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Last updated: April 2002
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Last updated: April 2002 |
Amy Bender
(Harvard Law School '03)
This work is licensed under a
Creative
Commons License.
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Proof | Use | Intent to Sell | Blocking Marks | Disrupting Competitor | Confusion Print | Search | Contents |
CHAPTER
3.1
– BAD FAITH UNDER PARAGRAPH 4(a)(iii) OF THE POLICY
a. Applicable Disputes. You are required 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 (...)
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each of these three elements is present.TOPIC 3.1.1 - ISSUES OF PROOF (Establishing Bad Faith)
Section 3.1.1.1 - Burden of Proof
Subsection 3.1.1.1.1 - What information must be proven by whom?
Complainant must prove that Respondent’s domain name has been registered and is being used in bad faith.
Comments:
The requirement that Complainant prove bad faith does not relieve Complainant of its burden of proving confusing similarity and the lack of legitimate rights or interest in the domain name. Rather, Complainant must prove that each of the three elements described in Paragraph 4(a) of the Policy is present.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which provide evidence that Respondent registered and used the domain name in bad faith.
Cross-Reference:
See: Division 1, Chapter 1.3, Topic 1.3.1 – Burden of Proof (which describes the burden of proof required for each of the elements of the Policy, including bad faith).
See: Division 3, Part 3.2 – Bad Faith Under Paragraph 4(b) of the Policy.
Section 3.1.1.2 - Proof of Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant prove that Respondent’s domain name has been registered and is being used in bad faith.
Comments:
Despite the use of the conjunction “AND” in the Policy, some panels have only required that Complainant show that Respondent either registered the domain name in bad faith OR is using the domain name in bad faith.
The debate is substantial enough that the eResolution Complaint and Response templates had codified the disputed interpretation. If the parties read the eResolution "and/or" language to allow submission of materials concerning bad faith registration or bad faith use, they could unwittingly fail to meet their burden if the Panel requires both bad faith registration and bad faith use.
Usually where panels take the “OR” approach, they rely on one or more of the circumstances suggested in Paragraph 4(b) of the Policy to satisfy the bad faith requirement under Paragraph 4(a)(iii) of the Policy. Paragraph 4(b) states:
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:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you 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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Three of the circumstances concern registration and one concerns use. Thus, some Panels will cite one or more of the registration related circumstances OR the use related circumstance, then claim that 4(a)(iii) is satisfied because 4(b) states that the circumstances are evidence of “of the registration and use of the domain name in bad faith.” Instead of reading the language of 4(b) to mean that three of the circumstances listed are evidence of bad faith registration while one of the circumstances listed is evidence of bad faith use and therefore, a Complainant should prove at the least one of the first three circumstances PLUS the fourth circumstance, some Panels interpret 4(b) to mean that any one of the circumstances listed in 4(b) would, by itself, be sufficient for both bad faith registration and bad faith use.
In addition, some Panels, beginning with WIPO/D2000-0003 (telstra.org) have determined that, under certain circumstances, non-use or passive use of a domain may be evidence of bad faith. Thus, some panels have, in effect, determined that bad faith registration alone is sufficient. In Telstra, the panelist could not conceive of any possible legitimate right or interest that the domain holder could make of a famous, coined Australian mark. In jackspade.com, WIPO/D2001-1384, the panelist held that when a mark is proven, the burden then shifts to the domain holder to prove a right or legitimate interest and non-use for three years supported a finding of a lack of right or legitimate interest.
Those that interpret Policy Section 4(a) to require proof of both registration and use base their reasoning on statutory interpretation and general concepts of trademark law. They argue (a) The language of Section 4(a)(iii) language is clear despite the fact that the Section 4(c) examples are somewhat confusing; (b) the "legislative history" of the UDRP (Section 4.5 of the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy) discusses the and/or debate and flatly rejects to change the "and" to an "or." Trademark law itself does not ordinarily find infringement in the absence of active commercial use as evidenced by the US Anti-cybersquatting Consumer Protection Act (15 USC 1125(d)(1)(A)(i) which specifically requires additional indication of a bad faith "intent to profit;" (d) trademark law does not grant a mark owner worldwide exclusive rights in a name nor should the UDRP. The UDRP should only be invoked when there is a specific intent to harm the mark owner (as all the bad faith examples indicate). Mere registration of a single domain name simply does not prove any of these elements. Telstra is distinguished on the grounds that famous marks have always enjoyed special protection against new uses (even new non-competing uses), however such rights are unique to famous marks and should not be applied to non-famous. See for example, dissent by this Editor in WIPO/D2001-0695 (bancochile.com) and WIPO/D2000-1342 (lifemagazine.net, lifemagazine.org, lifemagazine.com).
Reporter's Notes:
"And" required:
WIPO/D2000-0704: The Policy requires both use and registration in bad faith. Since the Panel was unable to find that the domain names were registered in bad faith the Complaint failed to satisfy his burden. “It may be that the Policy needs to be reviewed, particularly in relation to the requirement for showing use and registration in bad faith. It may seem inappropriate that a person with no legitimate right or interest in a name should be able to register it as a domain name adversely to one who has demonstrated such rights and interests, but the Panel is bound to apply the Policy as it is.” (wallstreetjournaleurope.com, wallstreetjournalinteractive.com, thewallstreetjournaleurope.com, thewallstreetjournalinteractive.com).
See also:
WIPO/D2000-0484 (bancared.com – in Spanish), WIPO/D2000-0493 (pomellato.com), WIPO/D2000-0507 (skymovies.com and skyboxoffice.com), WIPO/D2000-0708 (libertysoflondon.com, libertyoflondon.net, and libertysoflondon.net), NAF/FA94397 (espn.net, espn2.com, espn2.net), NAF/FA94417, NAF/FA94424 (sampoerna.com), NAF/FA95043 (improvenet.net), DeC/AF-157 (batashoes.com and bata-shoes.com), DeC/AF-164 (presidentschoicesocks.com – “The Panel is not free to substitute the word "or" for the word "and," whatever the apparent wisdom of such a substitution”), DeC/AF-176 (spincycle.com), DeC/AF-187 (bayshorevinyl.com); D/2001-0916 (maggi.com); World Wrestling Federation Entertainment Inc. v. Michael Bosman, WIPO/D99-0001; Dow Jones & Company, Inc. v. The Hephzibah Intro-Net Project Limited, WIPO/D2000-0704; The Chancellor, Masters and Scholars of the University of Oxford v. D.R. Seagle, WIPO/D2000-0308; Baby Creysi Of America, Inc., et al v. Asesoria en Computo Integral, et al WIPO/D2000-0237; British Sky Broadcasting Limited v. Domain Reservations, WIPO/D2000-0507; Global Media Resources SA v. Sexplanets aka SexPlanets FreeHosting, WIPO/D2001-1391 (sexplanets.com).
"Or" permitted:
Any one of the circumstances listed under 4(b), by itself, satisfies Policy 4(a)(iii):
WIPO/D2001-0932: “If any one of the tests [under Paragraph 4(b) of the Policy] is satisfied, the Respondent will be found to have registered and used the domain name in bad faith.”
See also: WIPO/D2000-0237 (creysibodega.com – Panel found that “the circumstances described in the Paragraph 4(b)(i) of the Policy, which constitute evidence of registration or use in bad faith, are present in this case and thus the Panel can conclude that Respondent, in addition to registering the domain names at issue in bad faith, has also used these domain names in bad faith.”) WIPO/D2000-0308 (www.oxford-university.com - Panel used “and” language but applied only Policy 4(b)(i) and 4(b)(iii)), WIPO/D2000-0315 (dietrite.com - Policy 4(b)(i) held sufficient for bad faith registration AND bad faith use), WIPO/D2000-0322 (lowesislandclub.com, lowesislandclub.org, and ashburnvillage.com - offering a domain for sale is sufficient for bad faith registration AND bad faith use), DeC/AF-215 (nitrofuel.com - Policy 4(b)(iv) (the bad faith use circumstance) was applied to find both bad faith use AND bad faith registration), NAF/FA94358 (bloom-berg.com – only Policy 4(b)(i) applied).
Non-use or passive use is evidence of bad faith, so Complainant must simply prove bad faith registration: WIPO/D2000-0218 (georgiagulf.com - Respondent had not used the domain; Policy 4(b)(i), (ii), (iii) applied).
See also: WIPO/D2001-0852 (bitegolf.com – inactivity was evidence of bad faith use (citing Telstra); 4(b)(i) cited for bad faith registration), WIPO/D2001-0956 (lacostechina.com – passive use combined with a lack of evidence of good faith is enough to find bad faith (citing Telstra); 4(b)(i) cited for bad faith registration), DeC/AF-153 (westfairfoods.com - Respondent had not used the domain; Policy 4(b)(i) considered), DeC/AF-173 (automobileatlanta.com – bad faith registration was the primary consideration since the domain had not been used), NAF/FA94364 (dagmedia.com - Respondent had not used the domain; only Policy 4(b)(i) applied to find bad faith registration), NAF/FA94373 (emeril.com - bad faith registration similar to Policy 4(b)(ii) but without pattern of conduct found; Panel did not consider bad faith use).
Panel held that the first three examples in Policy 4(b) all refer to registration for various illegitimate purposes as evidence of registration and use in bad faith, and concluded that in each instance bad faith use may well be implicit in the act of registering a domain name, since all the improper purposes mentioned can be accomplished merely by passively holding a domain name: NAF/FA94375 (lumena.com), DeC/AF-104 (thyme.com)
Section 3.1.1.3 - Methods of Proving Bad Faith
Subsection 3.1.1.3.1 - Proving Bad Faith Under Paragraph 4(b) of the Policy Evidence of Registration and Use in Bad Faith. 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:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you 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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Comments: While the 4 circumstances listed above are frequently invoked by the Complainant to establish bad faith, the list is not exhaustive, meaning that Panels can find bad faith registration and use based on other evidence or circumstances not listed above.
Reporter's Notes:
Paragraph 4(b) of the Policy is a non-exhaustive list. WIPO/D2000-0245 (jornalnacional.com and globoesporte.com), WIPO/D2000-0834 (ilovelucy.com), DeC/AF-286 (starfrit.com), NAF/FA95065(winesdirect.com).
Since the list is non-exhaustive, a Panel may find bad faith on grounds other than the list in Paragraph 4(b): WIPO/D2001-0698 [Rule 15(a) allows a Panel to find bad faith on grounds other than those contained in Paragraph 4(b)] (gulfstatestoyota.com and priceleblanctoyota.com).
Cross-Reference:
See Part 3.2 - BAD FAITH UNDER PARAGRAPH 4(b) OF THE POLICY for a review of each of the 4 types of circumstances that a Complainant can offer as evidence of bad faith.
See also UDRP Rule 15(a).
Subsection 3.1.1.3.2 - Proof of Bad Faith Based on Violation of Paragraph 2 of the Policy or Corresponding Provision of the Registration Agreement Your Representations. 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 (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.
