In assessing bad faith “the complainant must prove that the respondent has ‘targeted’ the complainant or its mark in some way, or at the very least that the respondent had the complainant or its trademark in mind when it selected the disputed domain name,” Foodcube Technologies Inc. v. Registrant [1349920]: Domain Administrator, Foodcube Takeaways, D2009-0945 (WIPO September 4, 2009). The “usual telltale signs of cybersquatting” are the actions described in the four examples of bad faith. It must be evident that in some way the respondent anticipates a benefit by holding or is currently benefitting from actual use of the domain name.

The facts in Foodcube are unusual in that <foodcube.com> was registered prior to the Complainant’s trademark coming into existence but transferred several times while remaining in possession of the original registrant. The argument that rearranging ownership of a domain name within the family should be “effectively ignored” has been rejected. Certipost NV v. Virtual Point Inc, D2008-1183 (WIPO September 25, 2008). Each transfer constitutes a new registration, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (“[T]he transfer of a domain name to a third party amounts to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.”).

However, a complainant of a later acquired trademark right must still prove bad faith. A new registration is measured by the same standards as the original registration. It was evident from the record that there could have been no bad faith registration by the original registrant. In Foodcube, there was a new registration of the domain name and “the issue is whether the Complainant has proved that the Respondent acted in bad faith in effecting that registration.” There was no evidence of bad faith use by any of the prior registrants. Acquiring a domain name and continuing bad faith use is one of the telltale signs of bad faith registration. Except for asserting that the business advertised on the website was a sham, there was no evidence that the Respondent or its predecessors had the Complainant in mind at any time.

The Respondent’s explanations in Foodcube for the various transfers were not implausible as a response to statements made by the Complainant’s representative in cease and desist letters and correspondence with the Respondent. One of the notices stated that “WIPO decisions uniformly reject this view [that you, the Respondent have a superior claim because you registered the domain name earlier than the existence of the trademark right], and find that the date of registration does not confer a superior claim against a trademark holder when the domain name holder is not using the domain for any legitimate, bona fide purpose.” The Panel properly found (indeed, was generous in its language) that the statement was “potentially misleading.” In fact, the statement misstates the law and may very well have excited the Respondent into protecting his position by making “internal rearrangements.” “The Complainant’s real difficulty stems from the fact that this Domain Name was registered before the Complainant even came into existence and, unlike the position in Certipost, there is insufficient evidence of bad faith intent targeting the Complainant, in the ‘internal rearrangements’ made with the Domain Name” in the relevant periods (emphasis in the original).

Two recent decisions have highlighted Respondents’ legitimate interests in domain names that incorporate a holder’s trademark, by happenstance the same Complainant, SAP AG v. SAP User List, D2009-1285 (WIPO November 8, 2009) (November 17, 2009, LegitimateUse) and SAP AG v. UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (May 29, 2009, Incorporating). That there are limits is discussed in Sony Kabushiki Kaisha (also trading as Sony Corporation), Sony Europe (Belgium) N.V. v. MCS Bulgaria 2003, D2009-1294 November 17, 2009) (<sony-bg.com> and <sonybg.com>).

The Respondent in Sony “acknowledges the similarity between the Complainants’ trade mark SONY and the Domain Names,” but argued that it was “not unlawful in Bulgaria to offer for sale the Complainants products by reference to the Complainants’ trade marks, and the Respondent therefore needs no authorization from it to do so.” The question is not the selling of Sony products and there is nothing unlawful in Respondent’s conduct. However, “the proposition that, because such conduct is not per se unlawful, the Respondent therefore necessarily has a right or legitimate interest in the Domain Names, in the sense meant by paragraph 4(a)(ii) of the Policy, is not correct.”

The proper question, rather, is whether in conducting this lawful business the Respondent is adhering to the guidelines that permit the use of a Complainant’s trademark, as was the result in the SAP decisions. A legitimate interest is earned by meeting the four part criteria, articulated in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). In Sony, the facts did not support this finding. It would be unobjectionable “[i]f the websites merely included links to other, clearly separate, websites offering other goods, in addition to a certification as a Toshiba dealer (which could serve as nothing more than an assertion of genuineness of the Respondent’s business).” However,

in this case a consideration of the website under the Domain Name <sony-bg.com> today shows that the same website is clearly offering other goods, including those of the competing supplier Toshiba, or, more accurately, that pages from another website of the Respondent are being linked so that they appear on the website under <sony-bg.com>.

As a result, Respondent in Sony fails the second and third prongs of the Oki Data test, namely that (2) it does not use the site to sell only the trademarked goods and (3) the site does not accurately disclose the registrant’s relationship with the trademark owner.

Paragraph 2 of the UDRP 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). The “knowledge” that the respondent must have is actual. The U.S. trademark doctrine of constructive notice is not recognized under the Policy. 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). However, this simply means that the complainant must offer evidence from which the inference of knowledge can be drawn. The requirement is less than certitude but more than statutory constructive notice. A leaning toward knowledge, however, is more likely to be found when the trademark in issue is particularly strong, heavily advertised or promoted, where the parties are in the same territorial or niche market, have had prior business dealings or are in close geographic proximity. The test of knowledge is “awareness.”

In Ford’s Produce Co., Inc v. Eric Botner, FA0910001288827 (Nat. Arb. Forum November 20, 2009) the Respondent admitted that “it was aware of the Complainant’s website and its offering of products prior to registering the name” although sought to excuse itself on the theory that its CEO “saw no conflict.” Beholders’ eyes, however, see what they want. While having knowledge is not necessarily inconsistent with good faith, it is not the test for determining it. Even if the Respondent knew nothing of the Complainant’s trademark for EARTH FAMILY, it admitted knowing the Complainant’s domain name, <earthfamilyfood.com>. In order capture some of the Internet traffic otherwise going to <earthfamilyfood.com> it varied the domain name by adding an “s” to “food” – forming <earthfamilyfoods.com>. This may raise an interesting question as to whether a respondent’s knowledge based on a domain name rather than the complainant’s trademark satisfies the bad faith requirement under the Policy. But, it appears that knowledge of one presumes the other.

A complainant’s argument, however, cannot simply be based on the theory of constructive notice. ENX (European Network Exchange) Association v. Ahven Tolunay, D2009-1218 (WIPO October 28, 2009). “The Panel … does not accept the Complainant’s submission that a doctrine of constructive notice applies in circumstances where there is a United States trade mark registration so as to render the Respondent necessarily aware of the Complainant’s mark.” There has to be evidence of notice of the kind that denial of knowledge is implausible. Panels have emphasized from the earliest decisions that doctrines of national law are not to be imported into the UDRP. The conclusion drawn from the evidence in ENX is a model of deduction. The Panel leads up to his conclusion by noting that the Respondent could possibly have become “generally aware of the Complainant’s trade mark as a consequence of its general repute,” or its location relative to the Complainant. The Respondent also “appears to have a variety of domain name registrations … quite possibly for re-sale purposes,” but this too is “not prima facie indicative of bad faith.” These bits of evidence, however, add up:

The coincidence of factors including the proximity of the Respondent’s stated address to the Complainant’s offices, the apparent provision of false owner name information and false address information both for the Disputed Domain Name and it seems for other domain names owned by the Respondent, are all indicative that the Respondent acquired the Disputed Domain Name in bad faith.

Moreover, the “inference of the Respondent’s registration in bad faith is only reinforced by the lack of bona fides of the website to which the Disputed Domain Name resolves, the lack of evidence of any goods or services provided by the Respondent and the substantial likelihood that the content of this website was created by the original owner of the Disputed Domain Name and has simply been replicated by the Respondent.”

Registering 1,017 variants of the Complainant’s trademark FREECREDITREPORT.COM is eye-popping and in its way hugely comic. ConsumerInfo.com, Inc. v. Netcorp Netcorp c/o Netcorp, FA0909001283469 (Nat. Arb. Forum November 11, 2009). Here is a dozen sampling from the beginning of the alphabet: <arfreecreditreport.com>, <asfreecreditreport.com>, <bfreecreditreport.com>, <breecreditreport.com>, <cafreecreditreport.com>, <cfreecreditreport.com>, <cofreecreditreport.com>, <connecticutfreecreditreport.com>, <ctfreecreditreport.com>, <dcfreecreditreport.com>, <defreecreditreport.com>, <dfreecreditreport.com>.

