it proves all three elements of the Policy. The rules of the Policy allow for inferences to be drawn from evidence both apparent and hidden. The Panel notes in La Quinta Worldwide, L.L.C v. Rudi Seiberlich, D2011-0385 (WIPO April 11, 2011), “it is possible to draw inferences from the evidence that has been submitted and in some cases from silence.” Rule 14(b) of the Policy reads: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

Bad faith use of the domain name is easier to establish because content speaks loudly. But bad faith registration is more difficult, significantly so where the parties reside geographically distant from each other and easier where the complainant does business in the market of respondent’s domicile. In La Quinta Worldwide, Complainant owns the LA QUINTA mark; the disputed domain name is <la-quinta-hotels.com>. The undisputed facts show that

So, in La Quinta Worldwide it is more probable than not that the respondent had actual knowledge of the complainant’s trademark. Dashes or any minor variation of the trademark are a clue to intention. Adding grammatical indicators does not distinguish the domain name but calls attention to the mark. Why would a respondent acquire a domain name identical or confusingly similar to a trademark unless it can explain an innocent purpose? The La Quinta respondent is holding the domain name passively, but that also speaks loudly. Since there is no content from which bad faith use can be deduced it can be inferred from certain absences of information within respondent’s sole control.

It has long been established that where the trademark precedes the registration of the domain name and the parties are geographically congruent passive use amounts to the Respondent acting in bad faith. TheTelstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The Panel in that case stated

The first and fifth prongs of the test carry the greatest weight and are generally conclusive.

Holders of trademarks composed of common words not infrequently flatter themselves as to their symbols' distinction and market reach. It is not a per se violation of the Policy for a domain name to be identical or confusingly similar to a trademark. The violation has to be demonstrated. The key factors are timing of the registrations, geographic distance or closeness of the parties and the respondent's demonstrable knowledge of the complainant. Expressions familiar to a trade can be registered without protection from others using them in non-infringing ways. The Complainant in Retail Royalty Company, and AEO Management Co. v. Modern Empire Internet Ltd., FA1103001378458 (Nat. Arb. Forum April 21, 2011) owns the mark 77 and claims to have been selling clothing under that mark for over thirty years. The Respondent registered the contested domain name, <seventyseven.com> in December 2007. The Respondent points out that the expression "77" is "merely representative of a popular 'lucky number' which is commonly employed in commerce for a wide variety of goods, including clothing."

There is an aural but not an ocular similarity between "77" and "Seventy Seven." The three member Panel passed on whether the domain name was confusingly similar to the trademark and directly addressed the issue of registration and use in bad faith. This is a rare but accepted procedure:

The issue of standing is complicated because it allows a complainant to maintain a proceeding even though it acquires its trademark later than the respondent registered the domain name. Continuous use of a symbol for more than five years prior to its trademark registration may support a common law right to it, but use in commerce has to be proved not simply alleged. Complainant's problem in Retail Royalty is that it filed an "intent to use" application for "77" which negates an argument of prior use in commerce. Whether this was intentional or a blunder on the registrant's part it settled the issue of common law rights, namely that it had none despite its claim that the mark had been used in commerce for clothing for over 30 years:

The Panel points out that there is authority for holding that the relevant date is the filing date of an application for registration, citing Planetary Soc'y v. Rosillo, D2001-1228 (WIPO February 12, 2002) – "this proposition proceeds on the evident basis that the filing of a mark registration application with a competent national trademark authority gives notice to domain registrants of a complainant's rights in a mark." But, even where the filing date is used and that date is earlier than the domain name, complainant cannot overcome the "intent to use" basis for the application.

Another panelist silently rejects the retroactive bad faith construction of the Policy which argues for disjoining the conjunctive requirements for bad faith under paragraph 4(a)(iii) of the Policy. "It is unfortunate, in the face of such bad faith use that the Panel has arrived at the decision that the complaint should be denied. However, the Panel must render its decision within the confines of the Policy, which clearly requires that the Disputed Domain Name must be registered and used in bad faith," Jowissa Watch Ltd. v. Don Nichols, D2011-0086 (WIPO March 31, 2011). This does not necessarily end the dispute. "In certain circumstances, it may be more appropriate to seek recovery of a domain name via a trade mark infringement action," Id.

The Complainant's difficulty in Jowissa Watch is its signature to a distribution agreement with the Respondent, although whether or not it "authorised the use of the JOWISSA trade mark in connection with the Disputed Domain Name" is uncertain because the parties did not provide the Panel with a copy of it. Nevertheless, the existence of such an agreement, albeit terminated, creates a genuine issue that the Complainant acquiesced in the registration of the domain name and acquiescence necessarily negates bad faith registration. If the distribution agreement prohibited the Respondent from registering the disputed domain name it was an unfortunate oversight for Complainant's counsel not to have offered it into evidence. The inference from a failure to offer evidence is that it supports the opposing party's contention.

Based on the record, the Panel accepted only that "the Complainant has not currently authorised the Respondent to use the JOWISSA trade mark and that any connection that once existed between the Complainant and the Respondent by virtue of the distributorship has now ceased." This simply means that the Complainant prevails on its prima facie case that the Respondent lacks rights or legitimate interests in the domain name –"[w]hile the Respondent arguably may have had a legitimate interest in the Disputed Domain Name at one time (as distributor of the Complainant's watches), the Panel finds that any such legitimate interest ceased when the distributorship came to an end" – but it does not answer the question of bad faith registration which is an entirely separate requirement.

To prevail on a claim of abusive registration, the Complainant has to prove both registration and use in bad faith and the absence of one or the other is insufficient to satisfy the burden of proof. "The Panel finds that in the absence of any evidence to the contrary, that it can be implied that here the Complainant acquiesced to the Respondent's registration of the Disputed Domain Name, and therefore the Disputed Domain Name was not registered in bad faith." It is this conclusion that triggered the Panel's dismay that she had to deny the Complainant's claim for the domain name. Not only was the distribution agreement terminated but the Respondent both offered to sell the disputed domain name for a significant sum and is misrepresenting his status in that he has created "the impression that [he] is a U.S. operative of the trademark owner."

There is no constraint on a foreign holder of a U.S. trademark to maintain an ACPA action against a domestic infringer or for that matter against a foreign infringer in an in rem action if the registry or registrar is resident in the United States.

A domain name identical or confusingly similar to a trademark is not dispositive of abusive registration; neither is a respondent's lack of rights or legitimate interests. The three tests are independent of each other. Internet users may in fact be confused; the respondent may in fact fail to prove that it has a right or legitimate interest in the domain name, but if the complainant and respondent are not competitors and there is no evidence that the respondent had the complainant in mind when it registered the domain name an allegation of bad faith is no more than an unproved assertion. Suspicion is a good start, but by itself it is not sufficient to support abusive registration.

These truths are illustrated in CIE Exploitation des Services Auxiliaires Aeriens Servair v. Value-Domain Com (Privacy Proxy), Wert Domain, D2011-0608 (WIPO May 31, 2011) involving a claim for <serv-air.com>. A combination of common words does not (or does not necessarily) create a common phrase; it also does not surprise (even if suspicious) that another person continents apart has chosen the same combination for its domain name. In the ordinary course, there are numerous instances of simultaneity of invention; why not phrases?

There have been instances where the complaint has been dismissed and the domain name holder subsequently changes the content to take advantage of the trademark holder's good will. An example is Newport News, Inc. V. Vcv Internet, AF-0238 (eResolution July 18, 2000). In that case, the trademark holder years later when the violation became clear chose to commence an action under the Lanham Act and moved for partial summary judgment on its ACPA claim [Newport News Holdings Corporation v. Virtual City Vision, Incorporated, d/b/a Van James Bond Tran, ___ F3d ___, 09-1947 (4th Cir. April 18, 2011)]. In rejecting the defendant's arguments, the Court held:

The defendant argued that this did not amount to bad faith. At its registration of the domain name the evidence supported the respondent/defendant's position that it was in good faith in pursuant of a particular business purpose, but intentional transformation of content strips the respondent/defendant of its defense. The ICANN decision found that VCV was not in competition with [Complainant] precisely because of their disparate business models, but changing the model has consequences. A domain name holder "cannot escape the consequences of its deliberate metamorphosis."

Over the years Panels have invited losing complainants to refile if circumstances change. Not many invitations have been accepted. Newport News Holdings chose a civil action and won transfer of the domain name together with a substantial statutory damage award. In CIE Exploitation, the factual circumstances also did not support bad faith. But, the Panel issued a warning to the Respondent, not dissimilar to the warning by the e-Resolution Panel in Newport News:

The value of a domain name employed for capturing traffic – why retain it if it cannot earn its keep? – is dependent on the content of the website. There has to be something on the website that attracts attention. The evidence in Newport News Holdings (trademark case) showed that the returns increased significantly as the model changed to take advantage of the holder's trademark. Given the nature of the Respondent's business in CIE Exploitation that could be the fate of <serv-air.com> and it is to that possibility that the admonition is directed.

Paragraph 4(c)(ii) of the Policy is written in the past tense, "have been commonly known by the domain name" (emphasis added). Although the Policy does not specify when respondent was known by the domain name the language suggests that it must have been from a time that preceded the registration of the domain name. In Omni Development, Inc. d/b/a The Omni Group v. Graffle, Inc., FA1104001385743 (Nat. Arb. Forum June 14, 2011) the respondent's corporate name is the domain name, <graffle.com>, which is identical to the Complainant's trademark. By happenstance the Respondent's corporate name is the same as the trademark. This would seem to qualify for the defense.

The Whois directory is a first stop in determining the respondent's rights or legitimate interests based on the "individual, business or organization" name declared in its registration of the disputed domain name. Cases too numerous to cite on this proposition. If the respondent's name is different from the domain name then it cannot have been commonly known by it; if it is the same, the respondent is either genuine or deceiving. It is well settled that "[m]ere ownership of a domain name is not sufficient to show that a respondent automatically could claim protection under paragraph 4(c)(ii) of the Policy," Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum January 13, 2003). The Policy is construed to "require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail," RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001); Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (<shantiyogaworks.com>). The "consensus ... is that Respondent must already have been known [by the disputed name] at the time of registration or acquisition of the domain name in issue," Nobel Learning Communities, Inc. v. Chesterbrookacademy, D2005-0753 (WIPO September 20, 2005) [<chesterbrookacademy.com>].