Reporter's Notes:
Sufficient to find bad faith registration and use:
Bad faith registration found because Respondent registered Complainant's well-known mark, thus violating Section 17 of the NSI Service Agreement whereby the registrant warranted that: "(ii) to the best of your knowledge and belief neither the registration of your domain name nor the manner in which you intend to use such domain name will directly or indirectly infringe the legal rights of a third party." The deliberate infringement of Complainant's mark was sufficient to prove bad faith registration and use: WIPO/D2000-0164 (embratel.com).
Bad faith registration and use found due to violation of Paragraph 2(b) of the Policy. Paragraph 2(b) charges Respondent with the responsibility to "determine whether your domain name registration infringes or violates someone else's rights": NAF/FA93636 (sound-choice.com).
Sufficient to find bad faith registration:
Respondent warranted in its Registration Agreement that the domain-name registration would not infringe upon or otherwise violate the rights of third parties. By registering a well-known mark or by failing to check whether the registration would infringe on the right of a third party, Respondent registered the domain name in bad faith: WIPO/D2000-0591 (younggenius.com), NAF/FA94895 (sunchronicle.com).
Where Respondent provided false contact information, Panels have occasionally found bad faith registration or bad faith generally.
Reporter's Notes:
Bad faith generally (citing Telstra):
In addition to finding bad faith under 4(b)(i) and 4(b)(ii), the Panel citing the non-exhaustive nature of paragraph 4(b) found that Respondent's bad faith was further evidence by hiding its true identity behind several different trade names, by using a post office box address instead of its actual address, and by using false names for contact persons such as "Billing Contact" instead of the name of an actual person: WIPO/D2000-0501 [huntonandwilliams.com and huntonwilliams.com citing WIPO/D2000-0003 (telstra.org)].
Respondent did not provide any contact information, and did not respond to Complainant's communications or to the Complaint: WIPO/D2000-0425 (symplicity.com) citing WIPO/D2000-0003 (telstra.org).
Bad faith generally (not citing Telstra):
Respondent provided Registrar, Network Solutions, Inc., with incorrect contact information regarding the actual registrant: NAF/FA94646 (t-nova.com).
Bad faith registration:
Evidence that a domain name owner provided incorrect information to a domain name registrar supports a finding of bad faith registration: NAF/FA95093 (visitamerica.com), NAF/FA95345 [false telephone number as evidence of bad faith registration (mediaenforcer.com)], NAF/FA92016 [providing incomplete and/or false information in the WHOIS directory is evidence of bad faith (xtra.net)].
Panels have inferred bad faith resulting from a breach of contract or agreement between Complainant and Respondent.
Reporter's Notes:
Registration was in violation of the License Agreement because Respondent, a licensee, registered and used the licensed mark without Complainant's permission, which can mislead the public into thinking that the registrant owns the mark: NAF/FA92527 (heelquik.com).
Violation of license agreement which only granted the right to use Complainant's mark in certain specified countries, but not in international commerce: NAF/FA94669 (aarque.com).
Complainant hired Respondent to perform various web-related services. Respondent proceeded to register the domain name which consisted of Complainant's mark: DeC/AF-211 (teenflo.com).
Subsection 3.1.1.3.5 - Circumstances Similar to Paragraph 4(b) of the Policy
Panels have found bad faith based on evidence similar to the circumstances listed in paragraph 4(b) of the Policy.
Comments:
Sometimes, while the evidence cited appears to fall directly under one of the 4 circumstances, a Panel may not expressly mention any of those circumstances when finding bad faith.
Other times, a Panel will find that the evidence does not quite meet a particular circumstance, which is mentioned in the decision, yet finds bad faith 1) without further comment, 2) because the list of 4 circumstances is not exhaustive, or 3) citing the Telstra line of decisions.
Reporter's Notes:
Evidence similar to the 4 circumstances listed above: WIPO/D2000-0044 (circumstances similar to 4(b)(i) - toefl.com), NAF/FA94373 (circumstances similar to 4(b)(ii) - emeril.com), WIPO/D2000-0231 (circumstances similar to 4(b)(iii) - lloydstsb-visa.com), WIPO/D2000-0141 (circumstances similar to 4(b)(iv) - cortefiel.com)
A Panel has held that the failure to perform a trademark search (even where it would only have revealed a pending application) is evidence of bad faith.
Reporter's Notes:
WIPO/D2001-1384 (jackspade.com). Panelist did not address the expense of such a task at the time the domain was registered which preceeded current free USPTO online search capability.
Panels have held that bad faith may be inferred from the registration of a well-known mark.
Reporter's Notes:
Bad faith registration: Respondent registered Complainant's well-known mark and Respondent had a history of owning and transferring well known marks at a premium: WIPO/D2000-0516 (posteel.com), NAF/FA95547 (registration of domain name on day federal registration of mark was granted is evidence of bad faith registration - ibills.com), WIPO/D2000-0037 (mark was well-known and widely advertised within Hungary and throughout the world - zwackunicum.com) WIPO/D2000-0162 (mark was well-known and famous within Respondent's geographic area - pedrodelhierro.com).
Famous Names - Bad faith registration found because Complaint's name was famous at the time of registration: WIPO/D2000-0310 (choyongpil.net).
Bad faith registration and use (generally): "Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith": NAF/FA95314 (thecaravanclub.com ), WIPO/D2000-0808 (very use of domain name by Respondent who had no connection whatsoever with Complainant's mark and product suggests opportunistic bad faith - 4icq.com), Bad faith registration because the mark was well-known, plus bad faith use because any possible use after registration would constitute bad faith: CPR004 (granting transfer of whoiswhoinamerica.com and whoiswhointheworld.com because it was impossible that Respondent was not aware of these marks, but denying transfer of whoiswhoinlaw.com, whoiswhoinmedicine.com, and whoiswhoinpolitics.com)
But see: Mere knowledge of mark, without more, does not establish bad faith registration: WIPO/D2000-0006 (militec.com); Koninklijke Philips Electronics N.V. v. Manageware, WIPO/D2001-0796; Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO/D2001-0003; PRL USA Holdings, Inc. v. Polo, WIPO/D2002-0148; Ingersoll-Rand Co. v. Frank Gully, WIPO/D2000-0021 (whether a trademark is "well known" or "famous" is outside the mandate of UDRP Panels); Nike, Inc. v. Crystal International, WIPO/D2002-0352 (particularly where famous name is not fanciful).
Constructive notice of Complainant's trademark rights is a factor in considering bad faith.
Reporter's Notes:
"Section 22 of the Trademark Act states that '[r]egistration of a mark on the principal register . . . shall be constructive notice of the registrant's claim of ownership thereof.' As a matter of the United States trademark law, it must therefore be presumed that Respondent was on notice of Complainant's rights in the BARNEY'S NEW YORK mark prior to registering the domain name barneysnewyork.com": WIPO/D2000-0059.
"Actual or constructive knowledge of the Complainant's rights in the Trademarks is a factor supporting bad faith": WIPO/D2001-1242 (1800redroof.com, 1888redroof.com, 1877redroof.com) (citing WIPO/D2000-0137 (xpediatravel.com), and WIPO/D2000-0270 (htmlease.com).
But see: Constructive notice - Registration of a mark in one country does not necessarily put a Respondent on constructive notice of the mark anywhere else in the world DeC/AF-263 (hotlinecommunications.com).
Subsection 3.1.1.3.9 - Registration of a Domain That is Identical or Confusingly Similar to a Mark Known to Respondent (That is Not Necessarily Famous or Well-known)
Panels sometimes find bad faith where Respondent registers a domain that is identical or confusingly similar to Complainant's mark where Respondent knows of Complainant's mark (although the mark itself isn't necessarily well-known or famous).
Reporter's Notes:
Bad faith registration found because Respondent was aware of the confusing similarity between his domain name "fibershield.net" and Complainant's domain name "fiber-shield.com" (Respondent tried to register fiber-shield.com but discovered it was unavailable) and since Respondent did not claim any rights superior to Complainant's trademark registration of the name "fiber-shield": NAF/FA92054.
Bad faith registration where Respondent knew of Complainant's mark because Respondent was a competitor of Complainant: WIPO/D2000-0139 (moanapacific.com). Bad faith registration because Complainant had used the mark for over 20 years: NAF/FA94266 (beautyco.com).
Bad faith registration because Respondent knew of Complainant's mark, as evidenced by a direct reference to Complainant and Complainant's trademarked product on its home page: NAF/FA93557 (vybar.com).
Bad faith registration because Respondent should have known about Complainant's mark since the mark refers to hotel services and Respondent had been in the tourism industry for over 10 years: WIPO/D2000-0283 (fortehotels.com).
But see: While Respondent was likely to have known of Complainant's interest in the mark, there was no clear bad faith infringement: WIPO/D2000-0095 (netvault.com).
Subsection 3.1.1.3.10 - Registration of Multiple Domains (Stockpiling)
Panels have inferred bad faith from the registration of multiple domains.
Reporter's Notes:
Registration of multiple domains that are not necessarily identical or confusingly similar to well-known or famous marks is nonetheless evidence of bad faith: WIPO/D2000-0351 (Respondent registered a "long list" of domains - redeglobo.net).
Registration of multiple domain names that are registered marks of others is evidence of bad faith: NAF/FA93554 (Respondent registered at least 50 other domain names, some of which were registered trademarks of other entities - bigdog.com).
Registration of numerous misspellings of celebrity names and variations of popular products and website names is evidence of bad faith: WIPO/D2000-0541 (guinnes.com).
Stockpiling of 44 domains (not at issue) is evidence of bad faith: WIPO/D2000-1413 (ingindex.org).
Cross-reference:
See Topic 3.2.2.2 - Pattern of Conduct
Subsection 3.1.1.3.11 - Bad Faith Registration Inferred From Non-use or From the Absence of Legitimate Use (Parking / Warehousing)
Panel sometimes infer bad faith registration from Respondent's non-use of the domain or in the absence of legitimate use.
Reporter's Notes:
Non-use (Parking): NAF/FA94972 (alpine.com); WIPO/D20001-0681 (ceyx.com). Absence of legitimate use: WIPO/D2000-0612 (tylenol.org), NAF/FA94974 (americangladiator.com, americangladiators.com).
Warehousing held to be bad faith because Respondent, who had not made any use of the domains, could not make any legitimate (good faith) use of the domains: WIPO/D2001-0756 (federalcartridge.net and federalcartridge.org).
Cross-reference:
See Section 3.1.2.1 Passive Use (examining how panels have inferred bad faith use from passive use).
Subsection 3.1.1.3.12 - Bad Faith Registration Inferred From Non-use or From the Absence of Legitimate Use (Parking / Warehousing)
Panels have found that Respondent's registration of the domain after Complainant's registration lapsed is evidence of bad faith.