How does a registrant explain these variations? Well, first of all when the trademark application was made for FREECREDITREPORT.COM the Examining Attorney rejected it “due to its descriptiveness.” Although the Complainant overcame the objections (according to the Respondent) it “had no rights in the mark at the time the domains were registered.” Timing in this case coupled with proof of a common law right is particularly important. The Complainant’s application was filed in February 2006 and the trademark issued in May 2008. However, the Complainant claimed a first use in commerce as January 1999. The evidence for a January 1999 first use was compelling. The Complainant asserted (without dispute from the Respondent) that

between 1999 and 2002 it spent more than $12 million per year promoting the services offered under the mark, and that advertising spending increased each year…. [In] September 2002 [the advertising] ran on 18 cable networks, generated 130,000 consumer responses, and resulted in 110,000 sales. In January 2003, another advertisement ran during the Super Bowl pregame telecast, exposing the mark to millions more consumers. Complainant contends that a survey in June 2005 indicated that 53% of consumers were at least somewhat familiar with the FREECREDITREPORT.COM mark.

The disputed domain names were registered during a period of intense nationwide exposure to the trademark. However, the question is whether the Respondent’s registrations were fortuitous in the sense of two people lighting on the same combination of common words, with the Respondent being the first to register? This was improbable because of the variations. If the Respondent had been the first to register in good faith there would have been no reason for variations. The Panel found 15 different kinds of variations, many being typographical, others changing the tense, still others “adding generic or descriptive words that ha[d] obvious association with the Complainant’s business” and still others “misspelling the mark by changing a letter in the mark to a different letter,” and more.

Typosquatting is defined as the “intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. 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). 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. While a pay-per-click website can be “use in connection with a bona fide offering of goods or services” [paragraph 4(c)(i) of the Policy], it fails when it is used for “displaying links to third-party websites, some of which provide credit report viewing services in direct competition with Complainant.” Piggybacking on a complainant’s business model developed and advertised prior to trademark registration but after the complainant has established itself in the marketplace does not support registration in good faith; rather, it is abusive conduct.

Successor trademark holders complaining about domain names registered before they acquired their interests have the added burden of not having all the documentary facts and sometimes no explanation for long delays in taking action against a registrant . This was illustrated recently in Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) for <autocar.com> and <autocar.org> in which the complainant acquired the 1905 trademark in 2001 and waited 8 years to complain about domain names registered in 1998 and 1999.

A more successful outcome is reported in Layby Services Australia Pty Ltd. v. Chrisco Hampers Australia Ltd., D2009-1066 (WIPO November 3, 2009) in which the complainant, a new owner of a gift business commenced a timely proceeding against a respondent who registered <hamperking.com> prior to the Complainant’s assignor acquiring a trademark registration for HAMPER KING. It had to overcome the difficulty of explaining why it was entitled to a domain name registered before a trademark was officially issued. Ordinarily, the lacuna of evidence supports the respondent unless there is proof that the trademark was in use and distinctive prior to issuance that the respondent had knowledge of the complainant and its trademark. Generally,

in these circumstances the WIPO panelists’ consensus view 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.

The complainant’s task is harder when dealing with a generic word or phrase, of which there have been a number of recent examples. MediaWhiz Holdings, Inc. v. Domain Admin, PrivacyProtect.org / Domain Manager, MediaWiz Services Pvt Ltd., D2009-1227 (WIPO October 28, 2009) (<mediawiz.biz>)

Layby Services, however, offered sufficient evidence to prove that the Respondent competed in the same market and more importantly in an exchange of correspondence prior to the commencement of the proceedings had disclosed that it was using the domain name in bad faith; that, in fact, it “provides prima facie evidence that the Respondent was using the disputed domain name to divert Internet users to its website.” The “act of redirecting Internet users to other websites by using the reputation and goodwill of the Complainant’s trademark through a domain name that incorporates a trademark to a website unconnected to the trademark owner, does not constitute bona fide offering of goods and services.” However, proof of bad faith use does not necessarily support bad faith registration.

In Layby Services the Complainant supplemented its evidence persuasively in response to a Procedural Order, which is a gift to parties who take advantage and a vexation for those unable to respond affirmatively. See, for example, CSS Polymers Inc. v. Robert Beirne, D2009-1179 (WIPO November 9, 2009), in which in response to the Respondent’s excuse that “[d]ue to the lack of better record-keeping and the Panel’s request that Complainant CSS Polymers respond within only four (4) days, I am unable to locate documents showing use of the `CSS Polymers’ trademark in 2002” the Panel stated that the Order “was intended to benefit Complainant, not burden it.” Further, it “was incumbent upon Complainant to assemble the evidence it needed to carry its burden on the elements of the Policy and to support assertions in [the] declaration before commencing this proceeding.”

A long line of decisions holds that laches is not applicable to a UDRP proceeding, but waiting too long to assert a claim weakens the complainant’s case. The majority in Board of Trustees of the University of Arkansas v. FanMail.com, LLC., D2009-1139 (WIPO November 2, 2009) noted that “the considerable delay in bringing this case does color the merits of the dispute.” Although stopping short of finding that laches applied, it nevertheless 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.”

The possibility is based on a reading of paragraph 15(a) of the Rules which states that “a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” This view “is not unreasonable … given that, in many if not most jurisdictions in the United States and in countries such as the United Kingdom and Australia, the formerly sharp line between law and equity has been blurred if not effaced by the amalgamation of law and equity. Indeed, it would appear unlikely that when they used the expression “principles of law that it deems applicable,” those who drafted the Rules meant “principles of law but not equity.”

Lapse of time works against the complainant if in the interim the respondent has either gained a right or interest in the disputed domain name or so much time has elapsed without explanation that the complainant’s allegation of abusive registration is undermined. “[T]he longer the time between the registration of a disputed domain name and the assertion of the Complainant’s rights the harder, in general, the inference of bad faith registration becomes to sustain,” YIT Corporation v. Future Media Architects Inc., D2007-0588 (WIPO July 27, 2007). Past decisions generally focus on respondent’s defense under paragraph 4(c)(i) of the Policy that it has acquired a legitimate interest in the domain name by through bona fide use “before notice of the dispute.”

In Board of Trustees of the University of Arkansas Respondent registered <razorbacks.com> in 1995. One panelist who joined the majority to express the heretical view about laches, stepped back from applying it in this case, although his colleague would have done so. The third member of the Panel then joined the first in rejecting a laches defense because the “Respondent did not present any hard evidence of prejudice it suffered as a result of Complainant’s considerable delay.” The (new) majority held that

although there may be no evidence of actual financial prejudice suffered by Respondent and although the whole matrix may not be properly characterized as laches, in Panelist Brown’s view, the delay and lack of explanation for it strengthen Respondent’s case for a right or legitimate interest in the Domain Name and negate Complainant’s case that the Domain Name has been used in bad faith. That is so because the unchallenged evidence is that Complainant by inactivity encouraged Respondent to continue to use the Domain Name in the way in which Complainant knew it was being used.

The shifting majority notwithstanding all three members of the Panel agreed that the Complainant failed to sustain its burden of proof that the Respondent lacked a legitimate interest in the domain name which it was using in its vanity mail service. Also, “razerbacks” is not exclusively associated with the Complainant; for some, it “is just a hog”.

There are domain names though similar are not necessarily confusingly similar. They sit on the borderline, and not surprisingly their status may be viewed differently by different panelists. In the same way that a an original registrant is regarded differently from an assignee (the good faith of one is not heritable by the other for example), so there may be a question whether a domain name that is similar but not confusing in one context becomes confusingly similar in another. The Panel in Netflix Inc. v. Anthony Fox, FA0909001287043 (Nat. Arb. Forum November 2, 2009) finds no confusing similarity between NETFLIX and <netlix.com>, but instead of stopping his analysis and simply dismissing the complaint (which one would expect when a complainant fails to prove jurisdiction) he “elects to consider the remaining two elements of the Policy” (although Why is unclear) but doing so finds the Respondent to have a legitimate interest and registered the domain name in good faith. Therefore, even if he had found the domain name confusingly similar instead of the other way around, this particular Respondent, the original registrant of <netlix.com> had a good defense. However, it is not clear whether the absence of an “f” would help the assignee where (based on the use of the domain name) the composition of the domain name held by an assignee may appear to be a case of typosquatting.

