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 (…)
(ii)
you have no rights or legitimate interests in respect of the domain
name. (…)
In
the administrative proceeding, the Complainant must prove that each of
these three elements is present.
UDRP
Paragraph 4(a)(ii)
TOPIC 4.1.1 - COMPLAINANT'S INITIAL BURDEN OF PROOF
Section 4.1.1.1 - What Must a Complainant Prove
Under Paragraph 4(a)(ii)?
Complainant
must make at least a prima facie showing that Respondent has no rights
or legitimate interests in the mark; however, the burden of proof is
light.
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.
However
many Panels have concluded that since it is difficult to prove a
negative (i.e., that Respondent lacks any rights or legitimate
interests in the mark), especially where the rights or interests at
issue ordinarily would be peculiarly within the knowledge of the
Respondent, and since Paragraph
4(c) describes how a Respondent can demonstrate rights and
legitimate interests, a Complainant's initial burden on this element is
light.
Reporter's
Notes:
Complainant
bears burden of proof to show the three elements required under Policy
4(a): WIPO/D2001-1020
(pokemonplanet.net).
Complainant’s
burden is light: WIPO/DTV2002-0005
(deagostini.tv), WIPO/D2000-0648
(pivotalsoftware.com), WIPO/D2002-0503
(ArroyoCraftsman.com).
Section 4.1.1.2 - What Kind of Showing by a
Complainant is Not Sufficient?
A
Complainant will not satisfy Paragraph
4(a)(ii) merely by alleging that the Respondent has no rights or
legitimate interests in the domain name. Complainant’s rights in
an identical or confusingly similar mark do not disprove the existence
of any rights or legitimate interests on the part of the Respondent.
Reporter's
Notes:
Mere allegations
that Respondent has no rights or legitimate interests in the mark are
not sufficient: DeC/AF-156
(arcturus.com).
Complainant’s
allegation that Respondent had not been authorized to use its mark was
not considered sufficient: DEC/AF-238
(newportnews.com).
Having rights in
a mark by itself does not preclude a third party from establishing
rights in it at the same time and does, therefore, not show that
Respondent has no rights or legitimate interests in the domain name: DEC/AF-160
(exclaim.com).
Complainant does
not show the lack of rights or legitimate interests based upon the
inactivity of the website or the mere knowledge of Complainant’s mark: DEC/AF-163
(canadiansuperstore.com).
Section 4.1.1.3 - Is Complainant Required to do
a Trademark Search?
While a
Complainant is not required to do a trademark search, a trademark
search will help Complainant meet its initial burden of proof.
Reporter's
Notes:
WIPO/D2000-0011
(ronson.com); WIPO/D2000-0087
(toeic.net).
TOPIC
4.1.2 - RESPONDENT'S BURDEN OF PROOF
Section 4.1.2.1 – Burden Shifting After Complaint
Makes a Prima Facie Showing
Once
Complainant makes out a prima facie showing on 4(a)(ii), the burden
shifts to the Respondent to rebut the showing by providing evidence
that it has rights to or legitimate interests in the domain name.
Comments:
The concept of
burden shifting is derived from Paragraph
4(c) of the Policy, entitled “How to Demonstrate Your Rights to and
Legitimate Interests in the Domain Name in Responding to a Complaint,”
which discusses the kind of evidence a Respondent should provide to
show that it has rights to or legitimate interests in the domain name.
There is a
debate concerning which burden is shifting. Some decisions state
that the burden of proof shifts while others maintain that it is not
the burden of proof but rather the burden of production that shifts
since the Policy states that it is the Complainant that must prove that
the elements in 4(a) are present. Regardless of the outcome of
the debate, it is clear that the Respondent must address Paragraph
4(c) of the Policy once Complainant has made a prima facie showing
on Paragraph
4(a)(ii) of the Policy.
Reporter's
Notes:
Burden of proof
shifts: WIPO/D2000-1106
(swiregroup.com); WIPO/D2000-1467
(intocast.com); WIPO/D2001-0809
(kværner.net); WIPO/DTV2002-0005
(deagostini.tv).
Burden of
production shifts: WIPO/D2000-0270
(htmlease.com); followed by Inter- WIPO/D2000-0252
(inter-continental.com and intercontinental.com). See also
WIPO/DTV2001-0013
(bellsouth.tv); WIPO/D2002-0503
(ArroyoCraftsman.com).
Comments:
See Part 4.2,
below, which describes how a Respondent can demonstrate rights to and
legitimate interests in a domain name.
Section 4.1.2.2 – Effect of Respondent’s Default
After
Complainant has met its initial burden of proof as to Respondent’s lack
of rights or legitimate interests in the mark, if Respondent defaults
or fails to present any evidence under paragraph 4(c) or other evidence
that it has rights or legitimate interests in the mark, Complainant
will be deemed to have satisfied paragraph 4(a)(ii).