Reporter's Notes:
NAF/FA93764 (borderpatrol.com), DeC/AF-136 (saffola.com).
Subsection 3.1.1.3.13 - Linking to Other Site or Otherwise Diverting Internet Traffic
Panels have found bad faith where Respondent has used the domain to link to other sites or have otherwise diverted or redirected Internet traffic.
Reporter's Notes:
Domain used to link to a competitor of Complainant: WIPO/D2000-0037 (zwackunicum.com)
Domain used to divert Complainant's business to Respondent: WIPO/D2000-0051 (various domains), WIPO/D2000-0861 (blackwaterrafting.com).
Domain linked to pornographic site: WIPO/D2000-0936 (clubmonacocosmetics.com), NAF/FA95343 (simpleshoe.com).
Subsection 3.1.1.3.14 - Typosquatting (Misspellings or Variations on a Mark)
Panels have found bad faith where Respondent engaged in typosquatting (registering a misspelling or variation of Complainant's mark).
Comments: While the Panels in the cases below considered typosquatting to fall outside of the 4 circumstances (that can be offered as evidence) under paragraph 4(b) of the Policy, other Panels have typically included typosquatting under 4(b)(iv) and sometimes 4(b)(iii) of the Policy.
Reporter's Notes:
Deleted a letter: WIPO/D2001-0094 (plaboy.com as opposed to Playboy), WIPO/D2000-1623 (pag3.com as opposed to page3.com).
Added a letter: WIPO/D2000-1447 (attt.net as opposed to ATT NET), WIPO/D2001-0060 (ggoogle.com as opposed to Google).
Added www: WIPO/D2000-1594 (wwwpic.com as opposed to PIC), WIPO/D2000-0377 (wwwge.com as opposed to GE).
Multiple misspellings: WIPO/D2001-0224 (eddiebaurer.com and eddiebaur.com as opposed to Eddie Bauer).
Cross-reference:
See Section 3.2.4.4 (misspellings under 4(b)(iv)).
See Section 3.2.3.1.2 (misspellings under 4(b)(iii)).
Subsection 3.1.1.3.15 - Failure to Respond to a Cease and Desist Letter or Other Communications
Panels have occasionally found that failure to respond to a cease and desist letter or other communications is a factor in considering bad faith.
Reporter's Notes:
Panel found that Respondent's failure to respond to Complainant's cease and desist letter was an admission by silence that the domain was "in use" and, coupled with Respondent's infringement on Complainant's mark constituted bad faith: DeC/AF-174 (cignadirect.com).
Respondent's failure to respond to Complainant's cease and desist letter was further evidence of bad faith: NAF/FA94864 (likeagoodneighbor.com), NAF/FA95476 (epsondirect.com), WIPO/D2001-1242 (1800redroof.com, 1888redroof.com, 1877redroof.com).
"Respondent's failure to respond to the inquiries of Complainants or to the Notification of Complaint and Commencement of Administrative Proceeding sent by the Center supports the inference that the registration and the use of the domain name has been in bad faith": WIPO/D2000-0147 (carolinapanthers.com).
Subsection 3.1.1.3.16 - Use of Complainant's Mark in Metatags
Panels have occasionally found that use of Complainant's mark in metatags is a factor in considering bad faith.
Comments: Panels occasionally find that the use of metatags falls under Paragraph 4(b)(iii) of the Policy (disruption of a competitor's business).
Reporter's Notes:
Use of metatags in Respondent's domain to attract search engines to when a user entered Complainant's mark: WIPO/D2001-0263 (pressassociation.net, press-association.com, press-association.net, press-association.org), WIPO/D2001-1023 (tiltbin.com), WIPO/D2001-1037 (vodaphone.com).
Cross-reference:
See Paragraph 4(b)(iii) of the Policy.
Section 3.1.1.4 – Refuting a Claim of Bad Faith
Subsection 3.1.1.4.1 - Respondent's Domain Name Pre-dated Complaint's Mark
Panel have declined to find bad faith where Respondent's domain name registration predated Complainant's mark.
Reporter's Notes:
No finding of bad faith because Respondent registered the domain name 5 months before Complainant applied to the USPTO to register its service mark. The parties were not competitors and, upon registration, Respondent set up a business plan: NAF/FA93553 (usource.com and usource.net).
No finding of bad faith because Respondent registered the domain name more than two years before the Complainant registered the same name under the gTLD .net, and almost three years before the Complainant filed an application for a United States Federal Trademark: DeC/AF-335 (californiahardbodies.com).
Panels have declined to find bad faith where the domain name was generic or descriptive.
Comments:
Generally, generic and descriptive words and phrases will not be transferred to a Complainant simply because a Complainant has a registered trademark. Panels look to the circumstances surrounding the registration of the domain name, including whether:
1. The domain name was acquired primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant;
2. The domain name was acquired to prevent Complainant from reflecting its trademark in a corresponding domain name;
3. Respondent has engaged in a pattern of such conduct;
4. Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
5. Respondent intended to attract Internet users to its web site or other on-line location by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the web site.
The list is not exhaustive, and since Panels tend to judge the circumstances on a case-by-case basis, the presence of any one of the circumstances listed above may (or may not!) be decisive.
Reporter's Notes:
Where a domain name is generic, the first person to register it in good faith is entitled to the domain name. WIPO/D2001-1217 (romi.com) (citing NAF/FA93547 (concierge.com)).
Circumstances surrounding the registration: No finding of bad faith because the term "coming attractions" is a generic term in the field of entertainment, widespread use of this generic term predated Complainant's trademark registration, and Complainant's trademark applied specifically to apparel, an area unrelated to Respondent's current or planned uses for the domain: NAF/FA94341 (comingattractions.com). The "commingattractions.com" decision is the basis for the checklist above, which has been cited by other Panels for use in determining whether the domain was registered in good faith: WIPO/D2001-0872 (scholasticnetworks.com and schoolasticnetworks.com) WIPO/D2001-1217 (romi.com)
Circumstances are judged case-by-case: Respondent had registered over 400 domain names, all of which contained or were composed of common words or short phrases from the English language or misspellings of such words. The Panel noted that a generic word in one country could be a trademark in another country, but that nothing in the Policy requires a person registering a domain name to carry out a prior trademark search in every country of the world for conflicting trademark rights. Here, the Panel found Respondent's explanation that he selected many of the domain names offered for sale at random was prima facie acceptable in this case. Therefore, it found that Respondent had a legitimate interest in the domain, which could have been refuted if the Complaint had established that the domain was chosen with the intent to profit from or otherwise abuse Complainant's trademark rights WIPO/D2000-0016 (allocation.com).
Respondent was involved in business of purchasing and selling of generic domain names. Complainant's mark "thyme" was a generic term. Since Respondent did not register the domain name with the intent to capitalize on Complainant's mark interests and was even not aware of the mark or Complainant's existence at the time of registration, the Panel declined to find bad faith: DeC/AF-104 (thyme.com).
But see: Careless registration of a domain name, with the clear risk of infringing on a third party's trademark rights, is an act of bad faith even if the domain name may consist of a generic name like fad: DeC/AF-222 (efads.com).
Proof | Use | Intent to Sell | Blocking Marks | Disrupting Competitor | Confusion
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TOPIC 3.1.2 - WHAT CONSTITUTES "USE"?
Panels have frequently determined that passive use satisfies the use requirement.
Comments: In an early decision, WIPO/D2000-0003 (telstra.org), the Panel determined that, under certain circumstances that must be evaluated on a case-by-case basis, non-use or passive use of a domain may be evidence of bad faith. Panels frequently cite the Telstra decision as support for the idea that "inaction" can be evidence of bad faith.
Reporter's Notes:
Passive use was held sufficient under Policy 4(a)(iii) only if mark enjoyed strong reputation, and Respondent failed to respond, failed to provide evidence of good-faith use, or though other conduct or circumstances cast doubt that the domain name was "used" in good faith: WIPO/D2000-0620 (internet-in-the-sky.org - Panel, citing Telstra, determined that the fact that Respondent registered a domain name that was identical to a fanciful mark, failed to respond to a letter from Complainant and to the Complaint, and operated a business under a completely different name constitutes bad faith use), WIPO/D2000-0627 (polyesthers.com - Panel, citing Telstra, determined that the fact that Respondent registered a misspelling of Complainant's mark, and did not respond to Complainant's emails, nor to its Complaint constitutes bad faith use), WIPO/D2000-0727 (bancodobrasil.com - Panel, citing Telstra, determined that the fact that Respondent slavishly copied Complainant's internationally known mark, deprived Complainant from legitimately reflecting its mark in a corresponding domain name, defaulted in the proceeding, and that the inactivity of the website might cause the public to believe that Complainant is not present on web, constitutes bad faith use), WIPO/D2000-0732 (somlivre.com - Panel, citing Telstra, determined that the fact that Respondent registered famous and well-known marks, plus other facts, attitudes, and actions of Respondent since the registration of the domain name constitutes bad faith use), WIPO/D2000-0815 (sinteplast.com - Panel, citing Telstra, determined that the fact that Respondent registered domain name identical to well-known mark of which he had knowledge, did not show any good faith registration and good faith use, committed unfair competition, and was in default, constituted bad faith use), WIPO/D2000-0826 (betwilliamhill.net - Panel, citing Telstra, determined that the fact that Respondent knew of reputation of Complainant’s mark, and had no intentions to use it, constituted bad faith use), WIPO/D2000-0887 (Panel, citing Telstra, determined that "passive holding" (Respondent was holding numerous domain names incorporating third parties' marks without using them) constitutes bad faith use), DeC/AF-349 (2pac.org - Panel, citing Telstra, determined that given the strong reputation of mark, and the fact that the defaulting Respondent provided no evidence of good faith use, and that such use was difficult to conceive, constitutes bad faith use).
See also World Wrestling Federation Entertainment Inc. v. Michael Bosman, WIPO/D99-0001; Dow Jones & Company, Inc. v. The Hephzibah Intro-Net Project Limited, WIPO/D2000-0704; The Chancellor, Masters and Scholars of the University of Oxford v. D.R. Seagle, WIPO/D2000-0308; Baby Creysi Of America, Inc., et al v. Asesoria en Computo Integral, et al WIPO/D2000-0237; British Sky Broadcasting Limited v. Domain Reservations, WIPO/D2000-0507; Global Media Resources SA v. Sexplanets aka SexPlanets FreeHosting, WIPO/D2001-1391.
Passive use (holding the domain name, without more) was, by itself, sufficient use under Policy 4(a)(iii): WIPO/D2000-0022 (christiandiorcosmetics.com, christiandiorfashions.com, diorcosmetics.com, diorfashions.com - reasoning that passive use prolonged a situation which was at odds with the legal rights of the parties involved and knowingly obstructed registration of domain name in the name of Complainant), WIPO/D2000-0502 (etogesic.com - none of the evidentiary circumstances under 4(b) were found, but Panel concluded that under Telstra inactivity alone was sufficient), NAF/FA95133 (emka.com - citing Telstra and the fact that the domain name had not been used for four years, the Panel determined that passive holding was sufficient evidence of bad faith).