In concluding that there was no confusing similarity between NETFLIX and <netlix.com> the Panel cites iLeads.com LLC v. Electronic Marketing Systems, Inc., FA0308000187636 (Nat. Arb. Forum October 13, 2003) in which that Panel (who also analyzed further than necessary) found that although there was no confusing similarity between ILEADS and <aleads.com> and while the Respondent had a legitimate interest in the generic “leads” it nevertheless registered the domain name in bad faith. Does that mean, If there had been confusing similarity the Respondent’s legitimate interest would nevertheless have trumped bad faith? Dictum, very confusing, but the twists and turns are fascinating.

However, there is a classification difference between a NETFLIX and a ILEADS. One is arbitrary (and registered), the other generic (and not registered). But, what if the respondent is not the original registrant and the assignee uses the domain name in bad faith? There are decisions that attempt to answer this question. In Certipost NV v. Virtual Point Inc., D2008-1183 (WIPO September 25, 2008), for example, the registrant was a different entity than the respondent and even though owned by the same principal in a different business capacity the Panel held that the respondent was an assignee. “[T]he Panel sees no injustice in the ‘internal’ transfer of the Domain Name within the wider business group, producing the ‘side effect’ of giving the third party trade mark owner who has been subjected to the bad faith use, an opportunity to invoke the Policy which it would not otherwise have had (because it could not show that the original registration of the disputed domain name had been made in bad faith).” Of course in Certipost, the Panel found that CERTIPOST (an invented word like Netflix) and <certipost.com> were confusingly similar.

Similarity between a domain name and parts of a trade mark inherently generic or descriptive are not legally confusing. Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO September 11, 2000) (CLUB 18-30 and <hot18to30.com>). Sharing three quarters of the phrase – “and grow rich” – is not enough, Napoleon Hill Foundation v. pmweb, FA0907001275894 (Nat. Arb. Forum September 28, 2009) THINK AND GROW RICH and <flipandgrowrich.com>. “Having ‘flip’ instead of ‘think’ as the initial word changes the meaning of the phrase. The phrase ‘think and grow rich’ is general and does not suggest real estate transactions, while the phrase ‘flip and get rich’ suggests ‘flipping’ read estate to get rich.” Although the Panel in StreetPrices.com, Inc. v. Nett Corp., FA0908001280020 (Nat. Arb. Forum November 10, 2009) denied the complaint against <streetprice.com> the dissent would have gone further and dismissed on the grounds that the domain name is not confusingly similar to STREETPRICES. A trademark holder can claim no more than it has been granted, but the Netflix/Netlix type of case can take on a different colortion in the hands of an assignee, particularly where the trademark has risen to a higher level of recognition in the marketplace.

First it was authorized resellers whose incorporation of a complainant’s trademark was deemed to be legitimate if they met the 4-part test originally announced in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). Subsequently, the legitimacy was extended to unauthorized resellers, distributors and consultants. The 4-part test requires that the respondent must (1) actually be offering the goods or services at issue; (2) 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; (3) must on its website 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; and (4) not try to corner the market in all domain names, thus depriving the owner of reflecting its own mark in a domain name.

Domain names may undoubtedly be confusingly similar to the complainant’s trademark, but a trademark holder cannot exclude non-competiting parties from making a bona fide offering of goods or services based on the complainant’s products. A number of cases have involved cars or automobile parts[DaimlerChrysler A.G. v. Donald Drummonds, D2001-0160 (WIPO June 18, 2001 )]; the Respondent in Oki Data registered <okidataparts.com> for its business of selling and repairing OKIDATA products and parts. SAP AG has been a Complainant in some earlier cases charging abusive registration. It is a well known and widely-used name of the Complainant’s software products. Earlier this year SAP AG complained about <unisap.com> registered by UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (WIPO May 29, 2009) (See Note for May 29, 2009). More recently it commenced a proceeding against SAP User List, D2009-1285 (WIPO November 8, 2009) in an attempt to capture <sapuserlist.com>).

The Respondent in SAP User List is neither a reseller in the traditional sense nor a distributor. It is “the supplier of lists of users of ‘SAP’ software to other companies seeking to target the users as potential clients.” While this service is related to the Complainant’s software products it is targeting very different markets. “The Complainant argues that ‘[e]ven if [the] Respondent needed to refer to the Company SAP, the collateral trademark use necessary does not confer the right to use SAP’s trademark as a domain name’.” The argument fails for the same reason that Oki Data failed. “A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements.”

The Rules of the Policy limit each party to one pleading (Paragraphs 3 [complaint] and 5 [answer]), which can be supplemented in either of two ways, by the parties submitting supplementary material requested by the Panel under Paragraph 12 of the Rules or with the Panel’s permission upon a party’s request. Paragraph 12 is generally invoked when the Panel seeks additional proof to corroborate a party’s contentions. There is no explicit provision in the Rules for a reply and sur-reply. However, Nat. Arb. Forum’s Supplementary Rules authorize the parties to supplement their pleadings as of right under Rule 7. There is no comparable provision in the WIPO Supplementary Rules, although the WIPO Overview at paragraph 4.2 acknowledges as a Majority View that at its most liberal panelists exercise discretion to accept supplemental material. Nevertheless, there is a Minority View that takes the position that “[u]nless the panel specifically solicits a supplemental filing, it will not consider a supplemental filing in its decision.”

Supplemental filings elicit a palette of views in Denver Newspaper Agency v. Jobing.com LLC., FA0908001282148 (Nat. Arb. Forum October 16, 2009). The majority accepted the Respondent’s late filed answer and gerrymandered the Complainant’s supplementary submission. “Pursuant to the Forum’s interpretation of the Rules [of the UDRP] … the Forum treated the Response as being incomplete because the hard copy was not received on the due date. The Forum therefore notified the Respondent that the Response was deficient under Rule 5.” However, the majority concluded that the “deficiency was minor.”

The more lengthy of the two dissents points out that the “Forum’s interpretation of the Rules to require actual receipt by the Forum of the hard copy on the due date is inconsistent with the UDRP Rules themselves.” The UDRP Rules “require the Respondent to have taken the act of “submitting” the Response within 20 days; it does not require the Respondent to cause the hard copy to be “received” at the ADR provider’s offices within 20 days,” citing his own earlier decision in Free Bridge Auto Sales Inc. v. Larry Ross, FA0903001250951 (Nat. Arb. Forum April 28, 2009) (Ftn 2). The distinction of “served” and “receipt” is well recognized in the litigation fraternity. Depositing papers in the mail or overnight courier satisfies the “service” requirement for post-process submissions. If the electronic version is timely received by the provider it should not be labeled deficient. The Forum, however, extracts a “penalty” for deficient response. The dissent also “object[s] to the Forum’s requirement that the Respondent pay a fee of $400 in conjunction with its re-filing of the Response as a Supplemental Submission under Supplemental Rule 7” because it is “inconsistent with the Rules and the general policies underlying the treatment of respondents in the UDRP.”

The gerrymandering occurs when the supplemental material is not supplemental but either repetitious or should have been argued in the complaint. Kent House Ltd. v. RN, WebReg, FA0403000244527 (Nat. Arb. Forum May 4, 2004) (Dissent: “supplemental submissions should only be accepted if they are rebutting defenses that could not reasonably have been anticipated, or to bring new facts or precedent to the Panel’s attention.”) The majority in Denver Newspaper took as much of the Supplemental Submission as it needed and disregarded the part that “did not address any new legal principles or facts that could not have been anticipated in the Complaint.” The less lengthy dissent would have accepted the entirety of the Complainant’s Additional Submission “because it was submitted in accordance with the Forum’s published Supplemental Rules, which govern this proceeding.”

Proving that a domain name is confusingly similar to complainant’s trademark is but one-third of the journey; the easiest part since on that issue the complainant controls the proof. However, if the disputed domain name was registered prior to the complainant acquiring its trademark it can prevail only on proof that a subsequent registrant lacks rights or legitimate interests and is using the domain name in bad faith, from which registration in bad faith can be inferred. Against the original registrant, even lack of rights or legitimate interests is insufficient to prove bad faith. These are the basic rules. A trademark holder of a subsequently acquired right is entitled to no more than trademark law allows.

