X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.
It has now been more than two years since the Internet Corporation for Assigned Names and Numbers (ICANN) introduced its uniform dispute resolution policy. The policy created a streamlined arbitration proceeding for resolution of domain name disputes on a purely paper record, without any discovery or formal testimony. Under the policy, plaintiffs are required to prove that: • the domain name at issue is identical or confusingly similar to the plaintiff’s trademark • the registrant has no rights or legitimate interest in the domain name • the domain name was registered and is being used in bad faith This piece surveys some of the key issues that have surfaced in the fairly extensive body of policy case law that has developed over the past two years. The confusing similarity prong of the test is perhaps the most straightforward. Generally speaking, attempts by registrants to defend domain names incorporating minor variations on trademarked terms have proved ineffective. Thus, for example, decisions have ignored the deletion of spaces, the substitution of “and” for the ampersand symbol and other similar variations dictated by the limitations of the Internet naming system. See, e.g., PRIMEDIA Magazine Finance, Inc. v. Manzo, No. D2001-1258 (WIPO, Dec. 13, 2001); CBS Broadcasting Inc. v. Worldwide Webs, Inc., No. D2000-0834 (WIPO, Sept. 4, 2000). Likewise, deliberate misspellings of trademarked names have also been deemed confusingly similar under the policy. See, e.g., Medtronic, Inc. v. gotdomains4sale.com, No. D2001-1033 (WIPO, Oct. 29, 2001); Doctor.Ing.h.c F.Porsche AG v. Stonybrook Investments Ltd., No. D2001-1095 (WIPO, Oct. 26, 2001). Moving beyond such obvious similarities, many panels have applied basic principles of trademark law to find domain names incorporating the dominant portion of a trademark confusingly similar to such marks. See, e.g., Daily Racing Form LLC v. na, No. D2001-1032 (WIPO, Nov. 6, 2001) (Daily Racing Form trademark); Dreamworks LLC v. Grantics, No. D2000-1269 (WIPO, Dec. 16, 2000) ( Media West-GSI, Inc. v. Macafee, No. D2000-1032 (WIPO, Oct. 6, 2000) (found identical to common law Baseball Weeklymark derived from registered mark USA Today Baseball Weekly). NO LEGITIMATE INTEREST With respect to the second prong of the policy test, it is perhaps easiest to start with what will not create legitimate rights in a domain name. Not surprisingly, the typical cybersquatter’s all too familiar refrain that he or she was permitted by the registrar in question to register the domain name has been given no weight. Thus, even where the trademark owner has inadvertently permitted ownership of the domain name to lapse, this fact will not somehow create a legitimate interest for an individual who subsequently registers such domain name in accordance with the procedures of the registrar. See, e.g., Donna Karan Studio v. Donn, No. D2001-0587 (WIPO, June 27, 2001). A more tricky situation is presented where a registrant has registered a domain name in its own name with the intent of having the trademark owner ultimately use such name. Absent some specific contractual arrangement permitting registrant’s ownership of the name, the registrant will generally be deemed in such circumstances to be acting as an agent of the trademark owner and to have made the registration on the trademark owner’s behalf. See, e.g., Kinko’s, Inc. v. eToll, Inc., No. FA94447 (Nat’l Arb. Forum, May 27, 2000) (respondent had no rights or legitimate interest in domain name which it registered “for the ultimate use of the Complainant”); Nike Inc. v. Granger & Assoc., No. D2000-0108 (WIPO, May 2, 2000) (developer of “in-depth virtual and on-line marketing concept” that registered domain name in its own name did so “for and on behalf of the Complainant” and had no rights or legitimate interest in domain name); Fishtech, Inc. v. Rossiter, No. FA92976 (Nat’l Arb. Forum, March 10, 2000) (Web site designer hired by complainant who registered domain name in his company’s name did so “acting as an agent of” complainant and had no rights or legitimate interest in domain name). The policy