Comments:
In
cases of default, Panels occasionally visit the domain in dispute to
ascertain whether Respondent has any rights or legitimate interest in
the mark.
Reporter's
Notes:
Effect of
default: WIPO/D2002-0521
(volvovehicles.com); WIPO/D2002-0169
(vegasicilia.info); WIPO/D2001-1429
(duvaluk.com).
WIPO/DRO2002-0001
(billa.ro); WIPO/D2002-0252
(grundfoss.info).
But, if
Complainant has not met its initial burden of proof because Complainant
merely alleges that Respondent must have known mark, lack of rights or
interests cannot be inferred from Respondent’s default since
Complainant bears the burden of pleading and of persuasion WIPO/D2000-0419
(armaniexchange.net).
Cross-Reference:
For a general
description of the default rules, see Section
1.7.10 on defaults.
TOPIC
4.1.3 – Methods of Proving or Denying Rights and Legitimate Interests
Apart from Paragraph 4(c)
Occasionally,
Panels will conclude that Respondent has (or does not have) rights or
legitimate interests without making reference to paragraph 4(c) of the
Policy (“How to Demonstrate Your Rights to and Legitimate Interests in
the Domain Name in Responding to a Complaint”). Since 4(c)
clearly states that the circumstances it lists as evidence of rights
and legitimate interests are not exhaustive, this Part will outline
other circumstances apart from those in 4(c) which Panels have found to
relevant to its analysis under 4(a)(ii).
Section 4.1.3.1 – Registration of a Generic or
Descriptive Term
Panels
have found rights or legitimate interests in a domain name where the
domain name was a generic or descriptive term.
Reporter's
Notes:
Generic: see,
e.g., WIPO/D2000-0161
(zero.com).
Descriptive:
see, e.g., NAF/FA93682
(cartoys.com).
Panels have been
less willing to find rights and legitimate interest in cases of speculative
registration of generic domain names: WIPO/D2000-0186
(libro.com).
Section 4.1.3.2 – Mere Registration or Nonuse of a
Domain Name
Mere
registration of a domain name is not sufficient to confer rights or
legitimate interests; moreover, nonuse of a domain for a sufficiently
long period of time may be considered evidence of a lack of right or
legitimate interests.
Reporter's
Notes:
See, e.g.: WIPO/D2000-0118
(chargergirls.com and chargergirls.net), WIPO/D2000-0387
(taebotv.com and tae-botv.com).
Nonuse of domain
name over certain period evidences lack of rights or legitimate
interests in it: WIPO/D2000-0194 (recordati.com - domain name not
used for 18 months), NAF/FA94798
(muggles.org - pointing out that nonuse over a period of 18 months is
not per se evidence of lack of rights or legitimate interests, but
strong and persuasive evidence for such), NAF/FA95547
(ibills.com - nonuse for 28 months shows that Respondent does not have
bona-fide intent to use the domain name).
Section 4.1.3.3 – Overlap with 4(a)(i) and 4(a)(iii)
Panels have
found that Respondent cannot claim to have rights or legitimate
interests in a domain name where Respondent has notice that its domain
is confusingly similar to Complainant’s mark or where Respondent
registered or used the domain name in bad faith.
Reporter's
Notes:
“One who has
constructive knowledge of the trademark, and who contacts the trademark
owner and advises the owner that he has acquired a confusingly similar
domain name which he intends to use in competition with the trademark
owner, has no rights or legitimate interests in the domain name”: WIPO/D2000/0090
(ink-source.com).
Bad faith
registration and use of domain names does not establish rights or
legitimate interests: WIPO/D2000-0387
(taebotv.com and tae-botv.com).
c.
How to Demonstrate Your Rights to and Legitimate Interests in the
Domain Name in Responding to a Complaint. When you receive a complaint,
you should refer to Paragraph 5
of the Rules of Procedure in determining how your response should be
prepared. Any of the following circumstances, in particular but without
limitation, if found by the Panel to be proved based on its evaluation
of all evidence presented, shall demonstrate your rights or legitimate
interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any
notice to you of the dispute, your use of, or demonstrable preparations
to use, the domain name or a name corresponding to the domain name in
connection with a bona fide offering of goods or services; or
(ii) you (as an
individual, business, or other organization) have been commonly known
by the domain name, even if you have acquired no trademark or service
mark rights; or
(iii) you are
making a legitimate noncommercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or
to tarnish the trademark or service mark at issue.
UDRP
Paragraph 4(c)
TOPIC 4.2.1 - Use or Preparations to Use
Section 4.2.1.1
- Establishing Use or Preparations to Use the Domain Name
Subsection 4.2.1.1.1 –
Relevant Time for Determining Use in Connection With an Offering of
Goods or Services
Before any
notice of the dispute means before the Respondent has knowledge of the
Complainant’s claims, not just before the UDRP proceeding is initiated.