Were a prior corporate name identical to the trademark a complete defense, it would be a backdoor to appropriating the complainant's trademark. The rule is that the respondent must also show that the corporate name was selected in good faith without intent to take advantage of the trademark, which means coupling the 4(c)(ii) defense with evidence that the domain name is connected to a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. In Omni Development, the Respondent challenged on its going forward burden offered no evidence to support its claim to be developing a global raffle business. It alleged but failed to prove "demonstrable preparations to use" the domain name. Although lacking rights or legitimate interests in a domain name is not tantamount to bad faith it is a cumulative factor. The Complainant also offered evidence that the Respondent was a serial cybersquatter. The totality of circumstances favored the Complainant.

Omni Development is indistinguishable from the Neiman Marcus type of case, but distinguishable from Carlyle Group v. Carlyle Coutts Capital Corporation, D2008-1960 (WIPO February 19, 2009) (<carlyle-coutts.com> and <carlylecoutts.com>). In Carlyle Group the Panel faulted the Complainant for failing to offer any evidence that the Respondent was not what it claimed to be, a business entity duly formed in 2000 under the laws of Toronto with an associated company Carlyle Coutts Capital Corporation SA formed under the laws of Panama. Is this putting the burden of proof on the wrong party? No, because suspicion of an identical preexisting corporate name by itself is not evidence of bad faith. In Carlyle Group the Respondent (no evidence being offered to the contrary) was conducting a legitimate, present business under the corporate name. Failure to establish that a respondent lacks rights or legitimate interests in a domain name is conclusive against the complainant. If the respondent persuades the Panel that it is making a bona fide offering of goods or services its registration of the domain name could not by definition have been abusive.

Asserting Rights to Domain Names Allegedly Owned by Client Customer Who Either Is No Longer in Business or a Figment of the Respondent's Imagination

Domain names violate the Policy when the purpose for their registration is to take advantage of another's trademark. Intent is an implicit element of proof. This is why common words used as domain name for their everyday meaning without proof that the respondent had the complainant's trademark in mind resist monopolization. In many instances, the question of good and bad faith is determined by context. The respondent in Viking Office Products, Inc. v. Natasha Flaherty a/k/a ARS - N6YBV, FA1104001383534 (Nat. Arb. Forum May 31, 2011) (discussed June 14) persuasively explained her choice of "Viking" but the respondent in Viking Office Products, Inc. v. Multisys Computers Limited, FA1104001385981 (Nat. Arb. Forum June 15, 2011) did not.

Context does not exist by itself; its parts have to be organized into an organic whole and supported by evidence that factual circumstances are not simply make-believe. Multisys Computers in Viking Office Products arguing for a right or legitimate interest in <viking-office.com>, <vikingstationery.com>, and <vikingsupplies.com> contended that it has a "client company called Viking Office Supplies Limited." It claims that this company (on whose behalf it allegedly registered the domain names) was "commonly known by the disputed domain names as the company was incorporated by change of name in 1987 and the descriptive words 'office' 'supplies' and 'stationary' relate to its business as well."

Statements of fact are inherently demonstrable; statements of fantasy are not. Assertions of fact must be shown to be true. It may be true that there was once a Viking Office Supplies whose assets and goodwill survived its demise, but a vendor is not by assertion alone a beneficiary of those rights. The Panel summarized the Respondent's explanation as follows:

Respondent's theory, however, lacks traction for a number of reasons. A vendor to a "client company" would not entitled to possession of a domain name offering competing goods even if there were ever a company known as "Viking Office Supplies." The "commonly known by" requirement refers to the domain name holder not an absent alleged beneficial owner. Unlike trademarks that signify source, domain names are essentially addresses in cyberspace. That is why to withstand a claim of abusive registration each holder has to prove its own right or legitimate interest. A proxy cannot do this, which is the reason why the Respondent in Viking Office Products told (invented?) a story about "Viking Office Supplies." To be raised to "legal fact" the story teller has to show, not tell.

The analytical step from lack of rights or legitimate interests to registration and use in bad faith is not automatic, but the path is eased when the disputed domain names themselves contain or point to websites containing goods competitive with the complainant's. So that while "Viking" is a common word that can legitimately be used by others in an appropriate context (Respondent Natasha Flaherty in the earlier Viking case) its use as a competitive website makes it more probable than not that it was registered to take advantage of the trademark.

Application to Register a Trademark That Has a History of Use in Commerce As Well as Receiving Significant Media Coverage

The complainant's threshold burden for maintaining a UDRP proceeding is to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has a right. An application to register a trademark does not satisfy the burden, but proof that the mark has a prior history of commercial use qualifies for a common law right. The principle that an application for a trademark by itself is insufficient to pass the threshold test has an exception, namely where the respondent is found to have anticipated the complainant's trademark registration after the complainant has received significant media coverage. The exception is explained in the WIPO Overview at paragraph 3.1:

The Overview cites several examples, such as "where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch)." A good example of an applicant with a famous name but untested and descriptive trademark and no proof of "substantial media attention" prior to the registration of the domain name is Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009) whose mark EVERYDAY FOOD was registered on the Supplemental Register. Martha Stewart's request for transfer of the domain name was denied.

The Complainant's application for JUICY ADS in Tiger Media, Inc. v. Leconte Pierre, D2011-0670 (WIPO May 30, 2011) was pending and even though registration on the Principal Register was imminent it could not have passed the threshold test without other evidence of a trademark right. The more evidence in Tiger Media consisted of a history of commercial use prior to the Respondent's registration of the domain name which supported a common law right to the trademark. The Complainant had also received substantial media attention: "The Internet archive has stored 121 records of the website which the Complainant's domain name, <juicyads.com> resolves to. In December 2009, Xbiz announced that the Complainant had been nominated for the Traffic Service Company of the Year award that year. The Complainant was an Xbiz awards winner in 2011."

In addition to the media attention in Tiger Media, the record contained concrete proof that the Respondent had actual knowledge of the Complainant in that the home page "included a nearly exact reproduction of the Complainant's logo, the subject of its trademark application in the USA." Copying a complainant's web page is tantamount to an admission of bad faith. The Respondent was served with a cease and desist notice, to which it did not respond. Significantly, after the cease and desist notice, the Respondent changed the appearance of the website, which reinforces a conclusion that the primary purpose for the registration of the domain name was to take advantage of the Complainant's trademark.

There is also an issue in Tiger Media (as in Martha Stewart) that the trademark is descriptive and common. The Panel dealt with this head on. "The Panel is aware that the disputed domain name does have some descriptive reference to the nature of the services being provided via the Respondent's website." However, as the Panel also noted, "[t]he verbal component of the Complainant's trademark is at least arguably not wholly descriptive and has an allusive or suggestive character." The clincher for bad faith registration, "as the Complainant points out, [is that] any claim to good faith on the part of the Respondent can hardly be made out where he has adopted a very close, if not exact, copy of the Complainant's logo on his website (until receipt of the cease and desist letter)."

Paragraph 4(a)(ii) of the Policy is framed in the present tense: the respondent "lacks rights or legitimate interests" in the disputed domain name. The complainant satisfies its burden by offering a prima facie case, which is defined as one that "will suffice until contradicted and overcome by other evidence." Once the complainant makes a prima facie case that respondent lacks rights or legitimate interests in respect of the domain, the burden shifts to respondent to offer credible evidence to the contrary. The narrow issue of right or legitimate interest is answered by the respondent's present use of the domain name without reference to the past. Use, as pointed out last week in the Note on Viking Office Products, Inc. v. Natasha Flaherty a/k/a ARS - N6YBV, FA1104001383534 (Nat. Arb. Forum May 31, 2011), is not governed by whether the domain name resolves to an active website.

The question, rather, is what constitutes a prima facie case? It does not make itself. That is, complainant's paragraph 4(a)(ii) burden is not satisfied by the respondent defaulting in appearance. It must make an affirmative showing that the respondent lack rights or legitimate interests in the disputed domain name. Argument resting on nothing is nothing. Offering nothing supports dismissal of the complaint. Act II Jewelry, LLC d/b/a lia sophia v. Mike Man, FA1104001385563 (Nat. Arb. Forum June 6, 2011) (LIA SOPHIA and <liasophiasale.com>), in which the Panel concluded that the Complainant failed to submit enough evidence to establish the required prima facie case.

In Act II Jewelry, Complainant submitted "no Annexes [with its Complaint] to show Respondent's alleged use, and has simply restated the Policy paragraphs while failing to make substantive arguments for its position." Respondent's default "does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name," VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000). There is no free ride. In the absence of the respondent complainant must still allege and prove the elements of the Policy.

It is pointless to bring on a proceeding (as it is in moving for summary judgment in a civil action) without understanding the evidentiary rules. As a rule of thumb, the complainant is well advised to build its prima facie case on mirroring the three paragraph 4(c) defenses, supported by snapshots of the website together with circumstantial and inferential evidence. For example, the respondent is not making a bona fide offering of goods or services [paragraph 4(c)(i)] which can be inferred from the content of the website; is not "commonly known by the domain name" [paragraph 4(c)(ii)], evidenced from the Whois directory; and is not making a noncommercial or fair use of the domain name [paragraph 4(c)(iii)], again evidence by content. It may also look to the content history of the website in the Internet Archive.

“Actively used” does not require the domain name to resolve to an active website, although websites are “the prevalent use.” The Hong Kong and Shanghai Banking Corporation Limited v. Bill Lynn, D2001-0915 (WIPO September 28, 2001). Email, FTP and hosting services “are legitimate commercial uses .... [T]he lack of a formal web page does not detract from these real and viable commercial uses,” Innotek, Inc. v. Sierra Innotek, D2002-0072 (WIPO April 22, 2002). Domain names composed of common words of which a subset is surnames have long been used for offering vanity email services. Their legitimacy lies in their specific use, but legitimacy dissolves if respondents stray from the business model.