But see:
No use at all (simply holding the domain name), without more, does not satisfy Policy 4(a)(iii): Nike, Inc. v. Crystal International WIPO/D2002-0352 (nikepark.com, et al. - mere continuous ownership is not sufficient), Société des Produits Nestlé S.A. v. Pro Fiducia Treuhand AG, WIPO/D2001-0916. : WIPO/D2000-0265 (buyvuarnetsunglasses.com - but should Respondent ever attempt to use the domain, the Complainant would be permitted to re-file a Complaint), DeC/AF-164 (presidentschoicesocks.com - distinguishing the case from Telstra since no other evidence of bad faith was present in this case).
The language
"is being used in bad faith" does not refer to any particular point in
time; rather, Paragraph 4(a)(iii) of the Policy is satisfied if, at any
time after registration, the domain is used in bad faith.
Comments: While the language "is being used in bad faith" could imply bad faith at the time the Complaint is filed or during the Panel's deliberations, use of a domain in bad faith at any time after registration will qualify. Otherwise, Respondent could escape by temporarily ceasing to use the domain every time Complainant protests, files a complaint, or once the Panel begins its deliberations.
Reporter's Notes:
Leading decision: WIPO/D2000-0021 (ingersoll-rand.net, ingersollrand.org); followed by WIPO/D2000-0568 (basshotel.com), WIPO/D2000-0660 (casinoyahoo.com), DeC/AF-233 (packagingworld.com).
Subsequent good faith use isn't sufficient: NAF/FA93763 ["To hold that an alleged change of heart or a subsequent permissible use could over-ride the Respondent's bad faith act would totally negate the ICANN Policy and Rules." (esquire.com)]
Comments: "Respondent" has been defined as the actual domain name holder as well as a range of persons associated with the domain. Division 1, Section 1.7.1.1, "Definition of Respondent" provides a list of such persons.
Reporter's Notes:
Employee or agent under Respondent's control used the domain in bad faith (Respondent registered the domain in bad faith): WIPO/D2000-0025 (sgs.net, sgsgroup.net).
Respondent registered the domain (in bad faith) on behalf of third parties, who used the domain in bad faith: WIPO/D2000-0730 (gallerina.com).
While Respondent was not the original registrant, the registration of the transfer to Respondent was made in bad faith (Respondent subsequently used the domain in bad faith): WIPO/2000-0360 (airnewzealand.com).
Cross-reference:
See Division 1, Section 1.7.1.1.
Proof | Use | Intent to Sell | Blocking Marks | Disrupting Competitor | Confusion
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CHAPTER 3.2 – BAD FAITH UNDER PARAGRAPH 4(b) OF THE POLICY
Evidence of Registration and Use in Bad Faith. 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:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you 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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
UDRP Paragraph 4(b)
TOPIC 3.2.1 - POLICY 4(b)(i): INTENT TO SELL, RENT OR TRANSFERSection 3.2.1.1 - Intent to Sell Inferred
Subsection 3.2.1.1.1 - Circumstances Under Which an Intent to Sell May be InferredIntent to sell may be inferred where:
1. Respondent contacted Complainant, Complainant's representatives, or an intermediary to offer to sell the domain name;
2. Respondent's offer to sell the domain name (either to the Respondent or to the public at large) was made on Respondent's website, or on another website such as an auction website;
3. Complainant contacted Respondent and inquired about a sale of the domain name, then Respondent demanded a sum in excess of out-of-pocket costs;
4. Complainant contacted Respondent and inquired about a transfer of the domain name, then Respondent demanded a sum in excess of out-of-pocket costs;
5. Respondent offered to sell upon receiving a cease and desist letter from Complainant;
6. Respondent was willing to negotiate;
7. Respondent's offer to sell was made through a WHOIS database;
8. Respondent provided the Registrar with false contact information;
9. Respondent registered and offered to sell multiple domain names;
10. Respondent registered a unique or distinctive mark;
11. Respondent registered a well-known or famous mark;
12. Respondent made no use of the domain; or
13. Respondent had no rights or legitimate interests in the domain name.
The list above is not intended to be exhaustive.
Reporter's Notes: The following are samples of decisions under category.
WIPO/D1999-0001 (offer to Complainant made three days after registration - worldwrestlingfederation.com), WIPO/D2000-0098 (offer to Complainant made three months after registration of a domain name which was confusingly similar to well-known mark - babydior.com, babydior.net), WIPO/D2000-0146 (Respondent offered to sell in 2 separate letters to Complainant - siba.com), WIPO/D2000-0280 (Respondent made offer then rejected Complainant’s counter-offer, and Respondent advised Complainant about the number of inquiries he received concerning Complainant's business and goods - redordead.com), WIPO/D2000-0484 (Respondent directed various sales offers to Complainant - bancared.com (in Spanish)), WIPO/D2000-0569 (Respondent registered domain names 2 months after Complainant started using its mark, and contacted Complainant's representatives with an offer to sell shortly afterwards - calle13.com and calle13.net), NAF/FA94269 (sales offer one day after domain name registration - khoros.com), NAF/FA94329 (offer to sell after Complainant warned Respondent of its wrongful actions - pokemon2000.com and pokemons.com), NAF/FA94836 (within days after a merger Complainant received a sales offer from Respondent - verticalcircuits.com and verticalcircuits.net), NAF/F94963 (sales offer 45 days after domain name registration - quirkmazda.com and quirkvolkswagen.com), NAF/FA95063 (sales offer through an intermediary - yanni.com), NAF/FA95264 (Respondent sent sales offer seven days after registration of domain name and threatened to put domain name on auction site in case Complainant does not purchase it - mathisbrothersfurniture.com and mathisbrothers-furniture.com)
A sampling of decisions under category 2:
Offer made on Respondent's website: WIPO/D2000-0237 (babycreysi.com and creysibodega.com), WIPO/D2000-0297 (natureswindow.com and paulpuckett.com), WIPO/D2000-0308 (www.oxford-university.com), WIPO/D2000-0611 (ritzcarlton.net and ritzcarlton.org), WIPO/D2000-0834 (ilovelucy.com), NAF/FA94805 (unctv.com), NAF/FA95165 (jon-don.net and jon-don.org), DeC/AF-143 (offer also in metatext field of website's source code - hotmetal.com), DeC/AF-270 (oddsonline.com)
Advertising over the Internet: WIPO/D2000-0382 (creditlibanais.com).
Offer made on an auction website: WIPO/D2000-0222 (DODGEVIPER.COM), WIPO/D2000-0362 (oxygen.com), WIPO/D2000-0402 (stevenrattner.com), WIPO/D2000-0580 (superwal-mart.com), NAF/FA95040 (phatthreads.com and phatclothes.com), NAF/FA95322 (HP-SOFTWARE.COM), NAF/FA95493 (internetsecuritysystems.com and internetsecuritysystems.net), DeC/AF-217 (businessway.net).
Respondent bought domain name to sell it to Australian newspaper company and not to Complainant, nonetheless the Panel applied Policy 4(b)(i): NAF/FA94312 (heraldsun.com)
A sampling of decisions under category 3:
WIPO/D2000-0154 (Complainant offered $200, Respondent demanded $5,000 and $10,000 respectively - universityofnebraska.com), WIPO/D2000-0456 (Complainant inquired about sale, prompting Respondent to offer the domain name for sale on its website and demand $10,000 - geneticsinstitute.com and egeneticinstitute.com), WIPO/D2000-0492 (Complainant offered to buy the domain name for $5,000, later for $7,500; Respondent demanded $1,000,000 - jt.com), NAF/FA94951 (Complainant offered $1,000, Respondent demanded $5,000 - missdenmark.com), NAF/FA95048 (Complainant offered $1,000, Respondent demanded $500,000 for each domain name csicop.com and csicop.net), DeC/AF-283 (Complainant offered to pay $500, Respondent demanded $8,500 - megatel.com)
A sampling of decisions under category 4:
WIPO/D2000-0433 ($1,000,000 demanded - emiwarnermusic.com, emiwarner.org, emiwarner.net, warneremi.net, warneremi.org), WIPO/D2000-0588 ($100,000 demanded - gameb0y.com), WIPO/D2000-0619 ($4,999 for seven domain names demanded - chasefleming.net, chase-fleming.net, chase-flemings.net, chasefleming.org, chaseflemings.org, chase-fleming.org, and chase-flemings.org), DeC/AF-248 ($20,000 demanded - multifax.com), DeC/AF-316 (Complainant offered to pay the registration costs, Respondent demanded 10,000 English Pounds - dynojet.net)
A sampling of decisions under category 5:
WIPO/D2000-0282 ($10,000 - newenglandjournalofmedicine.com), WIPO/D2000-0529 ($100,000 each - anheuserbusch.net and anheuserbusch.org), NAF/FA94719 ($100,000 - state-farm.com), NAF/FA95096 ($800 each - cherrydalefarms.com and cherrydale-farms.com)
A sampling of decisions under category 6:
Respondent, a sophisticated person (a lawyer), declared a willingness to engage in "discussions" about domain name without requesting an offer or stating that the domain name was for sale: WIPO/D2000-0323 (newbergerberman.com)
Respondent registered the domain name in connection with a business proposal it made to Complainant. It declined to transfer the domain name fearing that Complainant would use the business technology offered without compensation. Panel inferred an intent to sell: NAF/FA94447 (kinkosoffice.com)
Intent to sell if Respondent is making a suspicious offer to negotiate a sale of Complainant's domain name, Complainant being the biggest recruitment company of the UK, while Respondent was just a small start-up company: DeC/AF-106 (computerfutures.com).
A sampling of decisions under category 7:
NAF/FA95565 (Respondent listed the administrative contact as "Russdomainnameforsale Johnson" - dljsource.com, dljdirectelectric.com, dljetrade.com, and d-l-j.com), WIPO/D2000-0801 (Respondent used "This domain is for sale" on the WHOIS database - rtlgroup.com),
A sampling of decisions under category 8:
The panel found prima facie evidence that Respondent registered the domain name with the intent to sell it because he provided false contact information which included as its address: "ONSALEHIREPURCHASEORANYIDEA": WIPO/D2000-0205 (americansingle.com)
Respondent provided nonsensical address and contact information among which "ForSaleLeaseCoOporAnyImaginatio". The panel concluded that Respondent registered domain name with intent to sell it: WIPO/D2000-0476 (campyahoo.com).
Respondent did not provide correct address details to registrar, and only disclosed such information when Complainant showed interest to buy the domain name. Further, Respondent did not make any use of domain name. The panel concluded in default procedure that there was no other explanation than Respondent registered the domain name with the intent to sell it: WIPO/D2000-0504 (deutsche-bankerstrust.com).