Reporter's
Notes:
WIPO/D2000-0461
(corinthians.com); WIPO/D2000-0806
(eplan.com and e-plan.com); WIPO/D2000-0895
(sanlam.com and sanlam.net - Complainant’s mailing of a letter claiming
its mark rights as relevant point in time); NAF/FA94895
(sunchronicle.com - Respondent must have made preparations to use or
used the domain name prior to Complainant’s cease and desist letter); NAF/FA95065
(winesdirect.com - before any notice means before Complainant notified
Respondent of its position that use of the domain name infringed on its
mark).
Subsection
4.2.1.1.2 – Use or Preparations to Use Domain Name Established
Use for
business, business plans, market tests, or any other plans for outlays
or commitments of resources made before receiving notice of the dispute
is likely to sufficiently establish use or preparations to use the
domain name.
Comments:
Use for the
purposes of Paragraph
4(c)(i) includes use as identifier of the goods or services or of
the Internet address at which the goods or services may be found.
Reporter's
Notes:
Respondent
submitted persuasive evidence that it used the business names "E Auto
Parts" and "E Auto" since 1992, well before Complainant registered its
domain name, and that it chose this name as an obvious abbreviation of
its former name "European Auto Parts": WIPO/D2000-0121
(eautoinc.com).
See also:
NAF/FA94946
(avengers.com - Respondent provided business plan for future use of the
domain name that was registered five years earlier); NAF/FA94976
(golfsociety.com - Respondent provided business plan for future use of
the domain name, and had obtained funding for a two-year period); DEC/AF-369
(etax.com and etax.net - Respondent had extensive consultations with
its business partners, the incorporation of a company, the engaging of
a designer and the approach and negotiations with third parties
interested in Respondent’s offers); NAF/FA95065
(winesdirect.com - Respondent registered the domain name in 1996
and did not establish a web presence until 2000 when the Complainant
notified it of the dispute. Respondent still maintains a
legitimate interest to use the domain name for a direct sales marketing
plan since plans to being use were deferred for legitimate business
reasons).
Subsection 4.2.1.1.3 – No Use or Preparations to
Use Domain Name Established
The mere
assertion by a Respondent that it had plans for future commercial use
of a domain name is not sufficient. Moreover, if the domain name
is used only to link to another site or to post an “under construction”
sign, “use” of the domain name for purposes of Paragraph
4(c)(i) is not established.
Reporter’s
Notes:
The assertion in
a sworn statement that Respondent intended to use the domain name does
not establish use: WIPO/D2000-0270
(htmlease.com); DEC/AF-96 (tourplan.com - Mere
assertion by Respondent that it had plans for commercial use of a
domain name was not sufficient, but evidence offered of
advertising campaigns, market tests, focus groups, logo designs, or
even of plans for advertising campaigns or plans for market tests or
any other plans for outlays or commitments of resources made before
receiving notice of the dispute would be enough).
No use or
preparations to use shown by a naked allegation that a website was
being developed under the disputed domain name: NAF/FA93669
(youraskedforit.com).
No use if only
an “under construction” sign appears on the website: WIPO/D2000-0669
(searsroebuck.com).
No use found
where Respondent admitted he was not actually using the domain name and
that the name had been “warehoused”: DEC/AF-137
(adserve.com).
No use was found
where domain name was only used to link to another website: NAF/FA95471
(netlearning.com); WIPO/D2000-0631
(sunfest.com and sunfest.net - link to other website and offer to sell
domain name not regarded as use); WIPO/D2000-0186
(libro.com - registration of generic domain name to direct internet
users to another of Respondent’s websites not regarded as use).
No use where
only contents of site was an offer to sell the domain name: WIPO/D2000-0275
(catmachines.com).
Panel declined
to find demonstrable preparations to use or actual use of the domain
name although Respondent registered the domain name, applied for a
corresponding service mark, incorporated company under this name and
developed a website. Panel’s decision was based on the fact that
the site had not yet been used for the purported purpose and merely
offered links to retailers: CPR001
(excessag.com).
Section
4.2.1.2 – Establishing Bona Fide Offering of Goods or Services
Subsection 4.2.1.2.1 –
Bona Fide Offering of Goods or Services Found
A bona fide
offering may be found where the domain name describes goods for which
the Respondent is a reseller or distributor, where the Respondent is a
licensee of Complainant, where the domain name corresponds to a
trademark or service mark that the Respondent uses in parallel with the
Complainant’s use of its mark, or where Complainant acquiesced in the
use of the domain.
Reporter’s
Notes:
Respondent, as
Complainant’s certified consultant and authorized distributor, was
qualified to sell Complainant’s OpenView products and use the “HP
OPENVIEW” name in conjunction with commercial activities.