“The more significant issue” in Viking Office Products, Inc. v. Natasha Flaherty a/k/a ARS - N6YBV, FA1104001383534 (Nat. Arb. Forum May 31, 2011) “is that it appears Complainant has made the common error of assuming that because there is no active website associated with the Domain Name, Respondent is not making a legitimate use of the Domain Name.” If respondents offering Internet services qualify under paragraph 4(c)(i) of the Policy (“bona fide offering of goods or services”) there is no reason to disqualify respondents under paragraph 4(c)(iii) for noncommercial use of the domain name. This applies to the use of common words. The Respondent in Viking Office Products registered <viking.org> which was used in family email addresses, <natasha@mail.viking.org> and <paulf@mail.viking.org>. Such use for a common word supports a defense under paragraph 4(c)(ii) of the Policy (“commonly known by the domain name”).

Legitimacy does not extend to appropriation of famous and arbitrary marks. Thus, registering “lion king” for use as a personal e-mail is not a legitimate noncommercial or fair use or evidence that a respondent was commonly known by the domain name. Disney Enterprises, Inc. v. The Lion King a/k/a NULL NULL, FA0906001266261 (Nat. Arb. Forum June 24, 2009). Similarly, Sydney Opera House Trust v. Jeffrey Campbell, Hkcc-0900013 (December 29, 2009) for prospective use as a “heritage web site.” It also does not extend to surname domain names that resolve to websites displaying links to goods or services competitive with a complainant. Pernod Ricard v Tucows.com Co., D2008-0789 (WIPO August 21, 2008) (<ricard.com>).

Domain names used for Internet services may not be easily discernible for lack of a website but they are not inactive or fail for passive use. For a complainant to overcome the paragraph 4(c)(iii) defense of noncommercial use it must offer proof of targeting. In Viking Office Products, “[a]dditionally, the <viking.org> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s VIKING mark.” A Google search for 'viking' “return[ed] about 74,600,000 hits, including numerous commercial and noncommercial uses.” A respondent is free to register a domain name consisting of common terms. Examples are too numerous to cite, but are permitted on a “first-come, first-served” basis.

In preparation for the UDRP proceeding Viking Office Products resorted to undercover efforts to entrap the Respondent into demanding a price for <viking.org>. “It appears that this tactic was for the purpose of getting Respondent to offer to sell the domain name and establish a basis for bad faith.” This rarely works, because such negotiations are commenced by the complainant and there is no proof that selling the domain name was the respondent’s primary purpose in registering it. In any event, in this case the tactic backfired; the Panel entered a finding of Reverse Domain Name Hijacking.

Adding, subtracting and transposing letters would seem to imply both knowledge of the complainant's trademark and an intention to capitalize on the pre-existing goodwill associated with the complainant's trademark. This is certainly true with recognized brands such as AMAZON (infringed by adding an extra "m" <ammazon.com>), Amazon.com, Inc. v. Victor Korotkov, D2002-0516 (WIPO August 13, 2002) ("The ploy of 'typo-piracy' is well recognized, whereby a domain name is composed with the intention of trapping users who seek the web site of a known trademark but make a predictable spelling or typing mistake"); and GE (prefixing "www" inside the TLD to form <wwwge.com>), General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, D2000-0377 (WIPO July 19, 2000)("slight changes to, adds to, or subtracts from, the trademarks and service marks of others, in the apparent hope that those who seek to visit the web site of the mark holders might inadvertently make a typographical error and potentially could be taken to a web site constructed by Respondent to profit from this confusion .... has been dubbed 'typosquatting'."

The first appearance of a typographical error as cybersquatting – omission of a dash in the trademark C-COM – was not recognized as such by the Complainant who alleged that <ccom.com> (removal of a dash rather than an addition of one) was identical (rather than confusingly similar) to its trademark. Chernow Communications, Inc. v. Jonathan D. Kimball, D2000-0119 (WIPO May 18, 2000). The dissent jumped on this pleading "error" (not pleading "confusingly similar" in the alternative). He "[saw] no need to supplement the allegations that Complainant actually made with others that Complainant chose not to include, or to afford Complainant a second opportunity to allege what frankly is an obvious component of a prima facie case under the UDRP." This uncharitable view failed to impress his colleagues then, was tacitly rejected in contemporary cases, and has left no mark on the jurisprudence.

But, every rule has exceptions. In the case of typosquatting, small differences do not per se infringe on the complainant's rights. Adding an extra "m" to "Amazon" and prefixing "www" to "ge" are typosquatting but adding an "l" to NATURALAWN to form <naturallawns.com>) is not. NaturaLawn of America, Inc. v. Jeff Edwards, FA1102001372111 (Nat. Arb. Forum March 16, 2011). The reason is that "natural" and "lawns" are common words. An even more interesting example is Vanguard Trademark Holdings USA LLC v. Administrator, Domain / Vertical Axis, Inc., FA1104001383694 (Nat. Arb. Forum May 31, 2011) where the Respondent intentionally created a typographical error for its domain name, <natiional.com>. "The Panel agrees that there is ample evidence presented by the Complainant and not rebutted by the Respondent that the trademark NATIONAL and the domain name <natiional.com> are confusingly similar."

The critical issue in Vanguard is whether the intentional registration of a misspelling of a common word is an abusive registration. "The Panel's greatest concern, obviously, is 'bad faith'." The answer lies in the misspelling of a common word, but why does Amazon prevail for "ammazon" and Vanguard does not for "natiional"? The answer is that "some marks are stronger than others. [Natiional] is not a misspelling of a relatively unique mark." AMAZON has penetrated further into the psyche. The Respondent's typosquatting business model is quite evident. It is not questioned that the Respondent chose <natiional.com> "with the intention of creating a domain that would attract the typical misspelling of the word." There is one AMAZON but many "NATIONAL's"

In order for the intentional registration of a misspelled common word to be abusive the Complainant must show that the respondent targeted its mark. The Panel put it this way:

There is space in the marketplace for misspelled domain names as there is for trademarks composed of misspelled common words (omitting the "l" in "natural" so as to create the non-word NATURALAWNS).

Inactivity of Domain Name a Factor in Determining Intent, Not Conclusive of Bad Faith

Activity is full of evidentiary possibilities. It enlarges the sphere from which inferences can be drawn and can be said to speak even where the respondent defaults. Inactivity of the domain name (passive use) limits the sphere of inference. Instead of content and hyperlinking as proof, inferences have to be drawn from other indicia: the fame of the trademark or lack of it, respondent's history with domain names and its prior use (if any) of the name in issue, the relative dates of domain and trademark acquisitions and the respondent's contact information. The Complainant in La Sirena Alimentacion Congelada, S.L. v. Tom Fisher, D2011-0582 (WIPO May 16, 2011) alleged that the Respondent provided the wrong contact information for the WhoIs database. In appropriate circumstances, incorrect and misleading contact information on the Whois directory may be conclusive evidence of deception. But, for failing to provide or correct contact information the complainant has to do more than allege intention; it must prove that respondent intended to evade service, hide its true identity and thus obstruct the arbitral proceedings. However, negligence in maintaining the Whois directory is not evidence of bad faith.

La Sirena, though, raised a more important issue, namely current passive holding following active use. The Respondent appeared, but provided little information about his historical use of the domain name. He simply denied bad faith without disclosing any history. A domain name may be identical or confusingly similar to a trademark and the respondent even be found to have no right or legitimate interest in it but nevertheless registered it in good faith. The Panel "accepts that the Complainant has not authorised the Respondent to use the LA SIRENA trade mark. The Panel further accepts that there is insufficient evidence to suggest that the Respondent has ... become commonly known by the Disputed Domain Name." But, the domain name was acquired in 1997 and even though the Respondent makes no mention of its history it nevertheless has one. The domain name has either been held passively for 14 years or used but presently inactive. Respondents are expected to produce a record in defense to a charge of abusive registration; not to remain silent. To say nothing is a risky strategy.

The Policy has been construed to authorize panelists to perform limited investigation (Rule 10[a]). Paragraph 4.5 WIPO Overview of WIPO Panel Views on Selected UDRP Questions reads: "Consensus view: A panel may visit the internet site linked to the disputed domain name, in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision."

The fact that a domain name does not resolve to an active website at the time of the complaint is merely a factor; not conclusive of bad faith. In La Sirena the Panel undertook limited factual research into the history of domain name and found that "the Domain Name resolved to active websites between at least 1997 and 2006. For most of this time, the Disputed Domain Name resolved to a number of diving websites, some of which were operated using the name 'La Sirena Divers' and featured pictures of mermaids (the Panel notes that 'la sirena' is Spanish for 'mermaid')."

Legitimate use of a domain name in the past, even if inactive in the present undermines a complainant's argument that it was targeted. The La Sirena record supplemented by the Panel's investigation "indicate[s] that the Respondent used the Disputed Domain Name in connection with a bona fide offering of services over a period of almost 10 years.... [The] fact that the Disputed Domain Name does not currently resolve to an active website does not of itself serve to extinguish such lengthy interest in the circumstances of this case," citing Warm Things, Inc., Inc. v. Adam S. Weiss, D2002-0085 (WIPO April 18, 2002), where the use of the disputed domain name for a period of 2 years was held to constitute use of the disputed domain name in connection with a bona fide offering of goods or services, irrespective of the fact that the disputed domain name was not in use at the time that the complaint was filed.

Relief under the UDRP is not closed to unregistered trademark holders – they too are covered – but the burden to establish that right is significantly greater than for those with certificates. There is also a wide difference within the unregistered trademark ranks as to the evidence necessary to demonstrate the existence of the right. So, for example, "[t]he more descriptive the term the more extensive must be the use to show that the mark has acquired secondary meaning to become distinctive of a particular company," Jason Hachkowski v Lucas Barnes, D2009-1800 (WIPO February 5, 2010) (<aidsdrugsonline.com>. In contrast to registered trademarks, distinctiveness is not presumed. But, if the evidence establishes secondary meaning, the complainant has standing and is entitled to relief.

The Respondent in Volunteering Travel Solutions Pvt Ltd. v. Puran Tours, D2011-0865 (WIPO July 4,2011) (< volunteeringindia.org>) argues that common law rights are a matter "internal ... within Indian jurisdiction and the Complainant cannot claim protection in international jurisdiction unless the trademark has been registered under the Madrid System for the International Registration of Marks." The view that local law can trump UDRP law has been solidly rejected. This is clear in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. Paragraph 1.7 states the consensus: "the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction."

