Use in Bad Faith Alone Is Insufficient to Prove Cybersqatting

I have pointed out in earlier Notes that the Uniform Domain Name Resolution Policy (UDRP) and the Anticybersquatting Protection Act (ACPA) are constructed on different models for proof of cybersquatting. The UDRP requires proof of bad faith in the conjunctive; while the standard demanded under the ACPA is either registration or use in bad faith. There are federal cases in which complainant trademark owner has subsequently prevailed on use in bad faith even where defendant registered the domain name in good faith. Under UDRP use in bad faith may support (inferentially) registration in bad faith, but only if the facts align for proof of targeting, but not otherwise. Where complainant trademark owner admits it authorized respondent to register the disputed domain name the dispute belongs in a court of law because it negates bad faith registration. This last factual situation is illustrated in Artisan & Artist Co., Ltd. v. The Photo Village, Inc., D2012-2206 (WIPO December 20, 2012).

The Panel noted in Artisan & Artist that Complainant makes no complaint of the Respondent’s original registration of the Domain Name… [but] complains solely of the Respondent’s use of the Domain Name following termination of the distributorship agreement in August 2008.” The situation that ripened into dispute clearly had its genesis in a failure to anticipate the ending of the business relationship, but the record was short on facts. The Panel complained

One would have expected there to have been some correspondence between the parties over the Respondent’s registration and use of the Domain Name at that time, but none has been produced. Moreover, in August 2005, some 17 months after registration of the Domain Name, the Respondent was appointed United States distributor of the Complainant’s products. The distributorship agreement makes no mention of the Domain Name.

A party’s failure to present evidence (or call a witness with knowledge of the facts) supports the conclusion that the proof (even if it existed) would not assist it. Complainant’s claim in Artisan & Artist would be stronger in a federal action (albeit, significantly more expensive to prosecute under the ACPA). Complainant is a Japanese company with a U.S. trademark; respondent is located in New York. Complainant is not precluded from commencing an ACPA action. The case for trademark infringement and cybersquatting under the ACPA is suggested in the Panel’s further observation that “Whether or not the Respondent’s continued use of the Domain Name constitutes use in bad faith, the Panel does not need to decide, although the references on the Respondent’s website to it being ‘the official English web brochure for Artisan & Artist and its US distributor and dealers’ are plainly inappropriate if they are references to the US distributorship (now terminated) of the Complainant’s brand.” “Plainly inappropriate” use of a trademark (a brand name) is fair game for trademark infringement.

The Panel in Artisan & Artist also noted gaps in the story – a “4-year delay in launching this Complaint”could be an impediment under trademark law, but ultimately the court would have to focus on how the defendant is actually (currently) using the domain name. “Artisan and Artist” (distinctive though it may be by reason of trademark registration) sits more on the generic/descriptive end of the classification scale. Nevertheless, registrant’s use is “plainly inappropriate.”  Under the UDRP model this is not good enough to order the domain name transferred to Complainant.

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