Respondent maintained a website at “openview.org” to complement his
activities. Complainant’s agents and employees had been aware of
the existence of this website since its inception and cooperated with
Respondent in its development and use. Thus, Complainant appeared
to have acquiesced to Respondent’s registration and use of the domain
name. The site was held to add value to Complainant’s products by
serving as a resource for Complainant’s and Respondent’s mutual
customers. Therefore, the Panel considered Respondent’s use as a
fair use and complementary of Complainant’s central business purpose: NAF/FA94368.
“It is not
apparent to the Panel why a dealer’s registration of a domain name
which is descriptive of a product he or she sells should be viewed as
lacking in legitimacy.” WIPO/D2001-0565
(bakerblanket.com).
To be bona fide,
the reseller must actually offer the trademarked goods, use the site
only for the sale of trademarked goods, accurately disclose the
relationship with the mark holder, and must not try to corner the
market in similar domain names: WIPO/D2001-0903
(okidataparts.com).
Panel found
rights or legitimate interests on behalf of Respondent who was
Complainant’s authorized distributor and offered Complainant’s goods on
that website: NAF/FA94960 (grobet.com); WIPO/D2000-0017
(drawtite.com – emphasizing the mark holder’s knowledge and
acquiescence in the use of the domain name); WIPO/D2000-0187
(variations on Weber Grills – minor sales of products other than
Complainant’s will not preclude a finding of a bona fide
offering). But see: WIPO/D2000-0113
(variations of Stanley Bostich – authorized resellers have no right to
use Complainant’s mark in a domain name).
Respondent could
have established a legitimate interest in the domain if Respondent had
been a licensee of Complainant: WIPO/D2000-0403
(charlesjourdan.com).
Prior to the
dispute, Respondent had been using the domain name in a business area
different from the area in which Complainant was active, and thus was
not directly competing with Complainant: WIPO/D2000-0029
(creditconnection.org and creditconnection.net).
Rights and
interests found where Complainant as well as Respondent have been using
the same trade name in parallel but in different countries (USA/India)
since the mid 1940s: NAF/FA94237
(sahajmarg.org).
Use in
connection with a bona fide offering of goods or services was found
where Respondent’s site provided background information about a
theater, its programs, famous operas and the city where the theater was
located, and where the site offered tickets for sale and hotel
reservations: WIPO/D2001-0566
(arena-verona.com).
Registering
generic domain names then redirecting visitors to a different site
advertising its business for developing, marketing, and selling these
domain names constitutes a bona fide use as long as this use is not
misleading to consumers and does not tarnish the mark: DEC/AF-104
(thyme.com).
While
Complainant apparently did not expressly consent to the use of its
mark, its conduct and inaction were a manifestation of such consent
(Complainant, a hotel chain, supported and monitored the travel
agency’s original site). Moreover, the Panel held that Complainant was
estopped from terminating the implied consent which, if allowed, would
be inequitable because of Respondent’s reasonable reliance, evaluated
in the light of the long-lasting relationship between the parties: NAF/FA94944
(several variations of Sandals).
Subsection
4.2.1.2.2 – No Bona Fide Offering of Goods or Services Found
Use of a
domain name that is identical or confusingly similar to a trademark or
service mark that applies to goods sold by a Respondent is not a bona
fide use if the domain name serves as “bait” to attract customers to
the Respondent’s site, rather than merely as a descriptor of the
Respondent’s products. A Panel’s determination of whether a
domain name is used in connection with a bona fide offering of goods or
services will depend on all the circumstances.
Reporter’s
Notes:
Use in
connection with a bona fide offering of goods or services was not found
where Respondent is a reseller of Complainant’s products but
domain name was used to establish a link to Respondent’s own website
where not only Complainant’s products but also those of Complainant’s
competitors were marketed: WIPO/D2001-0822
(kopperschocolates.com).
“Mere use of the
disputed domain names to attract customers, for commercial gain, to
Respondent’s website by creating consumer confusion with Complainant’s
trademarks would not … establish rights or legitimate interests in the
domain names on the part of Respondent.” WIPO/D2000-0057;
(adobeacrobat.com and acrobatreader.com); NAF/FA97667
(biolean.net and biolean.org).
“Given that
Respondent (a) has never been an authorized sales representative of
Pitney Bowes; (b) has never been licensed to use the PITNEY BOWES mark;
(c) has never received any approval, expressed or implied, to use the
mark in or as part of a domain name; (d) has never received any
approval, expressed or implied, to resell Pitney Bowes equipment on its
website; and (e) is using Complainant’s trademark as a domain name to
bring people to a website that offers goods and services not authorized
by Pitney Bowes and competitive to those of Pitney Bowes, Respondent’s
use of the domain name cannot be legitimate.” WIPO/D2000-1611
(pitneybowe.com).