Respondent registered domain name under its address adding "the domain name you have entered is for sale": WIPO/D2000-0775 (atmelgrenoble.com).
A sampling of decisions under category 9:
WIPO/D2000-0036 (2 of the 4 domain names affecting Complainant were offered for sale - panel deducted a registration plan in that Respondent registered the other 2 domain names to oblige Complainant to buy the first 2 by preventing it from registering alternative domain names - efgprivatebank.com, efg-private-bank.com, efgprivate.com, efgpb.com) WIPO/D2000-0080 (Respondent registered a series of domain names constituting variations of Complainant's mark, sought substantial remuneration for sale of all domain name and tried to force Complainant to use his domain name consolidation service - alaskaairlines.org), WIPO/D2000-0123 (Respondent offered to sell 200 domain names as a group to a venture capitalist or other buyer advertised in magazine targeted at Complainant's industry - buyserta.com, buyaserta.com, buyperfectsleeper.com, buyaperfectsleeper.com, and buysertaperfectsleeper.com), WIPO/D2000-0245 (Respondent registered a multitude of domain names which he offered for sale - jornalnacional.com and globoesporte.com), WIPO/D2000-0501 (Respondent registered more than 65 domain name incorporating names and marks of famous law firms, used NameIsForSale.com as its trade name and refused to transfer the domain names without payment in excess of out-of-pocket costs - huntonandwilliams.com and huntonwilliams.com), NAF/FA95476 (Respondent registered about 80 domain name incorporating famous and distinctive mark - epsondirect.com).
A sampling of decisions under category 10:
Intent to sell inferred from the facts that Complainant had prior ownership of an identical trademark registration, that the dominating element in the corporate name and the domain name at issue were identical, that this element had a high degree of individuality and distinctiveness, that it was highly improbable that Respondent selected the name without knowledge of Complainant's trademark registration and its wide reputation, and due to the non-contested statements in the complaint: WIPO/D2000-0146 (siba.com), WIPO/D2000-0151 (arla.com), WIPO/D2000-0153 (uefachampionsleague.com)
A sampling of decisions under category 11:
The panel inferred an intent to sell the domain name to Complainant since Respondent registered a domain name which was essentially exactly the same as Complainant's mark, a mark which was considered to be world famous at the time the domain name was registered. Moreover, Respondent made no use of it and there was no connection found between Respondent and the domain name: WIPO/D2000-0167 (enike.com and e-nike.com)
Intent to sell inferred from the fact that Complainant's mark enjoyed relative notoriety and was so obviously connected with Complainant that Respondent could only have registered the domain name for the purpose of sale: WIPO/D2000-0403 (charlesjourdan.com).
But see:
Intent to sell not proved by identity between domain name and mark, and registration of other domain name: WIPO/D2000-0056 (bellevuesquare.com)
No such intent established if domain name incorporated a trademark which was used on a product widely employed so that there was substantial possibility that the domain name might have been purchased by parties other than the mark owner or one of his competitors and that such third parties might have had legitimate good faith use for this domain name: WIPO/D2000-0044 (toefl.com).
A sampling of decisions under category 12:
Respondent registered Complainant's mark, which enjoyed wide reputation, and did not use the domain name in any way: WIPO/D2000-0442 (default proceeding - assaabloy.com)
Panel found a desire to sell the rights to the domain name after Respondents stated in an e-mail that they purchased the domain name for their cat, but had no plans for posting the website anytime soon: NAF/FA94416 (bibbero.com)
Respondent had not begun using the domain name after one year since its registration, and although he agreed to transfer the domain name failed to do so which was viewed by the panel as continuous and passive bad-faith use: NAF/FA94891 (cumberlandswan.com).
Respondent registered the domain name under "Domain 4 Sale & Company," made no use of domain name, and did not submit a response: NAF/FA95262 (gettymuseum.com and gettysmuseum.com).
A sampling of decisions under category 13:
Intent to sell inferred from the fact that Respondent made no legitimate use of domain name and attempted to maintain the right to the use of the domain name after notification by NSI of the prior trademark rights and domain name: NAF/FA93666 (faithnet.org).
Intent to sell inferred from the facts that Respondent registered the domain name in the face of Complainant's trademark filing, that Respondent had made no legitimate use of it, that it had no business related to the domain name, that it did not respond to inquiries of Complainant, the registrar, or the forum, and that Respondent appeared to be in the business of selling domain names for profit: NAF/FA94323 (soundscape.com).
Section 3.2.1.2 - Intent to Sell Not Inferred
Subsection 3.2.1.2.1 - Circumstances Under Which an Intent to Sell Was Not Inferred
Intent to sell has not been inferred where:
1. The offer to sell was not accompanied with other suspicious circumstances;
2. Sufficient time had passed since the domain was originally registered and used; or
3. Complainant contacted Respondent plus additional circumstances.
The list above is not intended to be exhaustive
Reporter's Notes:
Under category 1:
Putting domain name up for sale is not always proof of bad-faith registration: NAF/FA93555 (euroconsult.com), NAF/FA93676 (Indianamulch.com and Indymulch.com).
The mere offering to sell the domain name, without more, does not indicate circumstances suggesting that the domain name was registered with the intent to sell it: NAF/FA94826 (lifeplan.com).
The fact that Respondent may have asked more than out-of-pocket costs as a purchase price when Complainant contacted him is not evidence without more that this was his purpose for registering the domain name: NAF/FA95014 (littlefolkart.com).
No intent to sell when offer to sell the domain names was rather understated, occurred more than two years after the domain names were registered, and after Respondent had established a web site. Further, no sale price was mentioned in the communication in which the domain names were offered for sale. There was, therefore, no proof of sale in excess of out-of-pocket costs or of an intent to sell: WIPO/D2000-0034 (worldcup2002.com, worldcup2002.net, worldcup2002.org, worldcup02.org, worldcup10.com, 2002worldcup.org, worldcup02.net, 2002worldcup.net, worldcup2006.org, worldcup2010.com, worldcup2010.org, net, 2006worldcup.org, wc2002.com, wc02.com)
The fact that Respondent refused to transfer the domain name for out-of-pocket costs and mentioned that the offer "was not enough" is not sufficient evidence for a registration pursuant to Policy 4(b)(i): WIPO/D2000-0209 (wlum.com).
Under category 2:
Respondent offered the domain name for sale after it had used it commercially for seven months: WIPO/D2000-0385 (copystar.com)
Respondent offered to sell the domain name years after its registration, showed a legitimate use, which started well before Complainant's first use of the mark in commerce: WIPO/D2000-0698 (dvdnews.com).
Respondents sought to auction their domain name, which was considered a mere change in their own business plans based on changes in the internet start-up financing market: WIPO/D2000-1001 (pi.com).
No bad faith based on Respondent's willingness to sell generic domain name after having developed it for three years since such actions are equivalent to putting up for sale a business which had been built up over time: NAF/FA94659 (eshow.com).
Under category 3:
Respondent made offer to sell domain name for $75,000 after Complainant asked whether Respondent was willing to sell the domain name, which was a variation of a generic term: WIPO/D2000-0635 (tourisma.com)
No intent to sell if Respondent at the request of Complainant for making an offer demanded $1,500 for the domain name, based on the circumstances of the case (Respondent registered domain name for setting up a café): WIPO/D2000-0089 (pacificplace.com)
Complainant initiated and promoted negotiations about sale of domain name, and thus could not be regarded as Respondent's purpose for registration of disputed domain name: WIPO/D2000-0839 (serpadres.net)
No bad faith if sales offer not made until Complainant has contacted Respondent: NAF/FA93682 (cartoys.net).
No bad faith if sale of the site only came up as an option after Complainant raised this issue with Respondent. There was no evidence that Respondent made an effort to sell the domain name to Complainant, a competitor or anyone else before the complaint was submitted. Respondent's counter-offer to Complainant's unsolicited offer to transfer the domain name for compensation was not considered to constitute bad faith: NAF/FA94367 (piper.com).
Complainant offered to buy Respondent’s domain name. Negotiations ensued, but Respondent indicated to be unable to determine an exact sales price, which showed that it had not intent to sell the domain name: DeC/AF-241 (canhost.com).
Section 3.2.1.3 - Out-of-Pocket Costs
Out-of-pocket costs include the costs of obtaining, registering, and maintaining domain name.
Comments:
Out-of-pocket costs may include the cost of website development and hosting depending on the circumstances and the extent of investment in the website. The costs of design are more controversial since such costs would have been incurred regardless of the domain name chosen by Respondent
Illustration 1:
Respondents' legitimate out-of-pocket costs invested in the domain content, hosting - server fees, and development exceed well over $ 10,000. Moreover, Respondents did not register the domains with the purpose of sale, rental, or other transfer. Therefore, Respondents’ periodic offers to sell the domain name to recoup its out-of-pocket costs of $10,500, over the course of 7 years and always conditional on the issue of providing content, is within the acceptable limits of the Policy.
Illustration 2:
Where Respondent's website content is insubstantial (containing pictures of produce and flowers, short text, and a "contact us" message) and where Respondent was not actively trading under the domain name (and therefore had not independently accumulated goodwill), the use of the domain name to date could not justify the very high value of US$520,000 as assessed by Respondent.
Reporter's Notes:
Out-of-pocket costs include the costs of obtaining, registering, and maintaining domain name: WIPO/D2000-0045 (hipercor.com - decision is in Spanish)
The cost of designing the homepage cannot be included in Respondent's out-of-pocket expenses directly related to the domain name, because such costs would have been incurred regardless of the domain name chosen by Respondent: WIPO/D2000-0576 (nimm2.com)
Illustration 1: WIPO/D2001-0784 (adam-12.com and adam-12.org).
Illustration 2: WIPO/D2000-0203 (oilily.com).
Subsection 3.2.1.3.2 - What Constitutes "Excessive" Out-of-Pocket Costs?
Panels consider the issue of "excessive" out-of-pocket costs on a case-by-case basis.
Comments: Most of the time the price requested by Respondent is sufficiently excessive, but sometimes where Respondent asks for reasonable out-of-pocket costs, coupled with a request for additional consideration, a Panel may consider the overall request to be "excessive."
Reporter's Notes:
A sampling of excessive prices (in U.S. dollars): WIPO/D2000-0484 ($350), NAF/FA93459 ($ 500), WIPO/D2000-0072 ($2,000 for two domain names), NAF/FA95093 ($5,000), WIPO/D2000-0026 ($6,000), DeC/AF-211 ($15,000), NAF/FA95235 ($125,000), WIPO/D2000-0482 ($185,000), WIPO/D2000-0545 ($200,000), NAF/FA93555 ($200,000), WIPO/D2000-0452 ($250,000 for one or $490,000 for all domain names), WIPO/D2000-0198 ($1,000,000), WIPO/D2000-0433 ($1,000,000), NAF/FA94312 ($2.5M),
A sampling of excessive prices (in English pounds): WIPO/D2000-0584 (900-1,200 Pounds), WIPO/D2000-0636 (900-1,200 Pounds), WIPO/D2000-0453 (8,450 Pounds), WIPO/D2000-0280 (10,000 Pounds), DeC/AF-316 (10,000 Pounds), WIPO/D2000-0342 (35,000 Pounds).