What defeats a complainant is not that it is non-suited for lacking registration but that it is unable to marshal the necessary evidence to prove its case. Nevertheless, some ingredients in Volunteering Travel are not above suspicion. Complainant's domain name which uses the ".com" extension but is otherwise identical to the disputed domain name was registered earlier than the Respondent's, which means that the Respondent had knowledge of a prior registered domain name. The Complainant's point is that "[a]s the disputed domain name was registered subsequent to the Complainant's adoption of its mark and is identical to its domain name except for the gTLD '.org', it is likely to cause confusion for customers, especially as the Respondent uses the disputed domain name for identical services as that of the Complainant." However, the implication that therefore the Respondent had knowledge of the trademark is as equally invalid as Respondent's about local law. Domain names are not place-holders for trademarks.

The proof in Volunteering Travel consists of documents that relate to another business entity. "[T]he Complainant has filed copies of Income tax returns for Experienz Travels, for the financial years 2009-2010 and 2010-2011, newspaper write-ups that mention Experienz Travels and selected testimonials from its customers over a period of four years 2008 to 2011, where some testimonials refer to the mark VOLUNTEERING INDIA. The Complainant also states that it extensively advertises online on websites such as 'www.goabroad.com', 'www.volunteerabroad.com' and 'www.volunteerabroadworld.com', and cites its listing in the World Youth Student and Educational Travel Confederation and Transitions Abroad to demonstrate its rights in the mark." However,

The deficiency of evidence is that "[t]he Complainant has not furnished a statement of the turnover under the mark or a statement showing the amounts spent on advertisement and promotion of its mark." Therefore, the "Panel finds that the documents filed by the Complainant in these proceedings are insufficient for the Panel to determine whether the mark has acquired secondary meaning."

One appellate panel humorously said of the UDRP proceeding that it was "adjudication lite" lite"because of "its streamlined nature and its loose rules regarding applicable law." It is certainly lighter than litigation in federal court and rules looser, but it would be a mistake for either party to ignore the UDRP's evidentiary demands. In many cases parties undertake the proceedings without a true appreciation for the legal requirements with the dismaying discovery that it is governed by a body of substantive law and rules of procedure of which before hand they paid little or no attention and after hand wished they had.

This point about ignoring evidentiary demands is illustrated in two recent cases, both it happens from the National Arbitration Forum, American Express Marketing & Development Corp. v. Admin Support / SEOMarketing.org, FA1106001392387 (Nat. Arb. Forum July14, 2011) and Act II Jewelry, LLC d/b/a lia sophia v. Mike Man, FA1104001385563 (Nat. Arb. Forum June 6, 2011). In both cases, Complainants were represented presumably by lawyers. In neither case did the Respondents appear which makes denial of relief all the more painful. In both cases, the Complainants failed to prove that the Respondents lacked rights or legitimate interests in the domain name.

In American Express, the Panel declined to analyze whether the Complainant satisfied the requirements of paragraph 4(a)(ii) of the Policy. The analysis can be bypassed because proof that the respondent lacks rights or legitimate interests is not determinative of bad faith. Default in responding to the complaint does not lead to an automatic ruling for Complainant. The issue is determined by proof of the third element, abusive registration. The trademark in American Express is of recent vintage. ZYNC CARD registered on the principal register in September 2010. The domain name was registered in February 2011. The Respondent resides in Nevada. While "zinc" may be a common word, the playful misspelling combined with "card" creates an uncommon phrase. If future complainants and counsel are attending, the lesson could not be clearer. In denying relief, the Panel noted

In other words, the complainant must offer proof regarding the respondents manner of use even if the domain name is inactive. It should establish at minimum the reputation of its trademark in the market place and the respective locations of the parties. Mere assertions of bad faith are insufficient for a complainant to satisfy this burden. Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum March 9, 2005). The complainant also has to establish evidence of knowledge of complainant's trademark. The Complainant in American Express lost because its representative failed to marshall the required evidence that the Respondent registered the disputed domain name with knowledge that it was infringing Complainant's trademark rights.

The Complainant in Act II Jewelry was found to have failed its burden in a different way. If the complainant fails to establish its prima facie case, it loses whether or not the respondent appears and defends. "The Panel finds that Complainant has failed to submit enough evidence in its Complaint to establish the required prima facie case." Why? Because "Complainant has submitted its Complaint with no Annexes to show Respondent's alleged use, and has simply restated the Policy paragraphs while failing to make substantive arguments for its position." Failure to prove lack of rights or legitimate interests is conclusive against the complainant because failure to prove one of the elements makes further inquiry into the remaining element unnecessary. Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum January 8, 2008).

Paragraph 4(c)(iii) of the Policy reads: "[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." As the Panel points out in Proskauer Rose LLP v. Leslie Turner, D2011-0675 (WIPO June 30, 2011) "free speech is not listed as one of the Policy's examples of a right or legitimate interest in a domain name ... [but] the list ... is not exclusive." UDRP panelists quickly concluded that free speech for criticism and commentary was subsumed in "legitimate noncommercial or fair use." Also, "[t]he Internet is above all a framework for global communication, and the right to free speech should be one of the foundations of Internet law."

A finding that the respondent is exercising her right of free speech concludes the issue in so far as cybersquatting is concerned. It does not necessarily conclude the dispute. "Whether the content of the website is actionable under the law for reasons unrelated to the Domain Name itself is not for this Panel to consider." Questions of defamation are for another court. The same answer, but based on a different rationale was delivered in the matter of three other complainants, senior attorneys at the Proskauer Rose law firm. The three partners in Gregg M. Mashberg v. Crystal Cox, D2011-0677 (WIPO June 30, 2011), Allen Fagin v. Crystal Cox, D2011-0678 (WIPO June 30, 2011), Joseph Leccese v. Crystal Cox, D2011-0679 (WIPO June 30, 2011) alleged common law trademarks. Where the asserted mark is a complainant's personal name, the "first hurdle [he] must clear is to establish that [he] has rights in a trademark to which the Domain Name is identical or confusingly similar."

Cases in which personal names have been held to constitute unregistered trademark rights involve individuals, generally founders of businesses, in which they are identified as the alter egos and driving forces behind the companies. The Panel cites as examples of alter egos and driving forces Roland Mouret v. Domains by Proxy, Inc. and Sonia Long, D2009-1435 (WIPO December 10, 2009) (Complainant had trademark rights in his personal name, which he used in connection with his fashion design business); Kotak Mahindra Bank Limited v. Richard Brown, D2008-0243 (WIPO April 9, 2008) (Complainant had developed trademark rights in his name through being a well-known business man and chairman of a bank).

Law office partners are not in the same category. The Panel explains why the record in this case does not support a common law trademark right. The first branch of proof is evidence that complainants' names are source indicators:

The second branch of proof is evidence that complainants have spent money advertising themselves:

It has long been held that the question of parsing speech should be left to a court of law. See, for example, Mayflower Transit, LLC v. Dr. Brett Prince (CV 005354, D.NJ., March 30, 2004) (although defendant's use of plaintiff's service mark in domains of noncommercial web sites critical of plaintiff does not violate the ACPA as this is a "bona fide noncommercial" use of the mark which defendant had reasonable grounds to believe was lawful, defendant may nevertheless be exposed to liability for defamation if his statements are actionable).

Totality of Facts Analysis of Bad Faith for Common Words and Descriptive Phrases

Friction between holders of trademarks composed of common words or descriptive phrases and domain name registrants rests on the variable meanings of the words and phrases. For the complainant its choice acts as a source indicator; for the respondent the same words convey only their attributed (cultural) meanings. As a general rule respondents have a right to register and use domain names composed of commonly used words and descriptive phrases provided that the registrations are in good faith. The proviso "good faith" most obviously applies to registrations that precede a complainant's trademark acquisition. Post-registration puts in issue respondent's knowledge of the complainant's trademark and use of the domain name. Respondents' often expressed view that common words and phrases are always fair game irrespective of their use as trademarks has been consistently rejected, but so too has complainants' view that they have a superior right to the domain name corresponding to their trademark.

For trademarks on the lower end of the scale, complainants have an enhanced burden in proving bad faith even if the respondent fails to establish a right or legitimate interest in the domain name. According to the Complainant in Ticket Software LLC v. MRWFX Inc., D2011-0721 (WIPO June 17, 2011) (TICKET NETWORK and <ticketsnetwork.com>)

However, "ticket" is generic; at best TICKET NETWORK is descriptive. See, Advertise.com, Inc. v. AOL Advertising, Inc., 616 F.3d 974 (9th Cir. 2010), citing Filipino Yellow Page, Inc. v. Asian Journal Publications, 198 F. 3d 1143, 1147 (9th Cir. 1999) applying the "familiar 'who-are-you / what-are-you' test." A generic choice answers the question 'what are you?' "[W]here a respondent registers a domain name consisting of 'dictionary' terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest." A party who elects to register or use a common term or terms as a trademark has a weak case, "unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner."

In Ticket Software, the balance was at best in equipoise. The Complainant stated on its website that it was initially founded in 2002 as a computer software company, but failed to provide any information on when it first launched the ticket exchange service on its website. On the one hand, the Panel was unable to determine that the Respondent had a right or legitimate interest, in part because for its 9 years as holder it had not developed the business it claimed motivated its registration of the domain name, on the other was the timing of Complainant's trademark application and registration. The domain name was registered several months before the PTO application. While Respondent's intention assertion may have put its credibility in issue, it was not sufficient to support a forfeiture. "The Panel is more inclined to believe that the Respondent acquired the disputed domain name for monetization purposes – i.e., to generate paid advertising revenues or hold the disputed domain name for eventual sale."

A finding of bad faith if not proved conclusively – equipoise means that the complainant has failed its burden of proof – rests on the totality of facts and circumstances in the record. That totality in Ticket Software was insufficient to establish that "the Respondent registered the disputed domain name seeking to profit from and exploit the Complainant's trademark rights."