Respondent used
website commercially and incorporated Complainant’s logo for a link to
Complainant without its consent: WIPO/D2000-0385
(copystar.com).
Respondent
deliberately designed its website to confuse users, suggesting that
they were buying from directly from Complainant: WIPO/D2000-0548
(microsof.com).
No bona fide use
if the domain name is used to divert users to Respondent’s website
through confusion: WIPO/D2000-0937
(altabista.com and atlaista.com – diverting users from the AltaVista
search engine to its own search engine).
Respondent’s use
of its website to attract Internet users to ashleysplayground.com, a
pornographic website, is not a bona fide offering of goods and services
or a legitimate noncommercial use of a domain name: NAF/FA95265
(altavesta.com).
TOPIC 4.2.2 –
COMMONLY KNOWN BY THE DOMAIN NAME
Section 4.2.2.1 –
What Does Commonly Known by a Domain Name Mean?
A Respondent
may be able to establish that it is “commonly known by a domain name”
by showing that it holds rights in an identical or similar mark through
federal registration, state registration, or through common law use, or
if Respondent uses the respective name as a trade name, a corporate
name, a “doing business under” (“DBA”) name, a nickname or another
similar use.
Reporter’s
Notes:
See DEC/AF-126
(mikimoto.com).
Common knowledge
found:
Panel found that
Spectrum Chemicals could continue to use its company name as domain
name (Complainant’s mark was SPECTRUM): NAF/FA94640
(spectrumchemicals.com).
Respondent was
considered to be commonly known because he had been doing business
since 1995 under name used for domain name, and registered domain name
and corporate name in 1996, although Complainant first traded in Canada
under the disputed name in 1983 and obtained a U.S. mark the following
year: WIPO/D2000-0008
(sixnet.com and six.net).
Respondent was
commonly known by the domain name since it had been doing business
since 1988 as Sound Choice, had set up a site under soundchoice.net and
posted an announcement on his site to avoid confusion with Complainant
(despite the fact that Sound Choice was Complainant’s registered mark
and that Complainant’s website was soundchoice.com): NAF/FA93631.
Respondent had
been known for ten years under the domain name which had been the trade
name prior to the domain name registration: WIPO/D2000-0046
(avnet.net).
Respondent had
used the name in offering services years before the dispute: NAF/FA94382
(datastream.net).
Panel suggested
that a nickname of Respondent or other member of Respondent’s family,
or the name of a household pet would qualify as a legitimate interest
in a domain name: WIPO/D1999-0001
(worldwrestlingfederation.com).
Respondent had
been commonly known by the nickname “Shack” his entire life: NAF/FA94807
(shack.com).
Respondent
registered name of a member of his family: WIPO/D2000-0518
(maruti.com).
Panel found that
Respondent John Andrew Lettelleir had rights to and/or a legitimate
interest in the domain name jal.com despite the fact that his initials
the corresponded to a registered trademark of Japan Air Lines: WIPO/D2000-0573.
Section
4.2.2.2 – When Must Respondent Have Been Commonly
Known By the Domain Name?
The person or
entity in whose name the domain name was registered must have been
commonly known by the domain name by third parties before the
domain name was registered or, in some decisions, before the filing of
the complaint.
Reporter’s
Notes:
Before
registering the domain name: WIPO/D2000-0915
(movicom-bellsouth.com, movicombellsouth.net and
movicom-bellsouth.net); WIPO/D2001-1302
(bahaiwomen.com); WIPO/D2001-0978
(isetan.com); WIPO/D2000-1588
(orgatech.com).
Before the
filing of the complaint WIPO/D2002-0337
(flugger.com); WIPO/D2002-0229
(advantan.com).
Section 4.2.2.3 – Is it Sufficient
that Respondent is Locally Known by the Domain Name?
Showing that
the Respondent is locally known by the domain name has been found to be
insufficient.
Reporter’s
Notes:
Being locally
known does not equate being commonly known: NAF/FA92527
(heelquik.com and heelquik.org).
TOPIC 4.2.3 – LEGITIMATE NONCOMMERCIAL OR FAIR USE
Section
4.2.3.1 - Establishing Legitimate Noncommercial or Fair Use
Subsection
4.2.3.1.1 - Defining Legitimate Noncommercial or Fair Use
Respondent must establish that (a) his
use is legitimate noncommercial or fair use of the domain name; (b) his
use is without intent for commercial gain; (c) his use is without
intent to misleadingly divert consumers; and (d) his use is without
intent to tarnish the trademark or service mark at issue.