provides that the use of the domain name in connection with the bona fide offer of goods or services is one circumstance that will demonstrate the registrant’s rights or legitimate interest in a domain name. The key question here is what constitutes a “bona fide” offer of goods or services. Where the domain name is being used to create confusion and misleadingly diverting users to the registrant’s site, this will not constitute a bona fide offer of goods or services. See, e.g., Daily Racing Form, LLC v. na, No. D2001-1032 (WIPO, Nov. 6, 2001). Nor will registering domain names in the speculative hope that others will seek to buy or license the domain name create a legitimate interest in such domain name. See, e.g., J. Crew International, Inc. v. crew.com, No. D2000-0054 (WIPO, April 20, 2000). Finally, simply including a hyperlink on a site to redirect users to an unrelated commercial site does not amount to use of the domain name in connection with a bona fide offering of goods or services. See PRIMEDIA Magazine Finance, Inc. v. Manzo, No. D2001-1258 (WIPO, Dec. 13, 2001). BAD FAITH The policy outlines a number of circumstances that constitute bad-faith registration and use. Perhaps the quintessential example of bad faith is offering to sell the domain name for profit. See, e.g., National Hockey League v. Krusz, No. D2001-0234 (WIPO, April 4, 2001) (attempts to sell the domain name to complainant and general public for more than registrant paid for it constitutes bad faith); Palm Pictures, LLC v. Null, No. D2000-1676 (WIPO, Jan. 30, 2001) (respondent’s attempt to sell the domain name on auction Web site for consideration in excess of out-of-pocket costs supports finding of bad faith registration and use); A.P. Moller v. Web Society, No. D2000-0135 (WIPO, April 15, 2000) (finding bad faith where respondent offered “to sell the domain names to the complainant for sums in excess of its out-of-pocket costs related to the names”). That the offer to sell the domain name is made in response to an inquiry from the complainant will not insulate the registrant from liability. See Drew Kaplan Agency, Inc. v. Dak.com, No. FA94328 (Nat’l Arb. Forum, May 16, 2000) (noting that registering the domain name with the intention of selling it at an excess cost and then waiting for mark owner to call to ask if domain name for sale constitutes bad faith); United States Olympic Committee v. MIC, No. D2000-0189 (WIPO, May 4, 2000) (finding bad faith where respondent stated, “You can have this domain name if you come up with reasonable offer, not $1,000″). Moreover, the respondent’s attempt to profit through consideration other than money will equally satisfy the bad faith requirement. See Yageo Corp. v. One World, No. FA95702 (Nat’l Arb. Forum, Nov. 13, 2000) (registration of domain name “in order to create an opportunity to discuss with Complainant an investment proposal” evidence of bad faith); Metallica v. Schneider, No. FA95636 (Nat’l Arb. Forum, Oct. 18, 2000) (policy “was broadly construed as to provide for relief when the infringing domain name holder seeks transfer of the domain name for something valuable other than money”). Other indicia of bad faith may be found from the circumstances surrounding the registration or use of the domain name. For example, where there is no indication of actual or contemplated use of the domain name, such inactivity may be considered evidence of bad faith. See, e.g., American Home Products Corp. v. Haymont Veterinary Clinic, No. D2000-0502 (WIPO, July 31, 2000) (“inactivity or non-use of a domain name amounts to the domain name being used in ‘bad faith’”); SeekAmerica Networks, Inc. v. Masood, No. D2000-0131 (WIPO, April 12, 2000) (finding bad faith where no evidence of active Web site); Telstra Corp. v. Nuclear Marshmallows, No. D2000-0003 (WIPO, Feb. 18, 2000) (bad faith where no evidence of actual or contemplated good faith use of domain name). Moreover, where the registrant provides false contact information, this will also support a finding of bad faith. See, e.g., Women on Waves Found. v. Hoffman, No. D2000-1608 (WIPO, Jan. 29, 2001) (“[providing false registration information], without more, is