Paragraph 4(a)(i) of the Policy is silent on the rights the complainant seeks to vindicate. However, within the first few months of inception Panels concluded that the term "rights" in paragraph 4(a)(i) of the Policy was inclusive. The Policy "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names," The British Broadcasting Corporation v. Jaime Renteria, D2000-0050 (WIPO March 23, 2000); SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO April 13, 2000). This construction is supported by the WIPO Final Report, at paragraph 150(ii) – "[t]he procedure should allow all relevant rights and interests of the parties to be considered." It is also supported in the representation and warranty provisions of registration agreements and Paragraph 2 of the UDRP. Nothing in any of these provisions suggests that "[l]egal rights in a trade mark ... require[s] that the trade mark must be registered," Jeanette Winterson v. Mark Hogarth, D2000-0235 (WIPO May 22, 2000). However, while it is not necessary for a trademark to be registered by a governmental authority or agency for such rights to exist the proof requirement for registered and unregistered trademark is different. In contrast to registered trademarks, an unregistered mark is not presumed to be distinctive.

This brings us to Liverpool Lumber Co., Inc. and Joseph Ehle v. RESCUECOM, FA1105001389956 (Nat. Arb. Forum June 26, 2011). The Complainant claims "rights" in both the business name and the personal name of its President and CEO. The offending domain names are <liverpoollumber.com> and <joeehle.com>. The Respondent argues that the Complainants have no rights, but even if they did the proof establishes a noncommercial fair use of the domain names under paragraph 4(c)(iii) of the Policy. The question to be answered is whether the "alleged mark has become a distinctive identifier associated with the complainant or its goods and services."

Whereas the owner of a registered mark succeeds in proving its trademark right by submitting a copy of the registration certificate – which "is prima facie evidence of [the trademark's] validity," NetApp, Inc. v. July Linett c/o Jolly Co., FA0812001238829 (Nat. Arb. Forum February 5, 2009), and also "creates a rebuttable presumption that the mark is inherently distinctive," Janus International Holding Co. v. Scott Rademacher, D2002-0201 (WIPO March 5, 2002). An owner of an unregistered mark has the heavy burden of marshaling evidence sufficient to prove that its mark is recognized by the consuming public as an indicator of its goods or services prior to the registration of the domain name. The complainant's burden under the UDRP may is lesser than demanded under international trademark regimes, but only in degree. The more distinctive the mark the lesser the proof and vice versa. Melanie Greenstein v. EMT Agency c/o Shelly Justice, FA1006001329849 (Nat. Arb. Forum July 28, 2010), citing CNRV, Inc. v. Vertical Axis Inc., FA 1300901 (Nat. Arb. Forum May 3, 2010) (The "burden [of proving a common law trademark] is heightened where a claimed mark is entirely descriptive or otherwise inherently weak.").

Demonstrating a "distinctive identifier" requires proof that it is used as a trademark not simply a company selling services. "To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark," British Heart Foundation .v. Harold A Meyer III, AF0957 (eResolution November 13, 2001). But, in Liverpool Lumber the Panel "after performing its own search on internet ... found ... no reference ... to LIVERPOOL LUMBER CO., INC as a mark for certain services but to LIVERPOOL LUMBER CO., INC as a company name with contact data delivering such services." Although panelists approach the issue of proof of unregistered trademark rights "in a slightly more relaxed manner than does the USPTO when it requires proof of secondary meaning," NJRentAScooter v. AM Business Solutions LLC, FA0909001284557 (Nat. Arb. Forum November 4, 2009), assertions with no proof do not satisfy the evidentiary standard.

The UDRP is essentially an adversary proceeding. Panels have pointed out in response to parties requesting them to inquire and obtain proof that a "party is under a duty to produce evidence in support of its case. It is not for the Panel to undertake an inquisitional role," Randgold Resources Limited and Randgold & Exploration Co. Ltd. v. Pico Capital Corp., D2001-1108 (WIPO October 24, 2001) (addressing the Respondent); Pleasure Cake SL v. TechTools, D2009-0580 (WIPO July 14, 2009) (addressing the Complainant). Yet, the inquisitional role is not entirely missing from the UDRP. A Panel "may request, in its sole discretion, further statements or documents from either of the Parties." Rule 12 of the Rules of the Policy reads: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties."

"Request[ing] further statements or documents" is central to the decision in Comité Interprofessionnel du vin de Champagne v. Steven Vickers, DCO2011-0026 (WIPO June 21, 2011) involving <champagne.co>. The Complainant represents producers of champagne. It is not itself the source of goods. It nevertheless asserts that in its representative capacity it has actionable rights under U.K. "The Complainant does not contend that it holds any registered trademark or service mark (including any certification mark or collective mark). It relies purely on rights which it says it holds under the English law of passing off." The Panel posed the following question (see my Note of July 1): "Are Rights in a Protected Designation of Origin or a Geographical Identifier Sufficient as such for the Complainant to make out a Case of 'Rights' under Paragraph 4(a)(i) of the Policy?"

To better understand the Complainant's position in Comité Interprofessionnel du vin de Champagne the Panel issued a Procedural Order requesting that it explain its legal position. Instead of responding the Complainant requested that it be allowed to withdraw its Complainant "at this stage." Rule 17 of the UDRP Rules provides for suspending or terminating a proceeding, but not for withdrawing a complaint. Rule 17 reads:

The Panel noted that 17(a) did not apply since the parties did not agree to settlement. Rule 17(b) is tied to Rule 4(k) – a "mandatory administrative proceeding ... shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced." "Clearly it was not 'impossible' for the Panel to continue this proceeding, so the issues were whether it was 'unnecessary' for the Panel to do so, and whether the Respondent had raised any justifiable objection to the termination." The Panel explained that in the particular circumstances of this case

A further consideration for rejecting the Complainant's request in Comité Interprofessionnel du vin de Champagne concerned the issue of forum shopping. There is little law on this issue. The concern is that by "allowing the Complainant to withdraw the Complaint at such a late stage could open the door to what might be loosely described as 'forum shopping'." Withdrawing a complaint "at this stage" opens up the possibility that the complainant contemplates refiling and trying its luck with another Panel.

Unlike some country code Policies, the UDRP makes no provision for an administrative rehearing or appeal by an aggrieved party. The Complainant in Sensis Pty Ltd, Telstra Corporation Limited v. Yellow Pages Marketing B.V., D2011-0057 (WIPO March 15, 2011) ("Sensis 2") rested its refiling on the following grounds

The three-member Panel noted that "the current Complaint must be assessed on its merits in establishing each of the elements required by paragraph 4(a) of the Policy. It cannot be treated simply as an appeal of particular findings or conclusions in the earlier UDRP proceeding." Of the three grounds, the most interesting (because to my knowledge not previously addressed in any prior decision) is ground number 2.

The Complainant in Sensis Pty Ltd. argued that the first Panel made "private investigations" without giving the complainant an opportunity to respond to them. While a consensus has formed on "private investigations" permitting limited research – it is dealt with in paragraph 4.5 WIPO Overview of WIPO Panel Views on Selected UDRP – it raises a fairness issue if the complainant is not given the opportunity to respond. According to the Sensis 2 Panel "it often would be fair – and helpful in reaching a just and informed decision – for a UDRP panel to request information and comments from the parties concerning new or reasonably unanticipated facts or legal issues." A Panel can do this under Rule 12, that is request statements from the complainant as the Panel did, for example, in Comité Interprofessionnel du vin de Champagne v. Steven Vickers, DCO2011-0026 (WIPO June 21, 2011).

The Sensis 2 Panel proposed applying a standard developed for accepting unsolicited supplemental filings to reply to unexpected issues raised in responses. "In our view, the same standard should apply when the panel is considering new or unanticipated factual or legal material on its own initiative, where that material could be dispositive and where it is reasonably subject to challenge or interpretation." In applying the standard to the Sensis Complainant, the Panel concluded that it was deprived of a right to respond to the first Panel's "private investigations." The Panel explained

The Panel in Comité Interprofessionnel du vin de Champagne v. Steven Vickers, DCO2011-0026 (WIPO June 21, 2011) posed the following question: "Are Rights in a Protected Designation of Origin or a Geographical Identifier Sufficient as such for the Complainant to make out a Case of 'Rights' under Paragraph 4(a)(i) of the Policy?" The Complainant submitted evidence that it has rights in the name "Champagne." Indeed, Panels in other administrative proceedings have agreed, but those decisions were reached under Policies other than UDRP. The Panel in Comité Interprofessionnel du vin de Champagne explained that none of those proceedings "in which the Complainant succeeded in having champagne-related domain names transferred to it [] assist in this case" for the following reasons:

The Nominet Policy applicable in the CIVC v. Jackson case permits a complainant to rely on rights in a "name" (as well as in a trademark), and it was on the basis of rights in a "champagne" name that the Complainant succeeded. The .ie Policy [in CIVC v Richard Doyle, Case No. DIE 2007-0005] appears to be even broader in scope, permitting a complainant to rely on (among other things) a geographical identification. And the French and Belgian domain name dispute resolution policies which were applicable in the .fr and .be decisions to which the Complainant referred, do not appear to have restricted the standing requirement to ownership of a trademark or service mark, as the UDRP does.

The prerequisite "right"for standing to maintain a UDRP proceeding is a trademark or service mark and not a geographical identifier or a designation of origin which supported the affirmative decisions in the four other administrative proceedings.

The legislative underpinning of the UDRP, the Final Report made it clear that "registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure." The issue was revisited in the Final Report on the Second Domain Name Process. The authors noted in this later report that the subject was a "difficult area" to consider and that the views were "ardently held." Although there are existing international norms that prohibit false and deceptive indications of geographical source on goods "those norms [quoting from Comité Interprofessionnel du vin de Champagne] were confined to the use of terms on goods, and that there was no uniformly agreed international list of geographical indications." The Policy has not been revised and "geographical indications, as such, remain outside the scope of the Policy."

Municipal complainants with rights based on geographical identifiers were among the early losers in the UDRP process. To take one of a number of prominent examples, a complainant who returned for a second bite received the ultimate penalty, a finding of reverse domain name hijacking [Kur-und Verkehrsverein St. Moritz v. Domain Finance Ltd., D2004-0158 (WIPO June 13, 2004) and Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd., D2000-0617 (WIPO August 17, 2000)]. It was more successful when it filed an action in civil court claiming infringement not only of trademark rights, but also of personality rights (rights in the name St. Moritz). The court held that because St. Moritz could rely on rights in the name "St. Moritz", the content of the website accessible under the domain name stmoritz.com was irrelevant. In a judgment dated 4 May 2009, it ordered the transfer of the domain name to the tourism authority of St. Moritz.