Reporter’s
Notes:
“It is not
enough under this requirement for the Respondent simply to show there
is fair use of a trademark e.g. in a website but the Respondent must
satisfy the Panel there is either legitimate non-commercial use or
legitimate fair use of the domain name itself; and his use is without
intent for commercial gain; and his use is without intent to
misleadingly divert consumers; and his use is without intent to tarnish
the trademark or service mark at issue.” WIPO/D2000-0279
(kwasizabantu.com, kwasizabantu.org, and kwasizabantu.net). See
also WIPO/D2000-0423
(telstrashop.com).
“Section
4.c(iii) consists of two elements. First, the domain name holder can
establish that its use of the name is not commercial. Second, the
holder can establish that its use is for purposes other than tarnishing
the Complainant's mark or confusing consumers. Though there may well be
cases in which these two elements have independent significance, I find
that for purposes of this proceeding, the essential point of section
(iii) is that some marks similar or identical to others can be used as
domain names without causing confusion. A non-commercial use is one
example of a type of use that under some circumstances might not cause
confusion.” DEC/AF-96 (tourplan.com).
Subsection
4.2.3.1.2 - Role of Parody, Criticism, Commentary, Tarnishment and
Product Identification in Determining Legitimate Noncommercial or Fair
Use
Use of a
website as a parody, to post commentary or criticism, or to identify a
product constitutes a noncommercial or fair use so long as there is no
intent to commercially gain by misleadingly diverting consumers or by
tarnishing a trademark.
Comment:
It appears that
the trend in “initial interest confusion” is such that a Respondent may
not rely on the content of the website (i.e., criticism or parody or
the presence of disclaimers) to cure the initial confusion created by
the domain name itself. Thus, parody is protected more strongly
where the parody is apparent in the domain name itself.
Reporter’s
Notes:
Defining
Parody:
Panel held that
parody could constitute a legitimate fair use and set forth a 2-step
test: First, a parody must convey two
simultaneous yet contradictory messages: that it is the original, but
also that it is not the original but is instead a parody. Thus, the domain
name itself, without reference to the content of the web site, must
convey both of these messages. Second, to constitute parody,
the web site must poke fun at the goods or services associated with
Complainants' marks: use of another's trademark to poke fun at
something unrelated to Complainant's mark is not parody: WIPO/D2001-0900
(abercrombieandfilth.com).
“Whether the
commentary is in good taste, whether it is funny, whether it is
effective, all is beside the point”: WIPO/D2002-0338
(jerryfalwell.com and jerryfallwell.com).
Parody is
protected more strongly where the parody is apparent in the domain name
itself because such a domain name is not identical or confusingly
similar to the mark: NAF/FA114589
(RedCrossMafia.com).
Initial
Interest Confusion:
“While the
content of Respondent’s website may enjoy First Amendment and fair use
protection, those protections do not equate to rights or a legitimate
interest with respect to a domain name which is confusingly similar to
another’s trademark”: NAF/FA114770
(paxtonherald.com).
“Respondent may
have a right to refer to the mark in critical content, the wholesale
appropriation of Complainant's mark in a domain name, without any
distinguishing material, creates confusion with Complainant's business
and is not fair use merely for the purpose of criticism…No criticism is
apparent from the domain name itself; it is not sufficient that the
criticism may be apparent from the content of the site”: WIPO/D2002-0377
(casro.com).
But see:
Initial confusion was not determinative because the site was set up for
the purposes of criticism, the site included a prominent disclaimer and
the link to Complainant's official site, and since a low level of
confusion is “a price worth paying to preserve the free exchange of
ideas via the Internet”: WIPO/D2001-0505
(britanniabuildingsociety.org).
Commentary or
Criticism:
Fair use found
because Respondent used the .net gTLD posted disclaimers on its site
criticizing Bridgestone Firestone. “The Panel sees no reason to
require domain name registrants to utilize circumlocutions like
<trademarksucks.com> to designate a website for criticism or
consumer commentary”: WIPO/D2000-0190
(bridgestone-firestone.net). But see WIPO/D2000-0869
(estelauder.com and estelauder.net – Respondent could have criticized
Estee Lauder without registering confusingly similar domains).
“Fair-use
criticism, even if libelous, does not constitute tarnishment and is not
prohibited by the Policy, the primary concern of which is
cybersquatting”: WIPO/D2001-0505
(britanniabuildingsociety.org).
Panel suggested
that a legitimate use of a domain name containing Complainant’s mark
would be to host a public discussion group regarding Complainant’s
product: WIPO/D2000-0134
(rogaine.net).
Respondent had
rights and legitimate interest in a domain criticizing school where
Respondent (a school graduate) had history of critical publications and
posted disclaimer on site. Brief link-throughs to commercial ads
considered incidental: NAF/FA101314
(pensacolachristiancollege.com).
Tarnishment:
While
acknowledging that some Panels “consider it fair and appropriate to use
a trademark proprietor's mark as the vehicle for collecting and
distributing critical comments about the mark or its proprietor or his
business practices, regardless of the inherent tarnishment of the mark
that results,” or at least where the Respondent’s commercial activities
are de minimum, the majority of the Panel nonetheless found tarnishment
because Respondent used the precise trademark “to disparage that mark,
the mark's product, the mark owner, or his business practice”: WIPO/D2002-0377
(casro.com).
