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UDRP Dilemma In Proving Bad-Faith Domain Registrations - Part II

In the second part of this 3-part series article, the issue of UDRP in proving bad-faith domain registrations is examined with respect to the trademark?s characteristics. The first part of this article can be found here.

In assessing whether there is a passive holding of a domain name, panels look carefully into the trademark’s characteristics in question, namely what is the degree of reputation and distinctiveness of the trademark in question.

The trademark’s reputation

The amount of reputation of the trademark at issue seems to be one of the major factual elements taken into consideration by Panels in assessing passive holding of a domain name. In substance, it is difficult to believe that a registrant at the time of registering the disputed domain name would not have been aware that the particular name or word was subject to trademark rights when the said domain name is identical with or confusingly similar to a well known trademark.

In E-TELSTRA.org, the Panel in the fact of the trademark’s notoriety found evidence of the registrant’s bad faith:

“First, the Respondent’s current holding of the domain names, in combination with having no legitimate rights or interests in the domain names and the likelihood of being aware of the TELSTRA reputation and trademark, can be interpreted as bad faith use for the purposes of paragraph 4 (a)(iii)” (WIPO administrative decision of 9 September 2002, Case No. 2002-0638, Telstra Corporation Limited v. Peter Yellowlees).

Similarly, Panels usually infer from the high reputation of the trademark that no use of the domain name at issue by the registrant would be lawful so that potential use would already be regarded as bad faith behaviour.

In AUDI-LAMBORGHINI.com, the Panel found that the passive holding constituted a bad faith use and no licit use of the disputed domain name could be envisaged, as follows:

“The Complainant’s trademark AUDI and the trademark LAMBORGHINI of its subsidiary are internationally well-known marks and the trademark AUDI enjoys a particularly strong reputation in Germany where the Respondent must be assumed to be located [...] it is not possible to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being infringement of Complainant’s well-known mark or an act of unfair competition and infringement of consumer protection legislation”(WIPO administrative panel decision of 15 March 2001, Case No. 2001-0148, Audi AG v. Hans Wolf).

In that case, the Panel deduced from the strong reputation of the trademarks on the one hand that, the domain name holder could not have been otherwise aware of the complainant’s rights at the time of registration and, on the other hand, due to the trademark’s notoriety that it was difficult to imagine any plausible lawful future use by the disputed domain name holder.

A strong degree of distinctiveness likewise reinforces the Panel’s finding on the respondent’s knowledge of the complainant’s trademark rights at the time of the registration of the disputed domain name and the doubtful possibility that the registrant could use it in any licit way.

The degree of distinctiveness of the trademark

In this regard, the fact that the trademark in issue is not a generic word generally strengthens the Panel’s suspicions concerning the knowledge of the domain name registrant at the time of the registration.

In STRALFORS.com, the Panel considered that the disputed domain name registrant was without a doubt aware of the complainant’s trademark rights due to the strong distinctiveness of the relevant trademark as follows:

“It is obvious from the facts in the case, i.e. the prior ownership by Complainant of identical trademark registrations, the identity between the dominating element STRALFORS in the corporate names and the domain name at issue, the fact that the word STRALFORS has a high degree of individuality and distinctiveness and the fact that it is highly improbable that the Respondent has selected the name without first having noticed the Complainant?s numerous trademark registrations and its wide reputation in the word STRALFORS, the non-contested statement in the Complaint and the contents of the Policy Paragraphs 4 (a) (i-iii) and 4 (b) (i) that the domain name has been registered and is being used in bad faith” (WIPO administrative panel decision of 13 April 2000, Case No. 2000-0112, Str?lfors AB v. P D S AB).

In a similar vein, the Panel found that the passive holding was evidence of bad faith use because the respondent chose to include an invented word associated with terms describing the complainant’s activity:

“Finally, it is inconceivable that Respondent chose to include the invented word SOFITEL in the Domain Name by accident. Any doubt in that respect is dispelled by the addition by Respondent of the word “hotel” in the Domain Name, which merely describes the Complainant’s principal services. In fact, it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law” (WIPO administrative panel decision of 29 August 2002, Case No. 2002-0625, ACCOR v. Tigertail Partners).

Conversely due to the weak of distinctiveness of the complainant’s trademarks, the Panel declined to find a passive holding to be evidence of bad faith use of the domain name at issue:

“In this case, the Panel finds that where (1) the trademark and service marks asserted by the complainant are weak and where they are homophones of a generic term, (2) the domain names registered by the respondent are generic or descriptive terms, rather than obvious trademarks or service marks, (3) Respondent is already making use of some of the domain names it registered, (4) Complainant did not allege and Respondent denied that Respondent had ever offered for sale the domain name at issue for to respondent or anyone else, or that Respondent had ever offered for sale any of the domain names it had registered, the Complainant has failed to prove that Respondent’s inaction constitutes bad faith registration and use of the domain names at issue” (WIPO administrative panel decision of 21 August 2000, Case No. 2000-0624,Do The Hustle, LLC v. Tropic Web).

Additionally, the respondent’s attitude could in some circumstances also be regarded as evidence of bad faith use of the domain name at hand. In the final part of this 3-part series, we will examine this issue—the role of the respondent?s attitude in bad faith domain name registrations.

By Philippe Rodhain, Intellectual Property Lawyer

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