Demonstrable Preparations for Use Before Notice

The 3-member Panel in Cheezburger, Inc. v. WeKnowMemes LLC (c/o Dynadot Privacy), D2012-2452 (WIPO February 19, 2013) considered confusing similarity between KNOW YOUR MEME and <weknowthemes.com> “a close question … [b]ut the overall impression is sufficiently similar, especially for the Domain Name used for a competing website, that the Panel concludes the first Policy element has been satisfied.” While this met the test for standing, it was insufficient in light of Respondent’s rebuttal evidence that before notice it had established a web based service. It is a complainant’s burden to demonstrate that respondent chose the domain name with the intention of taking advantage of the trademark.

Where a domain name is a phrase composed of dictionary words that is “not identical or overwhelmingly similar” to the trademark, only “sufficiently similar” to pass the standing test “it is [not] inconceivable that the Respondent chose the Domain Name for its generic or descriptive value.” In the Panel’s words:

a website with content relevant to its generic or descriptive sense can represent a legitimate interest, so long as there is no persuasive evidence that the Domain Name was actually selected for its trademark rather than generic or descriptive value.

The competition described in Cheezberger is for traffic to the websites which offer selections of memes. The parties are not competitors in the sense ordinarily understood of offering services to clients. Nothing is being sold; content is simply an excuse for attracting traffic. The websites are a form of static entertainment. There can be no monopoly on loading a website with a certain category of content. Indeed, given the nature of the content the competition is no different from expected between competing dictionary publishers. Each party presents its own material, and some of it perchance is similar. The Panel notes that

The Complainant relies heavily on alleged copyright violations to demonstrate that the Respondent sought to exploit the Complainant’s efforts and reputation. A handful of copied images or videos, with accompanying text, among hundreds or thousands that appeared on the Respondent’s website, is not persuasive evidence of an intent to disrupt the Complainant’s business or target the Complainant’s mark, especially given the nature of both the Respondent’s and the Complainant’s “meme” websites.

Whether Complainant’s allegation of bad faith can be persuasive depends on the evidence it marshals to demonstrate its plausibility. In Cheezburger, Respondent submitted a declaration in which he admitted awareness of the Complainant’s website, “but he plausibly claims that he chose the Domain Name for its undeniable generic or descriptive value, and he made relevant use of it from the outset.” It is not enough simply to identify within the content category generic similarities. Although it is

conceivable that such a step [registering an LLC] might have been taken in bad faith, in anticipation of a trademark or domain name dispute, but the Panel is not persuaded that this was the Respondent’s motivation.

Judgment for the Respondent in Cheezberger ultimately rests on paragraph 4(c)(i) of the Policy. There was “evidence in the record of ‘demonstrable preparations’ to establish a company by the same name before notice of the dispute.” Moreover, “before notice” the Respondent“had been operating a successful website under the name it sought for the company for nearly half a year by that time, and the name is relevant for the company’s online activities.”

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