Comité Interprofessionnel du vin de Champagne combines both geographical identifier and designation of origin (both upper case and in lower case the generic content of the bottle). However, the difficulty for authorities and associations is that they are not themselves the producers of the goods. A geographical indication "does not [per se] distinguish the wine of one champagne producer from the wine of another, and so does not fulfill the fundamental function of a trademark of distinguishing the goods or services of one undertaking from those of other undertakings." There is an indication in the decision that the Complainant would have been in a better position had it been the holder of a certification mark. "It seems to this Panel that geographical indications speak fundamentally of the quality and reputation of the goods produced according to certain standards in a specific geographic area, but not of any particular or individual trade source as such."

You may well ask, What does deliberative conversation have to do with the making of domain name jurisprudence? Mention was made of conversation in the Binary/Unitary Note last week. Ideas have to come from somewhere and once they are uttered interlocutors test and return them as received or modified. There are a number of interesting cases in which dissenters disapproved of the majority's use of the Policy to transfer the disputed domain name. I pass over these cases for the moment, noting however that the majority view has prevailed, to focus on another early case, Firstgate Internet A.G. .v. David Soung, D2000-1311 (WIPO January 29, 2001) which offers a good illustration of what I mean by deliberative conversation. Initially, there was a temporality question about "rights." The question was whether under paragraph 4(a)(i) of the Policy a complainant had to demonstrate trademark rights that preceded the registration of the domain name or had such rights when it commenced the administrative proceeding. Although not the dispositive issue in the case and offered as dicta, the panelists in Firstgate thought it important to set forth their disparate views. Thus,

The consensus now is that the complainant need only demonstrate that it has rights. It would be premature to say that the conversation has ended because the issue continues to be debated. A unanimous three-member Panel in New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010) held that "[w]hile registration of a domain name before a Complainant acquires trademark rights is not specifically identified in the UDRP Policy as an automatic defense to a complaint, the Panel does not believe that the intent of the Policy requires a Panel to move forward on a complaint when the Complainant's rights in the disputed domain name are at best junior to the rights of the Respondent."

The conversations I'm thinking of can be within the decision as with Firstgate (no disagreement as to outcome), or (most usual) offered by dissenting panelists (which I will get to below), or (occasionally) concurring panelists (an interesting subset), or by a unanimous Panel examining precedent afresh (the New York Times decision also challenged the consensus view about laches). In this Note, I want to discuss a dissenting panelist's conversation in Computop Wirtschaftsinformatik GmbH v. Domain Administrator, FA1106001394450 (Nat. Arb. Forum August 8, 2011) (complaint granted; domain name transferred to Complainant).

The dissenting panelist (as he has done in other decisions) is of the school that holds, "similar, yes, but not confusingly so." "I agree with the result of the majority's deliberations on this element, but not with the reasons given for it, for the domain name is neither identical or confusingly similar to all of the trademarks that the majority have included under the heading 'the COMPUTOP mark'." Since there was confusing similarity with three of the four trademarks the Complainant established jurisdiction:

The crux for the dissent, however, is not the relative dating of the trademarks and domain name, but the majority's reliance on decisions that are not entirely on point. Thus,

The question is whether an inference of bad faith registration is viable where the respondent is responding to an offer by the complainant as opposed to its own initiative in offering the domain name for sale to the Complainant. "In [Computop] ... it was the Complainant who made the offer, an offer to buy the domain name and the Respondent merely replied by naming its price because it had been asked to." The difference is important:

There is a troublesome holding by the majority in Computop that suggests that a finding of bad faith registration is warranted where a "respondent fail[s] to conduct a search engine search prior to requesting a domain name." Although there was evidence of present use in bad faith historical evidence was lacking. The dissent notes

It would appear that the Computop Respondent loses despite the temporal (Complainant waited 9 years) and geographic distance (Germany and Canada) because the second level domain (while it may consist of two phonetic elements that are recognizable as common words or abbreviations) is not itself a dictionary word.

Domain names composed of two or three letters are "extremely prized," Deutsch Welle v. Diamondware Capital Ltd, D2000-1202 (WIPO January 2, 2001) (<dw.com>). They can be attractive to many trademark holders other than complainants who claim a market identity and seek to capture the domain names for themselves. However, except for acronyms or initials well known or famous, there has to be more than coincidence of letters or numbers to find the registrant answerable for abusive registration. Two recent cases illustrate the Complainants' burden of proving abusive registration, Holy Mother World Networks v. Gregg Ostrick, D2011-0627 (WIPO June 22, 2011) (<hmwn.com>) and GEA Group Aktiengesellschaft v. G.E.A. Design, D2011-0927 (WIPO July 30, 2011) (<gea.com>). It is not only that neither are in the same category as IBM and HP, but in neither case was there any evidence of targeting.

The fact that an acronym, or as in the case of GEA Group the Respondent's initials, can is be used by many companies including the complainant cuts both ways. Where there is no proof of targeting it supports the respondent's good faith and where there is targeting the fact that many companies could claim it is irrelevant. So, for example, the Respondent in Smith Travel Research, Inc. v. Victor An, FA0904001259999 (Nat. Arb. Forum June 15, 2009) registered <str.com>, which is identical to the Complainant's registered trademark. The evidence clearly established that "str" was "a very popular abbreviation and has been used by many businesses." But, infringing intention was established through the website's content. "Despite Respondent's protestations to the contrary ... the Complainant and the Respondent both compete in the travel business." This leads to the conclusion that the "Respondent was clearly trying to associate its offerings with the goodwill of Complainant's well-known mark."

Holy Mother World Networks does not have a registered trademark for "hmwn" and it made no meaningful attempt to demonstrate its reputation at the time of domain name registration. It has the double burden of proving that its unregistered mark preceded the domain name registration and (if it did) the likelihood that a respondent geographically remote would have had any actual knowledge of its existence. GEA group whose first use in commence preceded the domain name registration by decades does have a registered trademark. Its burden is to prove that the Respondent's choice (the initials of his name and registered 16 years before the proceedings) (remoteness in time rather than in distance) was in bad faith. For different reasons, neither Complainant can succeed on unsubstantiated allegations. "Notably," states the majority in Holy Mother World Networks, "[the Complainant offers] no evidence ... of the readership of the Complainant's website or of the listenership or penetration of its radio broadcasting service at the date of registration of the Disputed Domain Name, being 27 December, 2002. Neither is there any evidence as to the number or scope of donations made to support the radio station by the Canadian public, nor of any promotional activities whether within the church or within the community which might demonstrate the type of use that the Complainant made of the acronym HMWN at the relevant date."

An allegation of bad faith registration is undermined where, as in GEA Group, the Respondent shows that he "has a legitimate explanation for [his] use of GEA in the disputed domain name based on the use of [his] initials." The fact that a domain name does not resolve to an active website although it once did is not evidence of bad faith. In GEA Group the Respondent uses his initials for his email address. The fact that the Respondent may be willing to sell the domain name "for a substantial multiple of the USD 2,000 sum offered by the Complainant, carries little weight." For a Respondent with a right or legitimate interest the disputed domain name is an asset (intangible personal property). His to hold or sell as he sees fit, although any purchaser from the Respondent will be limited by its representations and warranties under Paragraph 2 of the Policy.

A minority view has emerged, indeed is greatly insistent and inarguably articulate even if not persuasive, that questions a bedrock consensus of UDRP jurisprudence. Panelists of the earliest decided cases concluded that for the complainant to succeed it must plead and prove that the respondent registered (intent) and is using (present conduct) the domain name in bad faith. One consequence of this binary concept is that respondents who take advantage of later acquired trademarks are permitted retain their infringing domain names. The binary concept (the minority view insists) allows the respondent to continue its bad faith use and to confuse and deceive the Internet public. The criticized consensus is said by these panelists to be based on misinterpretation of an admired early decision that formulated a bedrock principle for assessing good faith of passively held domain names, Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 13, 2000). A reconsideration of the consensus (the misgivers would say) is therefore necessary to correct this wrong. The label “retroactive bad faith” is a misnomer because the concept does not necessarily attribute bad faith to the registration, which could be innocent but justifies forfeiture of the domain name for continuing, knowing infringement of the trademark.

When the minority view first emerged in 1999 in a duo of cases, the first misgiver (who happens to be the panelist who decided the very first UDRP case and was the first to remark on the complainant’s burden) lamented that he and other panelists “seem to have largely overlooked the language of the Policy regarding the respondent's representations and warranties,” City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, D2009-0643 (WIPO July 3, 2009) (known as the “Mummygold” case), complaint denied but the same panelist applied his underlying rethought analysis in Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009) to find abusive registration. The binary construction is a path wrongly taken.

The latest conversation on the binary versus unitary concept is between the majority and dissent in Alibaba Group Holding Limited V. Digital Domains MEPE, HK-1100361 (ADNDRC July 26, 2011). The dissent in Alibaba is the Mummygold panelist. It is worth listening into the conversation between panelists of the different views. It should be quickly noted that articulate though the unitary analysts are their concept has not gained transaction. Torus Insurance Holdings Limited v. Torus Computer Resources, D2009-1455 (WIPO January 10, 2010) (it “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.”) For the Panel in Mile, Inc. V. Michael Burg, D2010-2011 (WIPO February 11, 2011) the unitary concept “does not seem ... to be an attractive answer ... [nor could it] find a compelling Policy or legal basis for retroactively characterizing later abuses as bad faith in the ‘registration’ of a domain name.”

Part of the problem here is that the binary construction has been applied from UDRP's start. The value of a jurisprudence to those engaged in dispute resolution is predictability, which comes from adherence to consistency. The WIPO Overview has given the binary view black letter status (paragraph 3.1). The Alibaba majority holds to the consensus, namely that the subsequent use in bad faith is not to be read retrospectively to find registration in bad faith. This does not mean to say that an inference of bad faith registration cannot be drawn in certain instances, but the proof cannot rest solely on infringing use. There would be a different outcome under the Anticybersquatting Consumer Protection Act, but the parties in Alibaba are not U.S. based and there is no information about the location of the registry and registrar.

To the dissent in Alibaba, precedent is not sacrosanct: courts have reversed and overruled precedent in “order to reach the correct result.” He continues

If courts of law have reversed and overruled bad principles then “[s]urely UDRP panelists are even more free to determine that prior panel decisions, no matter how well intended, do not comport with the Policy.”