The Complainant in MediaWhiz Holdings, Inc. v. Domain Admin, PrivacyProtect.org / Domain Manager, MediaWiz Services Pvt Ltd., D2009-1227 (WIPO October 28, 2009) acquired its trademark in 2006 and alleges first use in commerce in 2002. It claims to have registered its domain name <mediawhiz.com> in 1999 prior to the registration of the disputed domain name (2001), but of course that fact is irrelevant since in 1999 the Complainant had no trademark right under any theory.

Proof that the respondent has a legitimate interest in the domain name whether as subsequent purchaser or as original registrant is conclusive against the complainant. This was noted recently in Berenson & Company, Inc. v. Berenson Corp. c/o Babij, Terry, FA0909001283183 (Nat. Arb. Forum October 23, 2009) in which the Respondent was a subsequent owner of the disputed domain name and is further illustrated in MediaWhiz in which there were no intermediate owners.

Clear though the law is it seems as though there are always parties (and lawyers) eager for the fray. In MediaWhiz, the Complainant chose to try its luck. “Faced with evidence immediately apparent on the home page of the Website that the Respondent, MediaWiz Services Private Limited, had been established under the name ‘MediaWiz’ since 1995, and knowing that its rights in respect of the name ‘Media Whiz’ went back to, at the earliest, 2002, the Complainant nonetheless chose to commence this proceeding in circumstances where its odds of success, should the Respondent choose to contest the proceeding, were minuscule.” The Panel found

The Complainant’s allegations of non-use by the Respondent of the disputed domain name are, on the facts, not sustainable.

Insofar as the Respondent may have commenced (or, indeed, re-commenced) use of its name in the U.S. market, the Complainant is, of course, free to assert its rights in the Trade Mark in the U.S. courts against the Respondent.

On the evidence available to the Panel, however, the Panel has no hesitation in finding that the Respondent, which has been commonly known as “MediaWiz Services Private Limited” since 1995 in at least the Indian marketplace, has rights or legitimate interests in respect of the disputed domain name.

Representation by counsel is no panacea; the consequence, a finding of reverse domain name hijacking.

The phrase “retroactive bad faith” comes from two recent cases, same panelist, City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D-2009-0643 (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). “Retroactive” refers to bad faith registration. The panelist proposes a new way of construing the Policy to establish that the respondent satisfies its contractual responsibilities.

WIPO Final Report contemplated a light investigatory duty for domain name acquisition insofar as researching trademark databases but this view came to be increasingly questioned as outdated. Observing the changing nature of the domain name business panelists began thinking that high volume registrants belonged in a different category and should be held to an enhanced investigatory standard. The new factor proposed in Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006) focused on “acquisition of large swaths of domain names through the use of automated programs.” That case and others that follow its reasoning ushered in a profound shift in thinking about high volume registrants who pay “no apparent attention … in any particular case to whether the domain name being registered may be identical or confusingly similar to another’s trademark.” According to the Mobile Panel “even a cursory search on search engines like Yahoo! and Google would have shown that MOBILCOM is a trademark.”

There was, however, immediate push back to the Mobile approach. The Panel in Promatic International Limited v. Name Administration Inc., D2006-0673 (WIPO July 19, 2006) held that “[w]hile the Domain Name was acquired by the Respondent from a batch of lapsed domain names by way of an automated process, this Panel is uncomfortable with the concept of constructive bad faith.” The Panel in Aubert International SAS and Aubert France SA v. Tucows.com Co., D2008-1986 (WIPO March 17, 2009) noted that the Mobile approach “is not universally accepted.” The discomfort with the approach is that it establishes a dual standard, a heavier duty on high volume registrants, lighter on registrants of one or two domain names and the question is, Why should this be?

The challenge to the dual standard has been further advanced in the City Views and Octogen decisions, in a surprising way. The panelist’s view is that it “seems at a minimum inconsistent to require a registrant registering multiple domain names to perform some kind of trademark search in order to establish good faith registration, while a registrant registering only one or two domain names is not required to do any search whatsoever.” His epiphany has a curious backstory. It is not merely discomfort with the Mobile approach, but a conclusion that panelists have misconstrued the Policy; have wandered from the true path.

The City Views and Octogen approach is based on a close reading of the representations and warranties provision of the registration agreement and the decision in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). In the Panel’s view the representations and warranty 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.

This assumes that the representations and warranties provision must be read into the Policy, that it is an essential element, indeed “integral” in determining bad faith. “This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another’s rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark.” Moreover, the registrant’s representation and warranty “is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future.” That means that every registrant, be it a high volume acquirer or of one or two domain names only, is responsible to determine whether it is infringing another’s rights either prior to registration or at renewal of registration. “This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future.”

Telstra is invoked for its holding that bad faith can be posited on passive use of the disputed domain name. “Just as in the Telstra analysis of passive use, whether the future use of a domain name constitutes retroactive bad faith registration will necessarily depend on an analysis of the facts and circumstances of any given case.” In Octogen, the Panel found “retroactive bad faith”; it did not in City Views. However, there is an explanation for the bad faith in Octogen, namely that the Respondent could be said to have registered the domain name for its employer; that it had no right to claim a legitimate interest at the time it registered the domain name. Both cases are cited as controlling authority in Denver Newspaper Agency v. Jobing.com LLC., FA0908001282148 (Nat. Arb. Forum October 16, 2009).

Parody targeted against a particular person or organization as a branch of political speech deserves the highest level of legal protection, Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 108 S.Ct. 876 (1988), however offensive the speech may be, which in Hustler found the Reverend in an outhouse accompanied by bitingly satirical words. “[I]n the world of debate about public affairs, many things done with motives that are less than admirable are protected by the First Amendment.” The question with domain names is whether an embedded parodic signal in the name itself (or, no signal at all) is sufficient to support the privileged speech defense under paragraph 4(c)(iii) of the Policy. The problem is more than academic because in the free speech area, the majority view reported in the WIPO Overview is not sympathetic to respondents who comment or criticize (commercial ventures) through domain names identical or confusingly similar to the complainant’s trademark. The two views set forth in paragraph 2.4 of the Overview are

View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.

View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.

The Complainant in Mercury Radio Arts, Inc. and Glenn Beck v. Isaac Eiland-Hall, D2009-1182 (WIPO October 29, 2009) argued that the Panel should confine itself to the domain name “standing alone.” That is, the Respondent had no right or legitimate interest in <glennbeckrapedandmurderedayounggirlin1990.com>, period. The parodist’s point of view is that the domain name with its built in parodic signal is one half of its agenda, of which the other half is the content of the website.

View 1 is ill equipped to deal with the problem, although it does recognize that an additional word, “sucks” for example may, depending on the content of the website, qualify for the fair use defense. The Panel cited TPI Holdings, Inc. v. AFX Communications a/k/a AFX, D2000-1472 (WIPO) for this proposition, involving the domain name <autotradersucks.com>. The question of confusing similarity is granted but the issues of right or legitimate interest and bad faith are deferred until the website itself is reviewed to see whether the respondent is really doing what it claims its purpose to be, that is “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” [paragraph 4(c)(iii) of the Policy].

But political speech is elevated to an even higher level of protection (as least in the United States) . It would appear that the application of View 1 is really meant for commercial speech. The Panel in Sutherland Institute v. Continuative LLC, D2009-0693 (WIPO July 10, 2009), for example, had no problem with accepting the Respondent’s Constitutional right even though it projected its parody through a domain name identical to the Complainant’s trademark. Unlike Mercury Radio, the domain name in Sutherland carries no parodic signal; the unwitting Internet user looking for the real Sutherland Institute is entirely taken in. Click on the link and the parody jumps off the screen. There is initial interest confusion, which is the rationale for insisting on View 1, but in the Panel’s view the offense is not actionable. If there is a tort, it is not in the Panel’s authority to resolve it. Go to Court.

While it is true 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), it is equally true that merely alleging a common law trademark does not make it so. The burden increases inversely to the mark’s classification. The weaker the mark the greater the burden of proof. A sufficient body of precedent has built up to form the consensus noted in the WIPO Overview: “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition” (Paragraph 1.7).