Tarnishment
refers to unseemly conduct as linking unrelated pornographic, violent
or drug-related images or information to an otherwise wholesome mark: WIPO/D2001-0505
(britanniabuildingsociety.org – no tarnishment even where exact
trademark was used)(citing Nicole
Kidman v. John Zuccarini d/b/a Cupcake Party: WIPO/D2000-1415).
“‘Tarnishment’
is intended to be limited to acts done with intent to commercially
gain”: WIPO/D2002-0184
(jerryfalwell.com and jerryfallwell.com)(citing Second
Staff Report on Implementation Documents for the Uniform Dispute
Resolution Policy, submitted for the ICANN Board meeting of October
24, 1999, paragraph 4.5, c. n. 2).
Product
Identification:
Respondent’s use
of the domain name (canoncopymachines.com) to identify the types of
products it services or sells constituted fair use: WIPO/D2000-0819
(usacanon.com, astrocanon.com, and canonastro.com were not
legitimate).
Respondent may
not use more of Complainant’s mark than is reasonably necessary to
identify Complainant’s product: WIPO/D2002-0799
(allenedmondsshoes.com).
Subsection
4.2.3.1.3 - Importance of the gTLD
Depending on
the circumstances of the particular case, use of noncommercial or other
gTLD to engage in commentary, criticism, or parody of Complainant may
be permitted.
Use of a non
commercial suffix like '.org' or '.net' may suffice to differentiate
when criticizing a commercial enterprise, but the use of .org in this
particular case was not sufficient, presumably because the Complainant
was itself a not-for-profit organization: NAF/FA97058
(wildlandsproject.org).
Use of Net gTLD
ok given disclaimers and the fact that the site was devoted to
criticism: WIPO/D2000-0190
(bridgestone-firestone.net). But see WIPO/D2000-0869
(estelauder.com and estelauder.net).
Use of the .com
gTLD unprotected by free speech where the exact trademark was used and
the site featured banner ads: WIPO/D2000-1072
(newyorktimes.com – Panel found that NYIS consciously chose the domain
at issue to mislead Internet users to the NYIS site, at which point
users were confronted with a site and advertising that had nothing to
do with the New York Times. Panel further found that disclaimers
and links to the New York Times’s site did not mitigate the result).
Panel found that
Respondent’s site, which criticized Respondent’s former school was a
fair use, in part because the Respondent selected the .com gTLD rather
than .edu, so as not to create the impression that it was a
school affiliated site: NAF/FA101314
(pensacolachristiancollege.com).
Subsection
4.2.3.1.4 - No Legitimate Noncommercial or Fair Use Found
Intent to
achieve commercial gain or evidence of illegitimacy, including intent
to divert or mislead customers, use of Complainant’s mark or a similar
mark to compete against Complainant, will undermine any claim of a
right or legitimate interest.
Reporter’s
Notes:
No noncommercial
or fair use if advertisements are posted on website: NAF/FA95345
(mediaenforcer.com).
But see:
Where the content of the page consisted of advertisements from
Respondent’s web hosting company, the Panel indicated that this type of
use did not preclude a finding of noncommercial or fair use because it
did not compete in any way with Complainant’s trademark and it did not
benefit the Respondent: DEC/AF-243
(eddiebauercamping.com).
No noncommercial
or fair use where Respondent intended to post, on a “biographical site”
dedicated to Kokichi Mikimoto, the father of the cultured pearl
industry, a link to its business site to increase its sales. Had
the site truly been historical or biographical in nature the Panel
would have found fair use: De/AF-126
(mikimoto.com).
Pornography:
Publication of
pornographic and inappropriate material on website was not considered
to be a legitimate noncommercial or fair use: NAF/FA95293
(jon-don.com).
Domain name was
not being used for a legitimate noncommercial parody where pornographic
content was not tied to particular products or services marketed by
Complainant: WIPO/D2002-0029
(microsoftsite.com).
Diversion/Redirecting:
Use of a site to
redirect users to an adult site was not legitimate noncommercial or
fair use: NAF/FA95265
(altavesta.com).
Providing news
about Complainant did not justify registering domains that would likely
divert consumers who were looking for Complaint), NAF/FA95413
(state-farm-insurance-claims.com and state-farm-insurance-company.com).
No rights or
legitimate interests where domain name is only used to refer to one or
several other websites of Respondent NAF/FA94945
(1800postcard.com - Respondent was Complainant’s competitor), NAF/FA95037
(humatep.com and monoclatep.com - domain name used to redirect Internet
users to Respondent’s business site).