Other currencies:
Panel considered 9,500 CDN to be in excess of out-of-pocket costs: DeC/AF-263.
Panels considered the following sums in Deutsche Marks to be in excess of out-of-pocket costs: WIPO/D2000-0576 (15,000 Deutsche Mark), WIPO/D2000-0559 (500,000 and 750,000 Deutsche Mark for six domain names).
Panels considered the following sums in Swedish Krona to be in excess of out-of-pocket costs: WIPO/D2000-0169 (100,000 Swedish Krona), WIPO/D2000-0542 (150,000 Swedish Krona).
Panels considered the following sums in Spanish Pesetas to be in excess of out-of-pocket costs: WIPO/D2000-0201 (4,475,000 Spanish Pesetas), WIPO/D2000-0523 (13,000,000 Spanish Pesetas).
Panel considered 6,500 Euro to be in excess of out-of-pocket costs: WIPO/D2000-0307.
Reasonable out-of-pocket costs plus unreasonable consideration:
Respondent only asked for its out-of-pocket costs in cash, but also asked for two other valuable forms of consideration: 1) that Complainant abandon the right to use "original" and 2) that Complainant grant Respondent the ability to potentially block Complainant's sale of a valuable asset and possibly the sale of its business. Collectively, such consideration far exceeds Respondent's out-of-pocket costs: WIPO/D2001-0852 (www.bitegolf.com).
Excessive forms of consideration include:Lifetime golf membership with Complainant (worth $50,000 initiation fee and $285 per month): WIPO/D2000-0322 (lowesislandclub.com, lowesislandclub.org, and ashburnvillage.com).
Free tuition for Respondent's daughter at Complainant's University for the transfer of five domain names: WIPO/D2000-0366 (uwcomboys.com, wyomingcowboys.com, uwyo.com, uwyoming.com, and wyocowboys.com).
One week's stay at the Ritz-Carlton (the Complainant) for two domain names: WIPO/D2000-0611 (ritzcarlton.net and ritzcarlton.org).
Stock of Complainant: NAF/FA94425 (veritasdgc.net and veritasdgc.org).
Language requesting anything other than out-of-pocket costs directly related to the domain name is viewed as suspect and often as a demand for compensation in excess of out-of-pocket-costs.
Reporter's Notes:
Language that indicated and excessive demand: WIPO/D2000-0530 (“an appropriate price” - athlonchip.com), WIPO/D2000-0651 (a “small fee” - hangsengcredit.com), WIPO/D2000-0708 (looking for "substantial offers" - libertysoflondon.com, libertyoflondon.net, and libertysoflondon.net), WIPO/D2000-0855 (looking for a "an amicable solution" - aspesi.com and albertoaspesi.com)
Respondent considered Complainant's offer of $600 not to be "even in the right playing field." The Panel concluded that Respondent intended to sell the domain name for a sum in excess of out-of-pocket costs: NAF/FA95103 (libertyoflondon.com).
Respondent was looking for sale of the domain names under "mutually agreeable terms," which the Panel understood to mean a sum in excess of out-of-pocket costs: NAF/FA95417 (e-ymcageorge.com, usaymca.com, usaymca.net, usaymca.org.
georgeymca.com, and georgeymca.org).
Respondent was willing to accept an reasonable offer, which - in default proceeding - was considered to obtain compensation above out-of-pocket costs: DeC/AF-298 (satelliteikonos.com, spaceimagingsatellite, ikonosspacephoto.com, ikonossatellitephoto.com).
Offer of private auction on Respondent's website to sell domain name is indicative for intent to obtain an amount in excess of out-of-pocket costs: DeC/AF-153 (westfairfoods.com).
Proof | Use | Intent to Sell | Blocking Marks | Disrupting Competitor | Confusion
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Section 3.2.2.1 - Prevention from Reflecting the Mark
Subsection 3.2.2.1.1 - Mark Owner is Prevented Even if He Already Owns a Domain Name Reflecting His Mark
Bad faith is generally inferred where a Respondent registers a domain name incorporating Complainant's mark, even where Complainant already owns a domain reflecting his mark in a different TLD.
Comments: Complainant's ability to obtain domain names in other TLDs should not prohibit a finding of bad faith. Otherwise, paragraph 4(b)(ii) would almost always be inapplicable since it is frequently possible for Complainant to register the same name in another gTLD or ccTLD.
Reporter's Notes:
Complainant's ability to obtain alternate domain names should not make paragraph 4(b)(ii) inapplicable: WIPO/D2000-0054 (crew.com), WIPO/D2000-0923 (focus-do-it-all.com).
Respondent registered in another TLD after Complainant registered in .com:
WIPO/D2000-0062 (Respondent registered potomacmills.net and potomacmills.org domain names after Complainant's potomacmills.com registration, NAF/FA94313 (Respondent registered samsonite.org domain name after Complainant's samsonite.com registration), WIPO/D2000-0389 (Respondent registered generalelectric.net and general-electric.net domain names after Complainant's generalelectric.com registration).
Respondent registered in another TLD after Complainant registered in a TLD other than .com: WIPO/D2000-0018 (Respondent registered .org and .net domain names after Complainant's registration under the ccTLD for Spain (.es)), WIPO/D2000-0533 (Respondent registered oglobo.com domain name after Complainant's ccTLD registration (oglobo.com.br)).
Complainant was prevented from reflecting his mark in a .com domain name corresponding to its activities in a country if Respondent registers domain name consisting of mark and name of country: WIPO/D2000-0438 (ikeakorea.com).
But see:
Where Respondent, who is not a business competitor of Complainant, registered Complainant's mark in the .org gTLD to criticize Complaint's business activities, did not attempt to sell the domain to Complainant, and where Complainant had already registered over 115 permutations of its mark, Complainant was not prevented from reflecting his mark: WIPO/ D2000-0858.
Cross-reference:
Compare: Respondent registered Complainant's trade name and mark (americanhomeproductscorporation.com) after Complainant had registered the acronym of it as a domain name (ahp.com): WIPO/D2000-0454.
See also Section 3.2.4.4, Category 6 on Misspellings.
Subsection 3.2.2.1.2 - Mark Owner is Prevented if He Does Not Own a Domain Name Reflecting His Mark
Where Complainant has not registered a domain name reflecting his mark, Respondent’s registration of a domain name or a series of domain names similar to Complainant’s mark, trade name, or celebrity name, may be viewed as a bad faith attempt to foreclose Complainant from reflecting his mark.
Reporter's Notes:
Panel found that Respondent's registration of ten domain names using combinations of Complainant’s marks was a calculated attempt by Respondent to foreclose Complainant from using its own marks on the Internet: WIPO/D2000-0113 (stanleybostitch.com, stanley-bostitch.com, stanleybostitch.org, stanley-bostitch.net, stanley-bostitch.org, stanleybostitch.net, bostitch.net, bostitch.org, bostitchnails.com, bostitchtools.com).
Complainant was prevented from registering his marks as domain names because Respondent registered domain names reflecting Complainant's marks in iterations by deleting and replacing the spacing between the words in the marks with hyphens: WIPO/D2000-0172 (sanriosurprises.com, sanrio-surprises.com, sanriogiftgate.com, sanrio-gift-gate.com).
Respondent registered celebrity's name as domain name: WIPO/D2000-0210 (juliaroberts.com).
Respondent registered the domain name knowing that it was phonetically identical to and confusingly similar to Complainant's mark, which was a mark in which Complainant had rights and to which Respondent had no right or legitimate interests: NAF/FA93562 (hewlittpackard.com as compared to Hewlett Packard).
Respondent registered Complainant's trade name and mark and misspellings thereof: NAF/FA94301 (morrisonfoerster.com, morrisonandfoerster.com, morrisonforester.com and morrisonandforester.com as compared to Morrison & Foerster).
Respondent prevented Complainant (Volkswagen of America, Inc.) from reflecting its mark ("Drivers Wanted") in a corresponding domain name because Respondent stated on the "driverswanted.com" website that it was "Your Best Source for Volkswagen Information" followed by the Volkswagen logo: NAF/FA94394.
Respondent registered one domain name corresponding to its business name for use as email address and, after it received notice of the dispute, registered a second domain name whose only difference to the first was a hyphen. The Panel held that this second domain name was registered to prevent Complainant from obtaining a domain name reflecting its mark: NAF/FA94920 (arrowhead-capital.com).
Cross-reference:
Compare: Respondent registered Complainant's trade name and mark (americanhomeproductscorporation.com) after Complainant had registered the acronym of it as a domain name (ahp.com): WIPO/D2000-0454.
See also Section 3.2.4.4, Category 6 on Misspellings.
Section 3.2.2.2 - Pattern of Conduct Found
Subsection 3.2.2.2.1 - Pattern of Conduct Based on Registration of a Certain Number of Domain Names
A pattern of conduct may be inferred from the registration of multiple domain names.
Caveat: Some Panels have found that registration of as few as 2 domain names may establish a pattern of conduct; however, depending on the panel and the circumstances, a larger number of domain names may be required. Sometimes the registration of as many as 4 domain names was not enough to establish a pattern of conduct.
Comments: Some Panels have distinguished between a horizontal pattern of conduct, targeting multiple entities, perhaps in multiple industries, and a vertical pattern of conduct, targeting a single entity, but registering multiple domains which reflect either different aspects of the target's business or different alphabetic variations of the target's trademark. Cases finding a horizontal pattern of conduct often involve the registration of a large number of domain names (although 2 registrations may establish a pattern of conduct depending on the circumstances). In cases involving a vertical pattern of conduct, the Registrant may be held to a higher standard of conduct, especially where the Registrant is familiar is familiar with the targeted industry.
Reporter's Notes: Horizontal v. Vertical Pattern of Conduct: DeC/AF-230 (smokymountainknife.net, smokymountainknives.com)
No specific number of domains is required to establish a pattern of conduct:
WIPO/D2000-0633 (sunnydelight.com - however, the panel found 21 domains (some generic and some incorporating trademarks) was sufficient in this dispute).
Registration of 2 domains establishes a pattern of conduct:
WIPO/D2000-0378 (universityofalberta.com and albertau.com),
Registration of 2 domains establishes a pattern of conduct where one domain is at issue and the other is evidence of the pattern of conduct:
WIPO/D2000-0461 (corinthians.com and cruzeiro.com (not at issue but was evidence of Respondent's pattern of conduct)), WIPO/D2000-0923 (focus-do-it-all.com and diy-homebase.com (not at issue but was evidence of Respondent's pattern of conduct)), DeC/AF-207 (universalpictures.net and famousplayer.net (not as issue but was evidence of Respondent’s pattern of conduct).
