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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, world