Briefly, the difference between the binary and unitary views is night and day. The unitary view holds that subsequent bad faith use – at least that which is spectacularly egregious – supports a conclusion that the respondent violates the Policy by taking advantage of the complainant’s reputation and “deliberately mislead[ing] Internet users.” Continuing infringing use is a violation of the respondent’s representation and warranty under both its registration agreement and paragraph 2 of the Policy, which essentially states the “thou shalt nots” which includes renewals: “By applying to register a domain name, or asking us to renew a domain name registration, you hereby represent and warrant to us that [etc.]” (emphasis added).

Domain names were initially seen as having two lives: providing “addresses for computers that [are] easy to remember ... without the need to resort to the underlying IP numeric address” and identifying a business or its goods or services. To these purely functional tasks must be added a commercial value created by putting domain names to work attracting Internet users, holding them for investment and selling them in the secondary market. In its Committee Report to the ACPA, Congress used a powerful property metaphor when it described cybersquatting as a “land grab,” H.R. Rep. 106-412, at 6 (1999). Real estate is one kind of property and trademarks another. Grabbers of either property injure holders and deceive the public by pretending to be who they are not. To the extent that illicitly acquired domain names have any value in the virtual marketplace it must be by reflection of their sameness or confusing similarity to appropriated trademarks. It is merely a chimera of value. Chimeras cannot be sold on the open market.

In contrast, licitly acquired domain names are inherently valuable, a point acknowledged in the statutory and arbitral defenses to claims of infringement. Although there was initial uncertainty about the status of domain names, U.S. and other common law courts have concluded that they are a form of property. See, for example a U.K case, OBG Ltd. v. Allan [2008] 1 A.C. 1 (H.L.) in which Lord Hoffman for the majority observed at para. 101, “I have no difficulty with the proposition that a domain name may be intangible property, like a copyright or trademark.” In this respect, domain names are independent of the contractual arrangements of their acquisition. The march toward recognizing domain names as property is bad news for domain names illicitly acquired and good news for the licitly.

The value of licitly acquired domain names is that which a willing third party is prepared to offer. The legal thread begins with a pre-ACPA decision in the 4th Circuit in which the court rejected the view that domain names were property. The District Court for the Eastern District of Virginia in Dorer v. Arel,60 F. Supp.2d 588 (E.D. Va. 1999) sought an answer through analogy with trademarks: “Significantly, trademark law does not suggest that the trademark owner ‘owns’ the words used in the mark, but that the owner may enjoin others from using the words in commerce so as to avoid confusion or dilution of the value and significance of the mark.” The Court listed “several reasons to doubt that domain names should be treated as personal property subject to judgment liens.” This reasoning was subsequently followed by the Virginia Supreme Court in Network Solutions, Inc. v. Umbro Int'l, Inc. reversing the trial court judgment that held that the “judgment debtor's Internet domain name registrations are valuable intangible property subject to garnishment,” 259 Va. 759, 770 (Va. 2000). The Virginia Supreme Court held that since a domain name registration agreement was a “contract for services” and the domain name was not property it could not be subject to garnishment.

In contrast to the 4th Circuit and Virginia Supreme Court the 9th Circuit Court of Appeals in Kremen v. Cohen, 337 F.3d 1024 (9th Cir. 2003) held that domain names are personal property and “subject to the same laws as other types of intangible property.” It defined property broadly as including “every intangible benefit and prerogative susceptible of possession or disposition.” The Court held that “[l]ike a share of corporate stock or a plot of land, a domain name is a well-defined interest. Someone who registers a domain name decides where on the Internet those who invoke that particular name – whether by typing it into their web browsers, by following a hyperlink, or by other means – are sent.

Kremen was followed by Office Depot, Inc. v. Zuccarini, 2007 WL 2688460 (N.D. Cal. 2007), aff’d 596 F.3d 696 (9th Cir. 2010) and Bosh v. Zavala, 08-CV-04851-FMC-MANx) (C.D. Cal. September 24, 2009). In Office Depot, the district court held that the ACPA “strongly suggests an intent on the part of the United States Congress to treat domain names as property existing in both the location of the registry, and the location of the registrar”. In Bosh the court awarded plaintiff damages under the ACPA on default and in a subsequent garnishment proceeding the court entered an amended order granting judgment “requiring turnover of domain name holdings of judgment debtor” consisting of 800 domain names. The decision recognizes what is apparent in the marketplace, that domain names can be sold to offset a monetary judgment.

The most recent case on domain names as personal property is Tucows.Com Co. V. Lojas Renner S.A., 2011 ONCA 548 (Court of Appeal for Ontario). The question arose in a procedural context as to whether the court had jurisdiction “to settle controversies with regard to rights or claims against personal property” (para. 68). The court concluded that “[i]t seems to me ... that for purposes of jurisdiction, a domain name is part of the intangible property of Tucows’s business.” Renner’s pursuit of <renner.com> commenced with a UDRP proceeding that was immediately terminated upon Tucows commencing the declaratory judgment action in Ontario. Tucows uses "renner" in its vanity email service.

Of all the WIPO Views on Selected UDRP Questions, two stand out for Panels being in disagreement. Criticism sites (paragraph 2.4) and Fan sites (paragraph 2.5). For answers to all the other questions there is consensus. The two questions are as follows:

This Note focuses on fan sites. In most instances celebrities (athletes, artists, authors, entertainers, film stars etc.) do not have registered trademarks and come to the UDRP proceedings hoping to persuade the Panel that they have common law rights to their names. Their problem and the registrant-fan's right or legitimate interest in the domain name or its good faith in registering the domain name is illustrated in Tom Welling v. Kenneth Gold, FA1106001393893 (Nat. Arb. Forum July 29, 2011). The Complainant was an already known actor when the Respondent registered <tomwelling.com> in 2001. Laches is not a defense and, although "sleeping on one's right" makes it more difficult to prove bad faith, when there is only one "Tom Welling" or one of any historic and current distinctive signifier, the difficulty evaporates.

The Panelist in Tom Welling is up front in adhering to the second (less tolerant) view of registering a celebrity's name. In this case, the Respondent's website contains some advertising that "relate[s] to goods and services unrelated to the Complainant or his show" and obtains a benefit in exchange for a banner headline. The level of commercial activity is a significant factor in both views, but View 1 is more tolerant of "incidental commercial activity." The Panel concluded that "[n]ot all commercial arrangements require the exchange of money." Pertinently,

As noted in another case, "[e]ssentially, any use which gives rise to a right or legitimate interest must be fair and impersonation is not fair," David Foox v. Kung Fox & Bill Hicks, D2002-0472 (WIPO July 25, 2002) . The crux, then, is impersonation. If Internet users come to the celebrity's website with an expectation and are disappointed they will have been duped, "but in any event the registrant's objective of bringing them there will already have been achieved."

Expressing one's thoughts in a domain name identical or confusingly similar to a trademark is protected speech even if it offends and enrages the complainant. The Policy enshrines the right to speak critically. There has, however, been a mixed reception for domain names identical to the trademark. In Aspis Liv Försäkrings AB v. Neon Network, LLC, D2008-0387 (WIPO June 2, 2008) (<aspis.com>), for example, the Panel over vigorous dissent held that"the use of a domain name which essentially comprise[s] a trademark without any additional 'modifier' for a criticism site will not provide 'rights' or 'legitimate interests'." 1066 Housing Association Ltd. v. Mr. D. Morgan, D2007-1461 (WIPO January 18, 2008) (<1066ha.com>) is cited with approval: "What is being curtailed is not free speech, but impersonation." Also of interest because it takes the opposite view and is consistent with U.S. law is Sutherland Institute v. Continuative LLC, D2009-0693 (WIPO July 10, 2009), involving a parody website resolving from a domain name identical to the Complainant's trademark. Result: complaint denied.

The dissenting member in Aspis believed that "the Respondent has been improperly deprived of the Domain Name, in violation of his or its U.S. Constitutional rights of free speech, and feels that if this case were brought in virtually any court in the U.S., the result would be different." In fact, Respondent subsequently commenced an ACPA action in which the Complainant (now defendant) defaulted in appearance, Neon Network, LLC v. Aspis Liv Försäkrings, No. CV-08-1188-PHX-DGC (USDC Arizona July 22, 2009). The Court granted a default judgment declaring that domain name does not constitute trademark infringement under the Lanham Act and is not unlawful under the Anticybersquatting Consumer Protection Act.

This brings us to the latest incarnations of the issue, denying relief for domain names confusingly similar (although virtually identical) to trademarks, Technion-Israel Institute of Technology v. Anonymous / Whois Privacy Protection Service, Inc. / Technionteams Whistleblower, D2011-0887 (WIPO July 15, 2011) (<technionteams.com>) and Nippon Paper Industries Co., Ltd. v. Harriett Swift, D2011-0832 (WIPO July 6, 2011) (<nipponpaper.net>). The Complainant in Technion-Israel owns Israeli Trademark Registration No. 91882, filed on March 24, 1994, for the mark TECHNION – ISRAEL INSTITUTE OF TECHNOLOGY, with design. It "contends that the domain name <technionteams.com> is merely a combination of the Complainant's TECHNION and TEAMS trademarks." The disputed domain name in Nippon Paper is an abbreviation of the Complainant's trade marks (it omits "industries.")

The Technion-Israel Complainant argues for the proposition that the Respondent lacks rights or legitimate interests in the disputed domain name because it "is using the disputed domain name in association with a website with the sole purpose of defaming the Complainant." (The Nippon Paper Complainant argues that it is being tarnished; a discussion reserved for a later Note). The Technion-Israel Respondent defends on the grounds of fair use [paragraph 4(c)(iii) of the Policy]. It is a given in these cases that Internet users may be initially confused, but that is the price for "free" speech. "Free" speech does not protect the speaker from liability if in a court of law it is determined to be defamatory or tortious. However, it is not within a Panel's authority to determine whether the respondent has exceeded its right and slipped into actionable territory. The criterion is hat the website is what it purports to be. The Panel observes:

Respondent's website makes it clear through page headings and content that its goal is to "expose" the alleged failings of the Complainant's organization. The Panel does not find any evidence that the Respondent's website is interfering with the Complainant's business with a predatory commercial intent. The Respondent's website does not claim to be associated with the Complainant, but rather makes it clear to Internet users that it is a website dedicated to commenting on and criticizing the Complainant and the programs it provides. Whether the comments posted on this website are defamatory, it is not within the Panel's power to decide.