Registration of 3 domains establishes a pattern of conduct:
WIPO/D2001-0108 (ourismandodge.com, ourismandodge.org, and ourismandodge.net).
One domain was at issue and more than one other domain was cited as evidence of a pattern of conduct:
One domain at issue (aolmoviefone.com) and 4 others (that infringed on registered trademarks) cited (vodafone-airtouch.com, vodafone-airtouch.net, newbritishaerospace.com, newbritishaerospace.net): NAF/FA94265.
Pattern of conduct inferred where 1 domain was at issue (bellevuesquare.com), Complainant cited another domain (redmondtowncenter.com) and provided evidence that it was registered under similar circumstances to the domain at issue, and Complainant cited 2 other domains (studio1design.com and ctstbm.com) without providing evidence concerning the circumstances, but where Respondent did not contest Complainant’s citation of those 2 domains: WIPO/D2000-0056.
But see:
No pattern of conduct found based on the registration of two domain names: WIPO/D2000-0010 (homeinteriors.net and homeinteriorsandgifts.com), WIPO/D2000-0944 (harveynorman.net and harveynorman.org - but the panel found a pattern after taking into account that Respondent registered a third domain name that was subject of another UDRP proceeding).
No pattern of conduct found after registration of three identical or confusingly similar domain names: WIPO/D2000-0021 (ingersoll-rand.net, ingersoll-rand.org, and ingersollrand.org)
No pattern of conduct based on the registration of 4 domain names where 3 domain names (lifemagazine.com, lifemagazine.net, lifemagazine.org - all at issue) were confusingly similar or identical to a registered trademark and 1 other domain (shinola.com) was not at issue: WIPO/D2000-1342.
No pattern of conduct found where Respondent registered four domain names that are the subject of two proceedings. The panel stressed that the evidence submitted did not show a pattern of conduct intended to block Complainant's access to domain names that correspond to its marks: DeC/AF-107.
Subsection 3.2.2.2.2 - Pattern of Conduct Based on a Scheme or Plan to Target
A pattern of conduct may be inferred where Respondent, through its registration(s), has targeted:
1. Complainant;
2. A related line of business or industry; or
3. Unrelated marks.
Reporter's Notes:
Respondent targeted Complainant: WIPO/D2000-0471 (registration of Complainant’s mark under the gTLDs .com, .net and .org, adding a generic term before or after the mark - mobilereuters.com, mobilereuters.net, mobilereuters.org, reutersmobile.com, reutersmobile.net, reutersmobile.org), WIPO/D2000-0713 (Respondent registered four domain names appending a country name to AOL - aolfrance.com, aolgermany.com, aolireland.com and aolspain.com), NAF/FA95247 (Respondent registered six marks belonging to Complainant - firerescuemagazine.com, clinicalpsychiatrynews.com, internalmedicinenews.com, obgynnews.com, pediatricnews.com, and skinandallergynews.com).
Respondent registered Complainant's mark under a ccTLD (libertysoflondon.co.uk) after having received Complainant's objection to the use of its mark in .com and .net domain names: WIPO/D2000-0708 (libertysoflondon.com, libertyoflondon.net, and libertysoflondon.net)
After Complainant terminated distributor agreement with Respondent, the latter maintained the domain-name registration for the respective domain name, and registered two other domain names incorporating business names of Complainant: NAF/FA95072 (scarfade.com, hansonmedical.com, and orcasurgical.com).
Respondent targeted a line of business or industry: WIPO/D2000-0501 (Respondent registered more than 65 names and marks of famous law firms - huntonandwilliams.com and huntonwilliams.com), WIPO/D2000-0581 (Respondent registered domain names of personalities - ritarudner.com), WIPO/D2000-0626 (Respondent mainly registered names of contemporary musicians - fearfactory.net), NAF/FA95037 (Respondent registered marks of pharmaceutical products as domain names - humatep.com and monoclatep.com), NAF/FA95078 (Respondent registered marks belonging to alcoholic beverage industry - absolutcitron.com), NAF/FA95407 (registration of marks owned by insurance companies - statefarm-claimshelp.com)
Respondent targeted unrelated marks:
Registration of more than 1300 domain names many of which were well-known marks or names of celebrities (including texasinstruments.com and domains containing "tomcruise," "gunsnroses," etc.): NAF/FA93564 (hewlettpackard.com)
Respondent admitted a course of similarly registering other names: NAF/FA94184 (kingsofcomedy.com).
Registration of domain names that are highly confusingly similar or identical to well-known marks: WIPO/D2000-0614 (virtualvineyards.com).
Proof | Use | Intent to Sell | Blocking Marks | Disrupting Competitor | Confusion
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TOPIC 3.2.3 – POLICY 4(b)(iii): DISRUPTION OF A COMPETITOR'S BUSINESSRespondent need not be Complainant's direct competitor.
Reporter's Notes: The panel construed the term "business" to cover activities concerning the supply of some goods or services and in respect of which a reputation may be gained. The "business of a competitor" meant the business of the domain name owner. "Competitor" as interpreted by the panel was one who acted in opposition to another while the context must not be limited to a commercial or business competitor: WIPO/D2000-0279 (kwasizabantu.com, kwasizabantu.org, kwasizabantu.net).
A showing that the parties are strictly competing is not required: WIPO/D2000-0076 (indiainfospace.com).
Direct competition is not required: DeC/AF-96 (tourplan.com).
Competition was found where Respondent opened a complaint site under a domain name that was confusingly similar to Complainant’s mark: WIPO/D2000-0869 (estelauder.com and estelauder.net).
Disruption may be inferred where:
1. The website contains links to or resolves to Complainant's competitor(s) or to other websites;
2. Respondent registered Complainant's mark in a different TLD after Complainant’s registration;
3. Respondent registered a variation of Complainant's mark by adding a generic or descriptive word;
4. Respondent registered a slight variation of Complainant's mark by adding a letter or punctuation;
5. Respondent registered a misspelling of Complainant's mark; or
6. The domain name was registered for criticism.
Reporter's Notes:
Under category 1:
Disrupting the business of Complainant found because Respondent initially posted on website linking to two of Complainant's major competitors: WIPO/D2000-0024 (easyjet.net).
Respondent registered the domain name with the primary purpose of diverting potential customers of Complainant to Respondent's website. Panel found that this leads to the disruption of the business of a competitor: WIPO/D2000-0137 (xpediatravel.com).
Respondent used its confusingly similar domain name as a conduit to link users directly to Respondent's site which appeared to have the purpose of siphoning off Complainant's customers and to profit Respondent alone: NAF/FA94232 (playnetworks.com)
Respondent linked domain name to his competing website: NAF/FA94385 (ethnicgrocers.com), CPR003 (kelsonmd.com).
Domain names resolved to Respondent’s competing website: NAF/FA95248 (rosetuxedo.com and tuxedosbyrose.com)
Respondent provided links on an otherwise blank website to third parties’ sites: NAF/FA95396 (computerdoctor.com and computerdoctor.net).
Under category 2:
WIPO/D2000-0177 (Respondent registered .org domain name after Complainant's .com and .net registration, and was furthermore operating competing business on website - bartercard.org), WIPO/D2000-0378 (Respondent registered .com domain name after Complainant's .net and .org registrations; Respondent used domain name as a link to another of his sites - universityofalberta.com, albertau.com), NAF/FA94424 (Respondent registered .net domain name after Complainant's .com registration - radioshack.net), NAF/FA95035 (Respondent registered .net domain name after Complainant's .com registration - aeon.net).
Under Category 3:
Registration of Complainant's mark as domain name adding a generic or descriptive word: WIPO/D2000-0777 (27 variations and misspellings of YAHOO and GEOCITIES with additions including geocitieschat.com, yahootravel.com, yahooe-mail.com, yahooligins.com, etc.), NAF/FA94942 (sandalstravel.com), NAF/FA94963 (quirkmazda.com and quirkvolkswagen.com), NAF/FA95402 (espnsportzone.com),
Under category 4:
Registration of a slight variant of Complainant's domain name and mark: NAF/FA94384 (ethnicgrocery.com and ethnicgroceries.com instead of ethnicgrocer.com), NAF/FA94673 (café-flesh.com instead of caféflesh.com), NAF/FA94870 (keywestmarket.com instead of keywestseafood.com), NAF/FA94994 (cashuntilpayday.com instead of cashtilpayday.com).
Under category 5:
Registration of misspelling of Complainant's domain name (incorporating its mark): WIPO/D2000-0137 (xpediatravel.com instead of expedia.com), WIPO/D2000-0323 (newbergerberman.com instead of neubergerberman.com, the panel observed that Respondent tried to lure search engines to this site when internet users look for Complainant’s famous site), NAF/FA94342 (victoriassecrets.net instead of victoriassecret.com), NAF/FA94370 (sunglasshot.com instead of sunglasshat.com), NAF/FA94384 (querica.com and quesrico.com instead of querico.com), NAF/FA94652 (victoriasecret.net instead of victoriassecret.com), NAF/FA94737 (marriot.com instead of marriott.com), NAF/FA95401 (accweather.com and accueather.com instead of accu weather).
Under category 6:
Respondent registered the domain names (Complainant’s mark (and name)) under the .com, .org and .net TLDs) and directed Internet users who were looking for information about Complainant to his own website where he published highly negative views about Complainant: WIPO/D2000-0279 (kwasizabantu.com, kwasizabantu.org, kwasizabantu.net).
Respondent registered the domain name when he was not engaged in any legitimate business activity. He admitted having registered the domain name out of resentment and in protest of certain actions of Complainant. Respondent did not show any anticipated use of the domain name other than to transfer it to Complainant in exchange for contributions to organizations of Respondent's choice: NAF/FA94265 (aolmoviefone.com).
Respondent posted sports information and commentary about Complainant's sports teams on the disputed websites which became very critical and personal: NAF/FA94306 (lobobasketball.com and lobofootball.com).
Proof | Use | Intent to Sell | Blocking Marks | Disrupting Competitor | Confusion
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While 4(b)(iv) seems to impose an actual use requirement in contrast to 4(a)(iii) or paragraphs 4(b)(i)-(iii), that requirement may be satisfied by preparations to use a website.
Reporter's Notes:
Policy 4(b)(iv) seems to require some active use, as opposed to the passive use (e.g., holding a domain) that satisfies 4(a)(iii) of the Policy: WIPO/D2000-0574 (jupiterscasino.com and jupiters-casino.com).
Policy 4(b)(iv) may apply if the website is still under construction: WIPO/D2000-0545 (bancolombia.com).
Planned use may be sufficient to find the circumstance of Policy 4(b)(iv) satisfied: NAF/FA95319 (guggenheimvirtual.com, virtualguggenheim.com, and virtualguggenheim.net), NAF/FA95464 (statefarmnews.com).