evidence of bad faith”); Nik Carter v. The Afternoon Fiasco, No. D2000-0658 (WIPO, Oct. 17, 2000) (“Respondent’s false contact information is evidence of use and registration in bad faith”); 3636275 Canada v. eResolution.com, No. D2000-0110 (WIPO, April 10, 2000) (the failure to provide legitimate address and contact information is “unusual and even questionable for someone conducting a legitimate business”). PORNOGRAPHIC SITES One frequently recurring factual scenario is the use of a trademark owner’s domain name owner in connection with pornographic sites. Perhaps reflecting the age old legal wisdom that pornographers make unsympathetic litigants, several panels have found the association with a pornographic Web site to constitute bad faith. See, e.g., Club Mediterranee v. Beaufort Holding Ltd., No. D2000-1564 (WIPO, Feb. 1, 2001) (pornographic content of Web pages illustrative of registrant’s bad faith conduct); American Mensa, Ltd. v. Millennium Energy Niche Studies Associative, No. D2000-1030 (WIPO, Jan. 26, 2001) (Administrative Panel entitled to take into account the linking of subject domain name to a pornographic site in assessing whether respondent’s conduct constitutes bad faith); AltaVista Co. v. Fairbairn, No. D2000-0849 (WIPO, Oct. 13, 2000); (using Web site to direct users to pornographic sites evidence of bad faith); CCA Industries, Inc. v. Dailey, No. D2000-0148 (WIPO, April 26, 2000) (association with pornographic Web site can in and of itself constitute evidence of bad faith). A more appealing defense is presented where the registrant claims to be using the domain name in connection with some legitimate noncommercial activity. While the policy recognizes such a fair use type defense, panels have frequently viewed these claims with suspicion. See Fielding v. Corbet, No. D2000-1000 (WIPO Sept. 25, 2000) (noting that circumstances where legitimate noncommercial or fair use can successfully be claimed are limited). A simple assertion of some innocent intended use will likely not be sufficient without some supporting concrete proof. See, e.g., Hero Honda Motors Ltd. v. Rao Tella, No. D2000-0365 (WIPO, July 16, 2000) (respondent’s claimed plans to establish HONDA fan site, without more, did not establish legitimate use). Moreover, where the registrant offers shifting justifications for the selection of the domain name, this will support finding the explanation to be a pretext. See J. Crew International, Inc. v. crew.com, No. D2000-0054 (WIPO, April 20, 2000). When all else fails, a standard indication of bad faith may be that the registrant has used a domain name to create a likelihood of confusion with the complainant’s trademarks. See, e.g., Daily Racing Form LLC v. na, No. D2001-1032 (WIPO, Nov. 6, 2001) (Daily Racing Form trademark); BrassRing, Inc. v. JCI Tech., Inc., No. FAO105000097154 (NAF, June 8, 2001) (use of domain name to lure Internet users to respondent’s Web site by creating likelihood of confusion with Complainant’s family of marks is evidence of bad faith); Fairchild Publications Inc. v. Yomtobian, No. D20000-1003 (WIPO, Feb. 14, 20001) (domain name childrenbusiness.com confusingly similar to complainant’s Children’s Business trade publication); Living Media, Ltd. v. India Services, No. D2000-0973 (WIPO, Dec. 8, 2000) (domain name confusingly similar to complainant’s India Todaymagazine). As the sampling of situations addressed above reflects, bad faith can manifest itself in a variety of ways. While this piece has highlighted the usual suspects, there are undoubtedly countless additional circumstances that have arisen and will continue to arise. To date, the policy arbitration has proved flexible enough to adapt to the particular factual setting and offer meaningful redress in a timely and relatively inexpensive manner. While it will not be ideal for all cases, the policy proceeding is without question an important weapon in the trademark owner’s online enforcement arsenal. Richard S. Mandel is a partner with Cowan, Leibowitz & Latman, P.C. ( www.cll.com�) in New York.

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]

 
 

ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.