There are two "Views" on the issue of domain names identical (not carrying a criticism signifying modifier ). The majority in Aspis and the Panel in 1066 subscribe to View 1. The The Panels in Technion-Israel Institute of Technology and Sutherland Institute subscribe to View 2, which is consistent with U.S. law. For more on these disparate views, go to the WIPO Overview, paragraph 1.4 and paragraph 2.4.

As a trademark descends on the scale of protectability its holder has less cause for complaint. If it were otherwise a trademark holder would have the ability to lock up and command a community's cultural and linguistic heritage. Registering a domain name composed of common words and descriptive phrases is not abusive merely by being identical or confusingly similar to a complainant's trademark. Although trademark holders and domain name registrants have as a common purpose to attract attention they are different in kind. A holder deploys its trademark as a source indicator whereas a non abusive respondent chooses a domain name for its power to attract Internet users for what the name is understood to mean without reference to any trademark value. It is not a violation of the Policy to register and use domain names composed of commonly used words and descriptive phrases in their ordinary sense provided that the respondent's purpose is consistent with good faith.

It is not consistent with good faith to appropriate a trademark composed of common words for the purpose of exploiting the holder's reputation. For example, the combination of the words "tractor" and "supply" and "company" in Tractor Supply Co. of Texas, LP, and Tractor Supply Company v. Above.com Domain Privacy / Transure Enterprise Ltd. D2011-0487 (WIPO May 16, 2011) and earlier in Tractor Supply Company v. Forum LLC, D2006-1320 (WIPO December 15, 2006) can be used by others in the business of supplying tractors – that is, the string is not "distinctive when applied to the sale and supply of tractors." But, in the specific, "the Complainants ha[ve] adapted the words 'tractor supply company' for a wide variety of goods." The bad faith in the Tractor Supply cases is based on the respondents' uses of the domain name for "a purpose [un]relat[ed] to its generic or descriptive meaning (such as using 'apple' for a genuine site for apples)."

The Tractor Supply Company kinds of case are distinguished from domain name choices that are genuinely used "with a purpose relating to [their] generic or descriptive meaning[s]." Illustrations include National Trust for Historic Preservation v. Barry Preston, D2005-0424 (August 10, 2005) and McMullen Argus Publishing Inc. v. Moniker Privacy Services/Jay Bean, MDNH, Inc., D2007-0676 (WIPO July 24, 2007) which brought up the phrases "historic hotels" and "European car." The Panels concluded that respondents were using the names descriptively. At the same time, as the 3-Member Panel noted in McMullen that Panels have consistently rejected the often expressed view by respondents that common words are always fair game for domain names irrespective of their use as trademarks. That is not the case, but the burden is heavy to capture dictionary words and common phrases.

Single common word trademarks are even harder to monopolize. In Harvard Lampoon, Inc. v. Reflex Publishing Inc., D2011-0716 (WIPO July 26, 2011) the Complainant attempted to capture <lampoon.com>. Undermining its argument, however, is the fact that while it holds a trademark in LAMPOON the registration post-dated the domain name. The fact that the Complaint had "lampoon" in the title of its publications does not give it rights absent proof of common law protection coupled with evidence of the Respondent having taken advantage of the trademark. On this front, the 3-Member Panel noted that

If a complainant is to prevail, it must make a showing that respondent chose the common word or string of words for its association with the trademark and to take advantage of it reputation in the marketplace. In Harvard Lampoon, however, "there is no evidence Respondent registered the Domain Name - a dictionary word - knowing of Complainant and its rights in the LAMPOON Mark." A dictionary word other than one elevated to iconic status -- "apple"-- absent proof favoring the complainant belongs to the domain name holder.

Paragraph 4(a)(i) of the Policy is written in the present tense. The complainant must demonstrate that it has a present “right” in a lexical string that a respondent has registered in whole or in part as a domain name. In contrast paragraph 4(a)(iii) demands proof of past conduct. “[T]he domain name has been registered and is being used in bad faith.” The phrase “is being used in bad faith” is construed to mean co-incident or close in time following the registration. In contrast, a domain name registered before a trademark right has been established is not an abusive registration under the Policy even if the respondent lacks rights or legitimate interests in the domain name. See Sai Maa v. Domain Finance Inc. / Minakumari Periasamy, FA1105001390126 (Nat. Arb. Forum June 30, 2011) on this issue. Present infringing use coupled with good faith registration that is not actionable under UDRP is actionable under the Trademark Act. See Note of June 28.

As a general rule, a successor domain name holder is construed as a new registrant, answerable to the complainant for bad faith registration and use. The fact that Respondent’s predecessor may have “improperly” demanded $50,000 for the domain name in 2001 is not proof against a later acquiring domain name holder. “Had Complainant believed that it had a legitimate UDRP claim it could have filed its Complaint in 2001 when the alleged offer to purchase was made. Complainant does not explain why it waited so long to assert this claim.”

In order for the Complainant to state an actionable claim for the domain name based on its present statutory right it would have to demonstrate that in 2007 (prior to its trademark registration for POINT GREY) it had a common law right. However, here the lexical string is descriptive of a geographic area in Vancouver, British Colombia and in Western Australia; is therefore on the lower end of trademark protection. To prove a common law right “with regard to a geographically descriptive mark such as POINT GREY Complainant must demonstrate to the Panel that the mark had secondary meaning even though it is apparent from the fact of the U.S. registration of POINT GREY on the principal register that the mark has since acquired distinctiveness.” The measure of “acquired distinctiveness” prior to registration is “the consuming public ... rather than the claimant/producer.” This, the Panel did not find. Rather,

Denial of knowledge absent proof of secondary meaning or infringing content such as to support an inference of targeting there is no legal basis for removing the domain name from a respondent.

Rule 17 of the Rules of the Policy provides alternative instructions for terminating a proceeding: “(a) If, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.” Subparagraph (b) also provides alternative instructions: “If, before the Panel’s decision is made, it becomes [1] unnecessary or [2] impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.”

The parties in Victoria's Secret Stores Brand Management, Inc. v. Siarhei Leonau, FA1106001393866 (Nat. Arb. Forum June 28, 2011) did not exactly “agree on a settlement” – in fact, explicit mutual agreement is rare – but the Panel held that “[b]ecause both Complainant and Respondent request the transfer of the disputed domain name to Complainant, the Panel must recognize the common request of the two parties.” There is a little fakery here, a blending of the two subparagraphs. If both parties want the same thing, then it is appropriate to forego the usual UDRP analysis. To invent an “agreement” is a convenient fiction when in fact it is only the respondent who consents. This may be the spirit of the Policy, but query the letter. Analysis has become “unnecessary” but not “impossible.” In any event, the Complainant did not in Victoria’s Secret (as has frequently happened) “raise justifiable grounds for objection.”

The contrast is with those cases in which the Complainant objects to the simple expedient of “simply mak[ing] an order for the transfer of the domain name to Complainant.” More typically the respondent pleads nolo contendere and offers unilaterally to relinquish its registration. This raises a challenging issue as to the respondent’s motivation and how to assess it. The Panel in The Cartoon Network LP, LLLP v. Mike Morga, D2005-1132 (WIPO January 5, 2006) identified at least three possible courses of action for the unilateral consent: “(i) to grant the relief requested by the complainant on the grounds of the respondent’s consent without reviewing the facts supporting the claim; (ii) to find that consent to transfer means that the three elements of Paragraph 4(a) of the Policy are deemed to be made out and thereby reach the conclusion that transfer should be ordered and (iii) to proceed to consider whether, on the evidence, the three elements of Paragraph 4(a) of the Policy are satisfied because the respondent’s offer to transfer is not an admission of the complainant’s right.”

There is good reason to proceed with the UDRP analysis without complainant’s express consent. In The Cartoon Network the Panel concluded that the Respondent’s offer was genuine and that such unilateral consent “provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements.” Nevertheless, termination benefits the respondent because it relieves it of a finding of bad faith. A decision to terminate would be questionable where there is a credible basis for concluding that the consent is offered to avoid a holding of bad faith.

Return to Home Page

Burden of Proof
(Light for Proving Lack of Rights or Legitimate Interests [4(a)(ii))]

Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO August 21, 2003):

Demand for business concessions to relinquish the domain name falls within the prohibition of ¶4(b)(i) of the Policy. Takaso Rubber Products Sdn Bhd v. Selim Tasci and Tasci Dis Tic. Ltd. STI, D2006-1263 (WIPO December 16, 2006):

In order for there to be bad faith “the cybersquatter must have actual knowledge of the existence of the trade mark owner. If the registrant is unaware of the existence of the trademark owner, how can he sensibly be regarded as having any bad faith intentions directed at the Complainant?” The Way International Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (U.S. parties, involving an unregistered mark). The Panel concluded that there was no place for the concept under the Policy because if

Swimways Corporation v. Richard Nugent, D2008-0786 (WIPO July 12, 2008) (<toypedo.com>, U.S. Complainant; U.K. Respondent did not appear; Complaint denied):

“[Domain names] registered because of their attraction as dictionary words, and not because of their value as trademarks [do not contravene the Policy],” The Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum August 6, 2004) (<landmarks.com>).

The term “passive use” may sound like an oxymoron but is explained in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000):

“Informing a trademark owner of a bad faith registration of a domain name does not make its registration or use in good faith,” Google Inc. v. Jeltes Consulting/N. Tea Pty Ltd, D2008-0994 (WIPO August 20, 2008):

Outcomes should not be governed by caprice, Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001):

mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., D2007-1141 (WIPO November 30, 2007) (three member panel):

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.

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 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.

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

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

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.

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

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).

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):

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.”

JANUARY 2010	JULY 2010	JANUARY 2011
FEBRUARY 2010	AUGUST 2010	FEBRUARY 2011
MARCH 2010	SEPTEMBER 2010	MARCH 2011
APRIL 2010	OCTOBER 2010	APRIL 2011
MAY 2010	NOVEMBER 2010	MAY 2011
JUNE 2010	DECEMBER 2010	JUNE 2011