Pay-Per-Click Websites and Legitimacy

“Something more than the operation of a landing or PPC page is required to show lack of bona fide use,” Starmail Distributors Inc. v. Xedoc Holding SA aka domain admin, FA0911001296166 (January 27, 2010). The “something more” balances the strength of the trademark with the content of the website. The higher the classification of the trademark the more proof required from the respondent to satisfy its 4(c)(i) defense. If the respondent populates its website with links or advertising consistent with the goods or services offered by the complainant the domain name is inferentially capturing Internet users looking for the complainant; therefore it has no right or legitimate interest in the disputed domain name and likely, although not conclusively, violates paragraph 4(b)(iv) of the Policy. However, if the respondent prevails on the second branch, the Panel looks no further; the complaint is denied. This was recently seen in Sears Brands, LLC v. Domain Asset Holdings, FA0912001298052 (Nat. Arb. Forum January 22, 2010) (<northernterritories.com>) and is also the result in Starmail.

Not unusual in cases that stop at the second branch is discussion of an element generally reserved for the third branch analysis, namely the respondent’s knowledge (or lack thereof) of the complainant or its trademark. Alternatively, Panels skip the second branch and incorporate their findings under the third branch, as in Leyton & Associés (SAS), Thésée (SAS), Leyton Consulting UK and Ireland Limited, Leyton Maroc, Leyton Belgium, Leyton UK Limited v. Drela Mateusz, Elephant Orchestra, D2009-1589 (WIPO January 20, 2010) (“In the light of the Panel’s finding below … it is not necessary for the Panel in this regard either to come to a decision.”)

It is said that knowledge is “an essential part of the bad faith analysis,” Russell Frey d/b/a edHelper v. International Services Company SA c/o Administration Dom, FA0910001288396 (Nat. Arb. Forum December 8, 2009). In Starmail, the Panel performs the “knowledge” analysis in the second branch, making it unnecessary to separately consider bad faith, while the Panel in Leyton Consulting considered the issues of bad faith registration and use separately under paragraph 4(b) of the Policy. Eliding the second and third branches in the 4(c) analysis tends to blur the proof requirements, and even though it may make no difference to the outcome, the requirements should be treated separately.

The unusual situation in Starmail is that <starmail.com> was not available to the Complainant when it commenced its business and had to represent itself on the Internet with another, less desirable domain name. The original registrant abandoned the domain name in 2006 and it was immediately picked up by the current Respondent, a holding company located in Luxembourg. The Complainant has a registered trademark for STARMAIL in the U.S. and Canada; it has no trademark registrations in Europe. The “question for the Panel to decide … is whether Respondent’s prior use [that is use before notice of the dispute] was bona fide.” The answer depends upon the Respondent’s knowledge of an existing trademark when it acquired the domain name. In this case “the record shows that the term ‘starmail’ is widely used as part of domain names and of trade names owned by numerous third parties.” The Complainant offered no proof that it conducted business in Europe and there was evidence that the Respondent could have known or in registering the domain name was targeting the Complainant.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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