Respondent was not using the domain name except to display that the website was "coming soon." However, if domain name were used, it would create confusion. The panel, declining to wait until Respondent actively uses the domain, found that threatened harm constitutes use: NAF/FA95498 (integritysystems.net).
Policy 4(b)(iv) does not require ongoing use of domain name. In this case, the domain name was being used when Complainant initiated a proceeding. Subsequently, Respondent discontinued use pending resolution of the domain name dispute: DeC/AF-134 (wwwnationalenquirer.com).
The element “for commercial gain” may be satisfied by evidence of actual, as well as potential commercial gain.
Comments:
Panels often cite Complaint's loss in addition to Respondent's gain, finding it significant that while Internet users may become aware that the website they reached was not the website (Complainant's website) they were looking for, they may be satisfied with the content or services of the website they reached and may then abandon efforts to locate Complaint's site, thereby causing Complainant commercial harm. Where consumer confusion is created through the similarity of Complainant's mark and Respondent's domain name, Complainant's loss is often equated with Respondent's gain, especially where Respondent attempted to exploit the confusion.
Reporter's Notes:
Actual gain:
Domain name automatically redirected Internet users to Respondent's website, which provided an online stock indices trading system for commercial gain: WIPO/D2000-0674 (singaporecablevision.com).
Respondent used the website to provide forum through which users could buy and sell tickets to Complainant's races as well as other NASCAR-sanctioned races. In addition, Respondent offered a "Link and Banner Program," through which participants place Respondent's banner on their web sites in exchange for (1) being listed as a "sponsor" of Respondent's website and (2) being paid a commission on all ticket sales that are made through the participant's site: NAF/FA94444 (Daytona-500.com).
Respondent was found to benefit, at the expense of Complainant, from Internet users who landed on Respondent’s web site thinking they made connection with Complainant, because the users had to fend off several "pop-up boxes" with advertisements and promotions for other business and websites: NAF/FA94380 (davematthewsband.com).
Potential Gain:
The commercial gain described in Paragraph 4(b)(iv) does not require that Respondent receive actual gain. In a fierce competition setting, Respondent may gain through any "unfair competing conduct" that, because it harms Complainant, could eventually benefit Respondent: WIPO/D2000-0025 (sgs.net and sgsgroup.net).
Whether or not the gain is ultimately used for charitable purposes is irrelevant. Even where users become aware that the website is not sponsored by Complainant, commercial gain may well accrue to Respondent if the products it offers for sale (directly and indirectly) are purchased by those visiting its website, and commercial harm may well be suffered by Complainant if Internet users abandon their efforts to reach its website: WIPO/D2000-0299 (montyroberts.net).
Commercial gain inferred because Respondent's website offered similar services compared to Complainant's site, had a similar layout, and differed from Complainant's domain name only by a hyphen: DeC/AF-228 (westportonline.com).
Section 3.2.4.3 - What constitutes a "likelihood of confusion"?
The "likelihood of confusion" element may be satisfied by evidence of actual, as well as potential confusion.
Comments: Likelihood of confusion is not diminished by the possibility that the user will discover, upon arriving at Respondent’s website, that the website it reached is not the website it was seeking. The analysis here is similar to commercial gain analysis in that Panels often find it persuasive that, upon reaching Respondent’s site, the user will abandon efforts to locate Complainant's products, even if it eventually realizes that the site it reached is not Complainant's site.
Reporter's Notes:
Actual confusion:
Respondent sold parts manufactured by Complainant on its website, and admitted having received contacts intended for Complainant: NAF/FA93667 (fanuc.com)
While there was little evidence of current, actual confusion (only a small number of visitors to Respondent's website), Respondent's knowledge that its website would create future, actual confusion would be sufficient: DeC/AF-96 (tourplan.com)
Potential confusion:
Actual confusion is not required; rather, the potential for reasonable confusion is sufficient. Where the domain is likely to cause "initial interest confusion" such that users might abandon their efforts to find Complainant's products, it is irrelevant that the users eventually realized that the site they reached is not the site they were seeking: NAF/FA94346 (ultrapurewater.com), NAF/FA94392 (mariahboats.net).
Panel found a likelihood of confusion even though users would soon discover the unlikelihood of a business relationship between Complainant and Respondent because Respondent would have gained website traffic from the establishment of the link via the "chargergirls.net" domain name: WIPO/D2000-0118 (chargergirls.com and chargergirls.net).
Actual confusion is not required. It suffices that confusion could reasonably occur when somebody looking for a Complainant's mark is connected with the Respondent's website, or any other on-line location, no matter which the actual destination may be: WIPO/D2000-0025 (sgs.net and sgsgroup.net).
Respondent's use of Complainant's marks in both the domain names and on the website itself may cause confusion: WIPO/D2000-0257 (wavytv.com; wavy-tv.com; wavytv10.com; and wavy-tv10.com).
Respondent used Complainant's copyright notice on website, included reference to Complainant’s marks, offered the same services as Complainant, and misrepresented itself to customers by claiming it was that Complainant: WIPO/D2000-0269 (boatandrvtader.com and boatrvtrader.com).
Likelihood of confusion found because of the similarity of the website activities and due to the fact that Respondent's website did not contain a disclaimer of an affiliation between Complainant and Respondent: DeC/AF-215 (nitrofuel.com).
But see (no likelihood of confusion):
No confusion where it was just as likely that users were entering a generic or description term and thereby discovered a website with ads and links of various suppliers of goods and services related to this term which satisfied their need for information related to the topic: WIPO/D2000-0010 (homeinteriors.net and homeinteriorsandgifts.com).
Internet users looking for Complainant's website which was a long-standing US corporation were unlikely to be confused when viewing Respondent's sites because they wouldn't assume that the Complainant would sponsor pornographic sites such as tasteless.net or rascals.net or endorse the sale of products and services offered there: WIPO/D2000-0021 (ingersoll-rand.net, ingersoll-rand.org, and ingersollrand.org)
Respondent posted disclaimer on its website according to which Respondent was not an authorized dealer of Complainant. The panel found that the disclaimer avoided a creation of likelihood of affiliation with Complainant: NAF/FA95497 (catparts.com).
The Panel found no likelihood of confusion because Respondent took reasonable steps to avoid potential confusion at the request of Complainant by distinguishing its business from that of Complainant by only offering for sale furniture manufactured by Complainant's predecessors prior to 1995: DeC/AF-107 (kittinger.com and kittingercollector.com).
The following circumstances may be used to satisfy Paragraph 4(b)(iv) of the Policy:
1. The domain was used to link to another website;
2. Respondent, a competitor of the Complainant, registered a domain name containing Complainant’s mark;
3. Respondent registered Complainant’s mark in a different TLD;
4. Respondent registered a domain name similar to Complainant’s mark;
5. Respondent registered a domain name containing Complainant’s mark plus a generic or descriptive term;
6. Respondent registered a misspelling of Complainant’s mark; or
7. Non-use of the domain name, plus additional circumstances.
The list above is not intended to be exhaustive.
Reporter's Notes:
Under category 1: Within this category, 2 scenarios dominate: linking to an adult site (usually a pornographic site) and linking to or advertising for a competitor.
Linking to an adult site: WIPO/D2000-0568 (pornographic site - basshotel.com) (citing WIPO/D2000-0148, another decision involving a link to a pornographic site), NAF/FA95261 (pornographic site - mickjagger.com), DeC/AF-286 (starfrit.com - pornographic site).
Linking to or advertising for a competitor: WIPO/D2000-0521 (Respondent's competing site - hifog.com), NAF/FA95312 (domain name linked to website with ads for Complainant's competitor - perot.net), CPR002 (link to website where Respondent provided services in similar or collateral line of business to that of Complainant - theasianwallstreetjournal.com, and fareasterneconomicreview.com).
Other scenarios: WIPO/D2000-0351 (linking to an auction site - redeglobo.net), NAF/FA95410 (link to game site, from which Respondent presumably received portion of advertising revenue based on number of redirected internet users - espnclassic.com), NAF/FA95105 (link to website where internet user is trapped in seemingly endless succession of banner advertisements - lllbean.com).
Under category 2:
WIPO/D2000-0535 (Since Internet users are likely to mistakenly believe that Complainant does not have a web presence, Respondent's registration of Complainant's mark interferes with Complainant's business (indymacloans.com)).
See also: WIPO/D2000-0851 (lemonchill.com), NAF/FA94864 (southernexposure.net), DeC/AF-316 (dynojet.net).
Under category 3:
WIPO/D2000-0626 (Respondent registered .net domain name after Complainant's .com registration - fearfactory.net), NAF/FA95109 (Respondent registered .com domain name after Complainant's .org registration - highscope.com), DeC/AF-254 (Respondent registered .net domain name after Complainant's registration under the ccTLD .se - gulasidorna.net)
Under category 4:
NAF/FA94994 (a slight variation - cashuntilpayday.com instead of cashtilpayday.com), NAF/FA94945 (the singular - 800postcard.com instead of 800postcards.com), NAF/FA95606 (domain name did not entirely incorporate Complainant's mark - accessaz.com instead of accessarizona.com)
Under category 5:
WIPO/D2000-0777 (variations and misspellings of yahoo and geocities with additions), WIPO/D2000-0878 ("ink", and "inkjet(s)" added to Cannon), WIPO/D2000-0927 ("usa" added to altavista), NAF/FA95033 ("technologies" added to Caleb), NAF/FA95402 ("sportzone" added to ESPN), NAF/FA95407 ("claimshelp" added to State Farm).
Under category 6:
WIPO/D2000-0937 ["The use of misspellings alone is sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by making a likelihood of confusion with the Complainant’s mark." (altabista.com and altaista.com instead of Altavista)],
See also: WIPO/D2000-0753 (britannnica.com instead of Britannica), WIPO/D2000-0811 (blackboad.com instead of Blackboard), NAF/FA95283 (calvinkline.com instead of Calvin Klein), DeC/AF-246 (eddiebower.com instead of Eddie Bauer)
Comment: The term "typosquatting" has been used to describe abuse by misspelling under Section 4(b)(iv) of the Policy. WIPO/D2001-0302 (wallstreetjounral.com,. wallstreetjouranl.com, wallsreetjournal.com, and wallsteetjournal.com instead of Wall Street Journal).
Under category 7:
Respondent had uploaded and was keeping a mere tombstone in active status: WIPO/D2000-0025 ("The deprivation could happen through obstructing or making a connection impossible while using the Internet with an intended destination (if no site exists at all), or through diverting - even nonsensically - eventual customers to a commercial entity totally different from the one intended, and even by using a mere tombstone." (sgs.net and sgsgroup.net)).
Respondent was keeping a site "under construction" in active status, but also included text on the site, presenting itself as an information provider for "your business needs" and as "a one stop business-to-business and business-to-consumer e-commerce," which caused or increased a likelihood of confusion with the competing field of business of the Complainant: WIPO/D2000-0076 (indiainfospace.com)
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