In NJRentAScooter, the Complainant alleged a trademark in its business name. Seemingly aware that it was not on firm ground, it argued that “[n]umerous other marks that involve more generic terms are regularly found to be distinct and protected by the NAF, WIPO, the USPTO and other authorities, including many involved in recent domain names disputes before the NAF such as UKHouseClearances, LumberLiquidators, DollarCarRental, NationalCarRental, Beirut, and Fbomb.” The Panel correctly “points out that neither the USPTO, nor many other national trademark registration authorities, will accept purely descriptive trademarks for registration without substantial pre-filing evidence of use of the trademark.”

The last named example of a generic epithet that passed muster as a common law trademark usefully illustrates what a complainant must do. The Complainant in FBomb Clothing c/o Joel Jordan v. Domainly.com, FA0902001245522 (Nat. Arb. Forum March 16, 2009) had inadvertently allowed its domain name to expire and was suing to recapture it. It offered substantial proof of its marketplace activities over a period of time, including “screenshots of its website resolving from the <fbomb.com> domain name as they appeared in 2002 and 2008. (These screenshots were provided by using the Way Back Machine from InternetArchive.org.).”

In contrast, the Complainant in NJRentAScooter offered an unsworn statement in support of the complaint, a screenshot, which “is not of the website homepage but … a drilldown page for ‘NJRENTASCOOTER’. The page clearly shows the trademark and some of the services offered. The Panel notes however that the page also contains a copyright notice, as follows: © COPYRIGHT 2009 NJRentAScooter, LLC.” Other than that, there “is no other evidence of a company by the name of NJRentAScooter, LLC” and apparently no evidence of any substantial interaction with the public for its alleged trademark to have acquired “secondary meaning.”

It is not necessary for a string of syllables to make sense to obtain a trademark registration. Indeed, the least sense syllables make the more obvious its appropriation. In this respect a string of nonsense is no different from any other arbitrary sign, which under trademark law is given the highest protection. Invented nonsense does not have to make logical sense to convey a humorous meaning even if it remains unintelligible to outsiders. Pet Holdings Inc. is the registered holder of the Jabberwockyesque trademark I CAN HAS CHEEZBURGER. The Respondent in Pet Holdings Inc. v. Vladimir Prudnikov, D2009-1003 (WIPO September 21, 2009) repeats the dominant syllables of the Complainant’s trademark in registering <icanhashotdog.com>, except he exchanges “hotdog” for “cheezburger.” This is comparable to adding suffixes to brand names, of which there are numerous examples in the repertory. The confusion in similarity and ultimately to the consuming public is localized on the syllables that make the trademark distinctive.

The Respondent in Pet Holdings did not appear in the proceedings, denying readers the pleasure of his explanation. The record, however, indicates that the Respondent registered the disputed domain name prior to the Complainant receiving its certificate of trademark registration, a factor in the Respondent’s favor, but after the trademark’s first use in commerce, a factor undermining the Respondent’s good faith. In the absence of evidence to the contrary, where distinctive trademarks are the object of copying, the Respondent can have no right or legitimate interest in the disputed domain name. However, in order to prevail where there is a timing issue the Complainant must demonstrate that its trademark has acquired secondary meaning. The Panel explained that the “the evidential burden on the Complainant to provide evidence of common law rights is relatively light.” The reason for this is that the Complainant’s

mark appears to the Panel to be an invented and arbitrary phrase, and therefore inherently distinctive in a trademark sense for the purpose of the Policy…. [Moreover, ] [t]here is nothing in the Complainant’s mark which seems to this Panel to be descriptive or suggestive of the services which the Complainant provides. The phrase “I can has cheezburger?” appears to have no common meaning, or to be derived in whole or part from any phrase with a common meaning, including one associated with the Complainant’s services.

The conclusion that the disputed domain name is confusingly similar to the Complainant’s trademark means that for as long as the Complainant trades it will have a monopoly on the nonsense syllables “I Can Has.” As a general rule, where no suffix can create a distinctive new name that is not suggestive of the complainant’s trademark the complainant must prevail. In this respect, “I Can Has” is lifted into the class of famous brands. It is inimitable; flattering as imitation is said to be, but Respondent’s “hot dog” is infringing nevertheless.

The two letter combination “hz” is not by itself confusingly similar to “Hertz” (the automobile rental company) despite the aural similarity, but can become so when coupled with “car,” as in <hzcar.com>, Hertz System, Inc. v. Kwan-ming Lee, D2009-1165 (WIPO October 14, 2009). Asserting purity of intention for future use as proof of right or legitimate interest is insufficient to establish a paragraph 4(c)(i) defense. “A virtually unbroken line of Policy precedent holds that more than merely an intent to use the disputed domain name for a proper purpose [is necessary to] meet this standard.” This leaves open the question of bad faith. A respondent can have no right or legitimate interest in the disputed domain name, yet win on default of the complainant proving bad faith in the conjunctive.

So, the question in Hertz is, Notwithstanding the confusing similarity and the lack of rights or legitimate interests could the Registrant have been pure of heart in registering the disputed domain name? It takes some legerdemain but the Panel concluded that on balance he could not tell about the purity of heart, which is fatal for the Complainant who has to prove impurity. The path to this extraordinary decision is, I believe, idiosyncratic, but interesting. The Panel implies that if the Respondent had been a domainer the result would have been different. “Complainant has not shown that Respondent is a domainer, to whom certain presumptions and obligations might apply, among them knowledge of what a registrar or internet service provider might be permitted to do with a dormant domain name.” While there is precedent for a different standard for domainers the facts from which inferences are drawn for non-domainers are considered from a different perspective. The combination of “hz” and “car” in a case involving Hertz car rental service is not an inconsiderable fact. It carries a strong inference that the Respondent was not unaware of his choice’s association with the Complainant.

Paragraph 4(a)(iii) of the Policy requires the complainant to show bad faith in the conjunctive. However, paragraph 4(b) 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” (emphasis added). Paragraph 4(b)(i), (ii) and (iii) refer only to registration, while 4(b)(iv) refers only to use. Strictly construed, if any of these instances of violation are found, whether registration or use, they satisfy paragraph 4(a)(iii) of the Policy. It is this that the Panel dubs the “unified concept”and traces back to Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000).

Applying the “unified concept”, the Hertz Respondent is guilty of abusive registration for violating paragraph 4(b)(iv) of the Policy, but “[t]his Panel is not presently prepared to read the few unified concept approach cases to say that any use in bad faith, even occasional conduct that fits squarely within one of the examples of bad faith in paragraph 4(b) of the Policy, as automatically establishing bad faith for purposes of paragraph 4(a)(iii)” (emphasis in the original). This view is not inconsistent with past decisions that hold, for example, that good faith registration followed by bad faith use does not satisfy the complainant’s burden of proof unless, of course, there is proof sufficient to infer bad faith registration from such use. The temporal distinction, the respondent’s intent at the date of registration, if mala fide, must be proved.

The difference with Hertz is that the Respondent’s addition of “car” to “hz” is a clue to his motivation, the Panel’s rejection of the implications notwithstanding. Instead, the Panel focused on the acronym “hz” (the common abbreviation of the radio frequency unit for Hertz). “The touchstone of bad faith … turns on whether Respondent chose the disputed domain name for its value as an acronym or as an aural imitation of [Complainant’s] mark.” This analysis, however, is overly contrived. It would be appropriate if the domain name were <hzswitch.com>, but is questionable for <hzcar.com>. This is a case in which the Respondent who lives in the United States and would be dumb and blind not to have heard of Hertz car rental business benefits from the Panel’s doubt.

Timing and Circumstances of Acquisition

Having an incontestable trademark composed of generic or descriptive elements opens the door to a UDRP challenge, but length of use in commerce is no guarantee that the holder is entitled to the corresponding domain name. Weak trademarks lack the strength of those composed of suggestive or arbitrary signifiers. If words and phrases in everyday use granted trademark status are to be forbidden there must be proof that the registrant chose its domain name intentionally to take advantage of the holder’s trademark, but not otherwise. Take, for example, “Home Away from Home.” In one form or another it appears in 25 live records; and twice that if dead ones are included. The phrase is unremarkable except for the fact that it is so common.

