Last updated: August 2003
DIVISION 4: Rights and Legitimate Interests
(Harvard Law School '03) and Megan Kirk
This work is licensed under a Creative Commons License.
CHAPTER 4.1 - RIGHTS AND LEGITIMATE INTERESTS UNDER PARAGRAPH 4(a)(ii) 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 (…)
(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 126.96.36.199 - 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.
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.
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 188.8.131.52 - 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.
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 184.108.40.206 - 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.
WIPO/D2000-0011 (ronson.com); WIPO/D2000-0087 (toeic.net).
TOPIC 4.1.2 - RESPONDENT'S BURDEN OF PROOF
Section 220.127.116.11 – 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.
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.
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).
See Part 4.2, below, which describes how a Respondent can demonstrate rights to and legitimate interests in a domain name.
Section 18.104.22.168 – 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).
In cases of default, Panels occasionally visit the domain in dispute to ascertain whether Respondent has any rights or legitimate interest in the mark.
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).
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 22.214.171.124 – 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.
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 126.96.36.199 – 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.
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 188.8.131.52 – 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.
“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).
.CHAPTER 4.2 – RIGHTS AND LEGITIMATE INTERESTS UNDER PARAGRAPH 4(C) of the POLICY
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 184.108.40.206 - Establishing Use or Preparations to Use the Domain NameSubsection 220.127.116.11.1 – 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.
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 18.104.22.168.2 – 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.
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.
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 22.214.171.124.3 – 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.
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 126.96.36.199 – Establishing Bona Fide Offering of Goods or Services
Subsection 188.8.131.52.1 – 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.
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 184.108.40.206.2 – 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.
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 220.127.116.11 – 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.
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 18.104.22.168 – 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.
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 22.214.171.124 – 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.
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 126.96.36.199 - Establishing Legitimate Noncommercial or Fair Use
Subsection 188.8.131.52.1 - 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.
“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 184.108.40.206.2 - 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.
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.
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).
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).
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 220.127.116.11.3 - 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 18.104.22.168.4 - 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.
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).
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).
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 22.214.171.124.5 - 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.
“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 126.96.36.199 - Other Considerations Relevant to Finding Legitimate Noncommercial or Fair Use
Subsection 188.8.131.52.1 - 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.
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.
Legitimate noncommercial use must have been commenced before complaint was filed: WIPO/D2000-0668 (salomonbrothers.com).
Subsection 184.108.40.206.2 - Intended Use Considered
Intentions and preparations to make legitimate noncommercial or fair use of a domain name will be considered.
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).
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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