Creating a
Confusing Association:
No rights or
legitimate interests if domain name tends to misrepresent an
association of Respondent (competitor) with Complainant, and to
infringe Complainant’s mark: DEC/AF-233.
Respondent’s
free speech rights do not extend to registering confusingly similar
domain names since Respondent could have selected other domain names: WIPO/D2000-0869
(estelauder.com and estelauder.net).
Use of Mark
or Variation to Compete Against Complainant:
Respondent has
no rights or legitimate interests if he offers goods or services on
website that compete with Complainant: NAF/FA94870
(keywestseafoodmarket.com); NAF/FA94994
(cashuntilpayday.com).
Subsection
4.2.3.1.5 - International Issues / Language Barriers
In
determining fair use, some Panels have noted that not all Internet
users speak English or understand language specific slang terms;
therefore, Panels must just the use in light of whether the majority of
the users of the site would understand the parody or criticism.
Reporter’s
Notes:
“Although
converting ‘c’s into ‘k’s is a way of expressing feelings similar to
those expressed by the word "sucks" in English, this practice is part
of a countercultural Latin jargon and is unlikely to be understood by
most Internet users throughout the world. They would not understand
LAKAIXA as a political parody of LA CAIXA, but as something
phonetically identical, and graphically confusingly similar, with
respect to Complainant’s world-famous trademark LA CAIXA… The criteria
of Paragraph 4 (a) of the Policy should, obviously, be interpreted with
reference to the majority of the Internet users”: WIPO/D2001-0360
(lakaixa.com).
The Panel noted
that English is not the only language of Internet users and that even
some English speakers may be unfamiliar with the meaning of the slang
“sucks;” thus, language barriers may prevent public recognition of
parodical nature of domain name: WIPO/D2001-0007
(accorsucks.com)(in French).
Section
4.2.3.2 - Other Considerations Relevant to Finding Legitimate
Noncommercial or Fair Use
Subsection
4.2.3.2.1 - Relevant Time for Determining Legitimate Noncommercial or
Fair Use
The language
“you are making a legitimate noncommercial or fair use” does not refer
to a particular point in time; rather, Paragraph 4(c)(iii) is satisfied
if, at any time after registration but before the complaint was filed,
the Respondent made legitimate noncommercial or fair use of the
domain name.
Comments:
By the terms of
4(c)(iii), the time when a Respondent would demonstrate that she is
“making a legitimate noncommercial or fair use of the domain name” is
at the time the Panel makes its findings, i.e., the Panel would find
that a Respondent “is making” noncommercial or fair use of the domain
name. However, the significant inquiry is whether the Respondent
has made some legitimate noncommercial or fair use of the domain.
If the use was not commenced until after the complaint is filed, its
legitimacy might appear questionable to the Panel, but if the use is
found to be legitimate, the time at which it commenced is not
important.
Reporter’s
Notes:
Legitimate
noncommercial use must have been commenced before complaint was filed: WIPO/D2000-0668
(salomonbrothers.com).
Subsection
4.2.3.2.2 - Intended Use Considered
Intentions and
preparations to make legitimate noncommercial or fair use of a domain
name will be considered.
Comments:
The omission in
4(c)(iii) of the phrase “or demonstrable preparations to use” that is
included in 4(c)(i) might seem to suggest that 4(c)(iii) is only
intended to apply to situations where there is actual use.
However, the circumstances described in 4(c) are meant to be
illustrative, not exhaustive, of the ways a Respondent might
demonstrate her rights or legitimate interests in a domain name.
It follows that intentions or preparations to make noncommercial or
fair use of a domain name ought to be considered, whether in the
context of 4(c)(iii) or in the general context of demonstrating rights
or legitimate interests for the purposes of 4(a)(ii).
Reporter’s
Notes:
Panel considered
Respondent’s intended use since the domain name was placed on hold
before any content could be posted on the website: DEC/AF-126
(mikimoto.com).
Policy 4(c)(iii)
covers preparations to use and not only use: WIPO/D2000-0149
(girondinsdebordeaux.com); NAF/FA94662
(statefarmsfunds.com).
Panel considered
Respondent’s intended use of the domain name to establish an alumni
site for former employees of the Complainant to communicate, network,
brainstorm and promote their new companies and concluded that it did
not constitute fair use: NAF/FA94292
(avidia.com).
Allegation of
intent to parody at time of registration refuted by failure to do so
within reasonable time frame: DEC/AF-173
(automobileatlanta.com).
But see WIPO/D2000-0341
(quicktime.net - paragraph 4(c)(iii) requires making use of the domain
name); WIPO/D2000-1000
(bridgetjones.com - paragraph 4(c)(iii) is limited to making use of the
domain name, as compared to paragraph 4(c)(i), where preparations to
use are explicitly encompassed).
Please send all inquiries to: Diane Cabell
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