The Complainant in HomeAway.com, Inc. v. Name Administration Inc. (BVI), FA0909001283498 (Nat. Arb. Forum October 28, 2009) acquired its interest in HOME AWAY FROM HOME from the original trademark registrant in 2007 who registered it in 1981. The trademark became incontestable in 1987. However, the assignor who originally held <homeawayfromhome.com> (acquired in 1999) allowed it to expire in 2005, at which time the Respondent purchased it at public auction and put it to work as a pay-per-click portal advertising what is suggested by the name. Acquiring an expired domain name corresponding to an existing trademark does not necessarily confer rights or legitimate interests in it. The Complainant’s task is to prove that its trademark has in fact the market status it claims. The Respondent’s task is to demonstrate that it commenced using the domain name for a bona fide service “before notice” from the Complainant.

Although not dispositive, the Respondent offered evidence that the Complainant has blocked access to its own site through robots.txt. It is particularly damaging to a complainant’s case that its own use of the trademark has been less than robust, raising doubts as to the public identifying it as the source of goods or services . Damaging further is evidence that terms corresponding to the trademark are used by a variety of other businesses. A plethora of dates, the incontestability of a trademark composed of generic elements, even the fact that the trademark was acquired 18 years prior to the respondent’s acquisition of the domain name is of no account absent proof that the respondent registered the domain name in bad faith.

In HomeAway, the Complainant offered no proof that the domain name was purchased with the trademark holder in mind. Decisions favoring complainants who have lost their domain names and recaptured them involve trademarks that have a market following. Red Nacional De Los Ferrocarriles Espanoles v Ox90, D2001-0981 (WIPO November 21, 2001) (Respondent, by his own showing a knowledgeable Internet analyst, registered a recently lapsed, commonly searched domain name. 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, constitutes registration of that domain name in bad faith.” )

Receiving notice after a website has become operational supports a defense under paragraph 4(c)(i) of the Policy. There is no violation if the respondent is either presently using or making “demonstrable preparations to use” the domain name, as long as it is “in connection with a bona fide offering of goods or services.” The amount of proof (from the respondent’s perspective) is necessarily lesser for generic and descriptive names identical or confusingly similar to complainant’s trademark and greater where the comparison is with well-known trademarks. The reverse is true for complainants; the respondent’s “lesser” is their “greater.”

The Complainant in Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) is the current holder of trademarks for AUTOCAR, first registered in 1905, but which the Complainant only acquired in 2001. The Respondent registered <autocar.com> and <autocar.org> in 1998 and 1999. “The AUTOCAR trademark had multiple owners prior to Complainant.” According to the Complainant it was “ ‘inconceivable’ that Respondent ‘innocently registered’ the disputed domain names given the AUTOCAR mark’s ‘worldwide fame’.” However, the term “autocar” (a quaint ancester of “automobile” and perhaps not as common as it once was although clearly understood) has democratized since its first use in commerce; it is no longer a newly formed noun nor is the signified an object of curiosity as once it was. Nevertheless, the question is, Were the registrations a deliberate infringement of the Complainant’s trademark rights? The Respondent denies any prior knowledge of the trademark.

Denial of knowledge cannot be overcome by an allegation that a trademark enjoys “Worldwide fame.” The status has to be earned. However, “Complainant does little to support the alleged ‘world-wide’ fame of its mark other than point out that the mark has been registered for over one hundred years.” This is not a pay-per-click case. There is nothing on the website to suggest competition with the Complainant. “The contested issue is whether Respondent has established that it comes within the safe harbor provided by paragraph 4(c)(i) of the UDRP: that it made demonstrable preparations, before notice of the dispute, to use the disputed domain names in connection with a bona fide offering of goods or services.”

Keeping in mind the common meaning of the word (that is, common even though the word itself may no long have the currency it once had), it is not implausible that a company in the automobile buiness would have a legitimate interest in the disputed domain names. The general rule (elastic depending on the term in issue) is that “[p]roof of demonstrable preparations to use a disputed domain name does not require a showing of ‘a fully operational business’,” citing DigiPoll Ltd. v. Raj Kumar, D2004-0939 (WIPO). “Rather, it is sufficient for Respondent to show that, before notice of the dispute, preparations to use a disputed domain name were made, ‘even if…those preparations were “perfunctory”, meaning superficial, or mechanical’.” Satisfactory proof includes “a business plan or partners, the proposed technology or how it would function, how the business would be financed, [or] a timetable,” Id.

In counterpoise to the complainant’s burden, the Respondent too must make an affirmative showing. This leaves an open issue as to whether the Respondent’s business is a bona fide offering of services. Its proof – shown with sworn statements and contemporaneous documents – demonstrated that it was. “Respondent has shown considerably more than ‘superficial or mechanical’ preparations to use the disputed domain names.”

The three issues discussed below have in common factual circumstances that preclude resolution under the Policy. Either the complainant has no registered trademark and cannot prove an unregistered one; or its grievance is complicated by a contract dispute relating to the future ownership of the disputed domain name; or it offers its trade name (composed of a geographic indicator) as a jurisdictional basis for the proceeding.

The cases illustrate complainants clutching for straws. In all three cases Respondents interposed responses and pointed out the deficiences of the complaints. All three complainants failed the initial, jurisdictional test [paragraph 4(a)(i) of the Policy] and the complaints were dismissed.

1. Application for Trademark Insufficient to Support a Right

Certifying in an application that the trademark is “in use” is not by itself proof of an unregistered right. The trademark office does not investigate the truth of a claimed first use in commerce, but when the claim is put in issue, as it frequently is in UDRP cases, the Panel demands evidence that the alleged unregistered right predated the registration of the domain name. The Complainant in Fahim Saleh v. Trey Glauser, FA0909001283115 (Nat. Arb. Forum October 29, 2009) applied for PRANK DIALER a few months prior to commencing the proceedings to capture the Respondent’s <prankdialer.com>, <prankdials.com>, and <prankdial.org>.

According to the Respondent, when “<prankdialer.com> was launched on April 1, 2008, the Complainant’s site PrankDial.com was getting minimal traffic, believed to be non-functioning and did not compete in any way with PrankDialer.com.” While this is clear evidence that the Respondent was aware of a domain name similar to its own it denied any knowledge of the Complainant. But, confusing similarity between two domain names is not the controlling issue. A complainant cannot bootstrap its domain name by subsequently registering it as a trademark. The prudent complainant will register the corresponding domain name at the same time as its trademark application. Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009) is an instance of a complainant unsuccessfully attempting to undo its imprudency in not purchasing the domain name.

2. Business Disputes Outside Scope of the Policy

Not all contract claims are excluded from adjudication under the UDRP. The forum is appropriate for example where respondents are contractually bound to transfer domain names they have registered in their own names on their principal’s or employer’s instructions or are obliged to do so by written agreement. However, the UDRP is not available for contract disputes in which the central claim is ownership of domain names rather than cybersquatting.

In William J. Hopke v. Ellie Chambers, FA0909001282934 (Nat. Arb. Forum October 23, 2009)
(<vuelive.com>) the Panel found “that both parties have presented evidence of rights in the disputed domain name and the central issue in this case centers upon who should be the rightful owner of the disputed domain name.”

Civil or business disputes involving ownership of a domain name as distinct from priority of right to it belong in a court of law.

3. Geographic Indicators Used as a Trade Name Unprotected Under the Policy

Even a holder of a well known trademark composed of a geographic indicator has no superior claim to a domain name used in its generic sense even if its right predates the registration of the domain name. An earlier case in point was 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) and the site of an 18th Century basilica and royal tombs.”). In Warendorfer Küchen GmbH v. MDNH Inc., D2009-1067 (WIPO October 16, 2009) the Complainant claims “Warendorfer” as an unregistered service mark, although it is a geographic indicator for a municipality in Germany. The Respondent’s website contains information about the Warendorf, the place.

The Panel list six reasons for dismissing the complaint:

1) Warendorf is a geographical name, used by numerous businesses; 2) “Warendorfer Küchen” is a descriptive term, meaning “kitchens of Warendorf”, and so has little inherent distinctiveness; 3) the Complainant’s tradename consists of two descriptive words in German and does not confer any rights to the two individual words or any derivative of the individual words; 4) the Complainant uses “Warendorfer Küchen” as a business name rather than in the active marketing of its products; 5) there is no evidence of actual confusion by Internet users between the Respondent’s website and the Complainant’s business (such evidence is not routinely required in a UDRP proceeding, but it is one way that a complainant might reinforce the conclusion that a domain name was, on its face, confusingly similar to a mark); and 6) there is no evidence that the sponsored links on the Respondent’s website have ever generated any links to the Complainant or its products.

Hijackers have something in common with pickpockets Their modus operandi is stealth. Their victims no more realize their pockets have been picked than their domain names transferred to a new Registrar and Registrant. In these cases the surreptitious transfer of a domain name is equivalent to a registration. Cybersquatting by theft. AHI Invest GmbH v. Site Service International, Richard Sorensen, D2009-0561 (WIPO June 15, 2009). Unless the victim checks his vital statistics from time to time he would be unconscious of having lost control of his property. A close variant is phishing, which is an ironic parody of fishing used in the sense of reeling in unsuspecting innocents. The actions differ in that phishing targets complainants’ customers rather than complainants themselves. Phishing is a different but even more powerful economic model of chicanery than hijacking.

Phishers’ stock in trade is to create look-a-like web sites designed to deceive Internet users into believing the reality of appearance and thus disclosing credit card information, passwords, social security numbers and other personal information to steal identities, run up fraudulent bills and create databases for spam e-mail. The Royal Bank of Scotland Group plc v. Teddy Jackson, FA0705000992134 (Nat. Arb. Forum July 2, 2007) (fraudulent lottery scheme ). Evident tortious conduct and criminal culpability are presumptively bad faith; by consensus two of the three circumstances under the Policy in which registration and use merge.

It sometimes happens that there is a third victim, the person reported by the Registrar as the registrant of the disputed domain name. The Royal Bank of Scotland Group plc v. [Redacted], FA0908001282153 (Nat. Arb. Forum October 28, 2009) is illustrative. Paragraph 4(j) of the Policy reads, “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” Where the respondent is the victim of identity theft, it is appropriate to withhold respondent’s name from publication or redact it to protect his or her identity. National Westminster Bank plc v. [Redacted], FA0606000724496 (Nat. Arb . Forum July 20, 2006), citing Wells Fargo & Co. v. John Doe as Holder of Domain Name, FA 362108 (Nat. Arb. Forum December 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name , FA 453727 (Nat. Arb. Forum May 19, 2005):

[The] panels omitted the respondent’s personal information from the decision in an attempt to protect the respondents claiming to be victims of identity theft from any further injury.

National Westminster Bank plc v. [REDACTED], FA0807001215821 (Nat. Arb. Forum August 21, 2008) (“Apparently, Respondent is a victim of identity theft and the Panel elects to redact Respondent’s personal information from the decision to prevent the further victimization of Respondent.”). The Panel in the latest case involving The Royal Bank of Scotland followed this precedent in redacting the respondent’s name. The unknown phisher registered <rbs-partners.com> for “a fraudulent scheme that seeks to obtain personal financial information from Internet users in the United States.” The phisher never makes an appearance as a respondent; the identified registrant is but a convenient victim.

Is it possible that the inexhaustible wealth of the English language has limitations when it comes to selecting suitable trademarks that have not already been taken by domain name registrants? Or, is it a failure of imagination? To hear it from complainants with later accruing rights there is something unfair in respondents owning (or having pounced first on) domain names identical or confusingly similar to their newly minted trademarks. There is a palpable sense of grievance in the variety of arguments put forward for stripping domain names from the respondent. Here is a short list of word combinations that stayed with respondents: “everyday food” [Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009)], “success bank” [Success Bank v. ZootGraphics c/o Ira Zoot, FA0904001259918 (Nat. Arb. Forum June 29, 2009)], “market watch” [Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, D2009-1033 (WIPO October 18, 2009)], “loyalty trac” [MediaTrac, LLC v. eNet Buzz Inc., FA0908001281461 (Nat. Arb. Forum October 16, 2009)].

Domain names soak up word combinations that otherwise would make attractive trademarks. This week’s auction of domain names for example included “eScripts.com”, “HonorRole.com” and “Raspberry.com” There is an existing ESCRIPT trademark and multiple trademarks in which “Raspberry” is the dominant term. Perhaps the successful bidders were the trademark holders or those who foresee a brand in embryo. On <honorrole.com> perhaps the future holds the prospect of a UDRP proceeding. Tuesday’s Note on lapsed domain names cited an auction case that did not go well for the successful bidder, Intagent LLC v. Dominor LLC, D2008-1878 (WIPO January 29, 2009) (<intagent.net>). A second or later generation registrant who is not a trademark holder must populate its website carefully.

The latest griever is Bwired Group Pty Ltd v. Eric Adem, bWiredDomains, D2009-1102 (WIPO October 16, 2009) arguing over <bwired.com>. The Respondent is wrong in his argument that a trademark in Australia only confers rights in that jurisdiction, but is correct in that a trademark holder must demonstrate that its right accrued prior to the registration of the domain name. In Bwired there is “no evidence on the file contradicting the Respondent’s statement that he was the original registrant.” This is important because a second or later generation registrant is more vulnerable. Proof that the Respondent’s use of the domain name “does not appear to have exploited the Complainant’s mark or goodwill in any way” is corroborated by a review of the website on the Wayback Machine.

The Complainant in Bwired crossed the magic line that separates inspired from abusive advocacy. The Respondent put the Complainant on notice that its registration of the domain name antedated the trademark right. “Despite this, the Complainant founded its complaint on the allegation that the Respondent registered the Domain Name for the purpose of sale, rental or other transfer to the Complainant or a competitor to the Complainant at a profit.” Parenthetically, the Complainant was represented by counsel. In Dow Jones, the Panel offered a cautionary note that in deciding the issue of good faith registration “does not provide instruction regarding whether Respondent may now or in the future infringe on a service mark owned by Complainant. These are distinct legal issues” (emphasis added). Under the Policy, a change to bad faith use does not impair the first generation registrant’s legitimate interest, but may very well violate the trademark holder’s rights under the ACPA or, perhaps, a comparable statute in a different jurisdiction.

A respondent violates the Policy when “circumstances indicat[e] that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name,” Paragraph 4(b)(i) of the Policy. There are two points of emphasis, “primarily for the purpose” and “valuable consideration in excess of,” etc. The first is illustrated by MediaTrac, LLC v. eNet Buzz Inc., FA0908001281461 (Nat. Arb. Forum October 16, 2009) (<loyaltytrac.com>); the second by Sunset Bronson Entertainment Properties LLC v. Jon Winston Hauer & J Winston & Company, FA0906001268209 (Nat. Arb. Forum July 31, 2009) (Note for August 11, 2009).

Selling a domain name is not prohibited by the Policy, Teradyne, Inc.Teradyne, Inc.[sic] v. 4Tel Technology, D2000-0026 (WIPO May 9, 2000) . “Were that the case, trade in domain names would of itself be objectionable, which it is not,” The Monticello Group, Ltd. v. Teletravel, Inc., D2002-1157 (WIPO April 16, 2003), and “responding to an unsolicited offer to sell a domain name does not exhibit bad faith,” Mirama Enterprises Inc, d/b/a Aroma Housewares Company v. NJDomains, Abuse Contact: abuse@mail.com c/o Gerald Gorman, FA0510000588486 (Nat. Arb. Forum January 16, 2006).

If a respondent has a right or legitimate interest in the domain name it cannot be taken away and given to the complainant. The right in MediaTrac is based on the Respondent “marketing and selling the ‘Loyalty Trac’ computer program since at least as early as 2001.” The Complainant’s trademark rights date back to October 2005. To prevail it would then have to show an earlier date of use in commerce, but it “failed to submit any additional evidence that it has rights in the mark predating Respondent’s registration of the disputed domain name.” Timing is undoubtedly the most significant factor in these cases. The Complainant also argued superiority of rights based on Respondent’s renewal of registration with knowledge of the Complainant’s trademark. “They have continued to renew the domain in order to maintain control of it, yet serve no content on the site. This all points to the fact that Respondent maintained control to disrupt the business of Complainant and profit from Complainant’s desire to use its federally trademarked name.” However, renewal as distinguished from registration is not an apposite fact. The original registrant does not lose its priority. “[M]ere renewal does not amount to registration,” BMEzine.com, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, D2008-0882 (WIPO August 21, 2008).” This consensus view is set forth in WIPO Overview paragraph 3.7.

Domain names are not literally owned, but possessed for a length of time, not unlike a valuable leasehold with option for which continuance of possession requires timely renewal. They can be irrecoverably lost if allowed to lapse for nonpayment of the annual or multi-year fee. This is particularly true for domain names that track trademarks composed of generic words or are neither famous nor well known. 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). For a domain name identical or confusingly similar to a trademark the use to which it is put may well be a controlling factor in determining good or bad faith. Content, for example, consistent with the generic or descriptive terms of the domain name will more likely be found in good faith; less likely if the website displays advertising competitive with the complainant’s goods or services.

However, recapture of a domain name after inadvertent loss is uncertain. A complainant without trademark rights has no standing – See Note for May 15, 2009, Connie Campbell Bratcher v. Inspirational Poetry Quebec, FA0902001249815 (Nat. Arb. Forum May 8, 2009) (<inspirationalpoetry.com> and for prior owners whose trademarks make few ripples in the marketplace or are composed of generic terms, GLB Serivicos Interativos S.A. v. Ultimate Search Inc., D2002-0189 (WIPO May 29, 2002) (<paparazzo.com>) they may have standing but no case. There must be some proof that the respondent has acquired the domain name with prior knowledge of an underlying trademark or that the domain name has not been intentionally abandoned, Midland Heart Limited v. Uton Black, D2009-0076 (WIPO March 30, 2009) (“Although the Complainant had previously registered the Domain Name and <midlandheart.co.uk>, it had allowed these registrations to lapse, and there is no evidence that the Respondent knew that the Complainant intended to re-register them.”)

Berenson presents a situation in which the Respondent has conducted a business under the same name for a period antedating the commencement of the Complainant’s business. However, this is not a race to the Registrar case. Complainant originally owned the disputed domain name and lost it “under circumstances unknown to the Panel.” This elicited the dictum that “The Panel wishes to emphasize that UDRP proceedings are not meant to regain ownership of a domain name that was lost.” The statement may be accurate in a literal sense, but is misleading nontheless. UDRP proceedings are intended to weed out abusive registrations. In fact, the Provider databases are full of cases in which a lost domain name has been regained, but not where the respondent has a right or legitimate interest in it.

The question is, To what use is the domain name being put? If the purpose is to take advantage of the complainant’s trademark it will be forfeited. FBomb Clothing c/o Joel Jordan v. Domainly.com, FA0902001245522 (Nat. Arb. Forum March 16, 2009), regardless of how it was acquired, Intagent LLC v. Dominor LLC, D2008-1878 (WIPO January 29, 2009) (<intagent.net>) involving an expired domain name sold at auction. The Respondent was dismayed by the UDRP complaint even though it purchased it “to take advantage of the Google Page Rank.” 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.” Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum February 10, 2003).

Social networking is apparently taking on a second life, no put intended. Social networks are obviously fertile resources for spies of all sorts. In fact, Noah Shachtman reports, in an article for Wired Danger Room:

America’s spy agencies want to read your blog posts, keep track of your Twitter updates — even check out your book reviews on Amazon.

In-Q-Tel, the investment arm of the CIA and the wider intelligence community, is putting cash into Visible Technologies, a software firm that specializes in monitoring social media. It’s part of a larger movement within the spy services to get better at using ”open source intelligence” — information that’s publicly available, but often hidden in the flood of TV shows, newspaper articles, blog posts, online videos and radio reports generated every day.

U.S. Spies Buy Stake in Firm That Monitors Blogs, Tweets

One must ask, is it a good thing that government agencies, such as the CIA, are possibly monitoring the social media networks that seem to be rapidly replacing other channels as our primary method of communication? Part of the answer may come from another article by Shachtman:

Could Twitter become terrorists’ newest killer app? A draft Army intelligence report, making its way through spy circles, thinks the miniature messaging software could be used as an effective tool for coordinating militant attacks.

For years, American analysts have been concerned that militants would take advantage of commercial hardware and software to help plan and carry out their strikes. Everything from online games to remote-controlled toys to social network sites to garage door openers has been fingered as possible tools for mayhem.

This recent presentation — put together on the Army’s 304th Military Intelligence Battalion and found on the Federation of the American Scientists website — focuses on some of the newer applications for mobile phones: digital maps, GPS locators, photo swappers, and Twitter mash-ups of it all.

Spy Fears: Twitter Terrorists, Cell Phone Jihadists

Ken Monro, however, shows us another side of the impact of social networking on spies. In his article for SC Magazine, he gives us all a lesson about  what we post online. We know that colleges, employers, and many others regularly look for facebook or LinkedIn profile information before making decisions important in our lives. Typically, we don’t even know just how much they know about us before reviewing that key application for college, making a hiring decision, or attending an important business meeting with us.

For spies, this can be a life and death situation. Monro’s article even points out:

…if you’re planning on having a second identity for undercover work, it doesn’t help if your photos, friends and real name are splattered all over various social networking sites. Try finding a student at a university who hasn’t done just that.

The UK’s intelligence agencies are worried. From schoolchildren on Bebo, through Facebook-obsessed young professionals, to well-networked CEOs on LinkedIn, having an online presence is a must in this day and age. But with the explosion of social networking sites, it has become virtually impossible to find recruits who don’t have some sort of an online trail.

Pandora’s box is well and truly opened, so how do you go about suppressing your online identity?

Social networking websites make recruiting spies difficult

Let’s add another twist to this. How do spies, or anyone else for that matter, know what is real when they snoop online? Spies are, of course, trained professionals and are presumably much better at this than the average college admission office employee or Fortune 500 employer. On hand, how do we know what a potential business partner, banker, or friend might pick up about us online?

What do we even know about our current president? The title of Jason Linkin’s recent Huffington Post article, Fake Obama Thesis Story Goes Viral, Because Of Stupidity, could give us a clue.

We know many companies are under siege from disgruntled employees and competitors, sometimes without even knowing it. Faked reports about a company’s customer service or product reliability, represent an increasing form of commercial terrorism, often communicated via blogs and other forms of social media. Social media infringement on intellectual property rights appears rampant, with defensive tools lagging well behind those used by the abusers. If you don’t believe it, check out Willis Wee’s article, 10 Brands Claimed By Twitter Cybersquatters.

Where is all this leading? Keep reading. Tracking that is a primary reason for this blog.

That’s what I think. Please leave a comment and let us know what you think.

“Is Twitter Grounds for Trademark Infringement?”
by Douglas Malan, 9/29/09, The Connecticut Law Tribune

Companies often find Twitter accounts acting like them and using their logos. As a result many are suing Twitter but finding that the terms of service outline a process to take if they find their IP rights to be violated.

Companies with accounts to clearly mislead others will be immediately suspended. They will not, however, release the information of the accounts they suspend.

A brand has a lot of opportunities to use Twitter to damage competitors. One way of doing so could be to advertise for a popular company with logos and products, and upon clicking the link direct users to a completely unrelated location.

Tony LaRussa did sue Twitter after finding another user pretending to be him. While some companies have done so, others are reluctant because they do not want it to backfire on their business.

Response

This issue relates to the Playboy case discussed in class where the use of trademarked metatags were used in a confusing fashion to link users to unrelated sites.

There is a lot of potential for companies to create anonymous or false accounts using trademarked images and phrases of others in order to damage their reputation or confuse consumers. Confusing consumers by using others images to direct them to your stuff is clear cut trademark infringement.

The hard part is that if you are a victim, who do you pursue? Because of privacy issues, Twitter can not release the information of accounts to others.

This makes infringement having no consequences because the worst that can happen is that the account is shut down, leaving Twitter to deal with every single lawsuit or issue where people are claiming to be a victim. That would be a never ending battle.

It would relate to cybersquatting but doesn’t because people are not creating the accounts in order to sell them to the actual trademark owner. Because cybersquatting has already been taken care of, Twitter simply closes the account of an infringer, leaving them no financial incentive to squat on such names.

People do like to talk trash and it isn’t hard to sign up and upload someone else’s image. Because of this, Twitter has a long way to go before being trademark infringement free.