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2nd Generation Respondent and the Duty to Investigate

Panels have carved out for domainers a duty to investigate that is greater than registrants for one or two domain names. But, tension nevertheless remains among panelists against whom and under what factual circumstances the principle of heightened duty is to be applied. This tension is clearly presented in Vaga-lume Midia Ltda v. Kevo Ouz d/b/a Online Marketing Realty, FA0910001287151 (Nat. Arb. Forum December 7, 2009) for <vagalume.com>. The dissent (in a very substantial decision) sees triable issues of material fact; not a case for “depriving the Respondent of a property right in [what is] essentially summary proceedings.” The timing of the original registration was such that no issue of bad faith could be attached to it. However, the Respondent was a second generation registrant who purchased the domain name “because of its traffic.” The fact that there was traffic is a significant factor.

A number of early cases focused on domainers’ heightened investigation. For example, in Red Nacional De Los Ferrocarriles Espanoles v Ox90, D2001-0981 (WIPO November 21, 2001) the Respondent (an acquirer of lapsed domain names) was, by his own showing a knowledgeable Internet analyst. He purchased <rednacional.com> after it lapsed because, like the Respondent in Vaga-lume Midia, “it had a lot of traffic.” The Panel held that “ intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.” In V&S Vin & Sprit AB v. Ooar Supplies, D2004-0962 (WIPO December 27, 2004) the Panel noted that “ ‘willful blindness’ … is equivalent to intent under most jurisdictions.” Therefore, Respondent’s failure to conduct basic research

is the classical case of “dolus eventualis” or “willful blindness”…. The Respondent registered the Disputed Domain Name in spite of knowing that there was a risk that this could infringe on someone’s trademark. The Panel will certainly not endorse such a conduct.

The view was further refined in mVisible Techs., Inc. v. Navigation Catalyst Systems, Inc., D2007-1141 (WIPO, November 30, 2007) and Grundfos A/S v. Tex. Int’l Prop. Assocs., D2007-1448 (WIPO December 14, 2007). In mVisible the Panel held that “a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights,” adding that “a failure to conduct adequate searching may give rise to an inference of knowledge” [of the complainant’s mark]. The Respondent (original registrant) appropriated the Complainant’s trademark. In Grundfos the Panel held that “those who register domain names, and particularly those who register domain names in large numbers using automated programs and processes, are not allowed to simply turn a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners.”

The record in Vaga-lume indicates that the Complainant was number one on a Google search. Although the Respondent argues that the term is descriptive he “does not submit any evidence that this traffic was due to the alleged ‘common nature’ of the term VAGALUME, or that it was in any way related to the users’ interest in fireflies.  As shown by Complainant with the results of a search for traffic details conducted in Alexa.com on September 17, 2009, 91.4 % of the users of the ‘vagalume.com’ website come from Brazil, a truly substantial figure.” The “most basic inquiry” (Red Nacional) is through Bing or Yahoo! or Google.

The dissent in Vaga-lume believes that “imposing this [heightened] requirement on the Respondent is also requiring him to search in the Portuguese language…. Again, it is difficult to see where this requirement comes from and why it is not imposing an impossible burden on registrant….” The answer is that the “requirement comes from” a recognition that there is a class of respondents who take opportunistic advantage of trademarks. That class includes second generation registrations (ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., D2009-0785 (WIPO August 5, 2009 ) and registrants who acquire inadvertently lapsed domain names with significant page views (Red Nacional; FBomb Clothing c/o Joel Jordan v. Domainly.com, FA0902001245522 (Nat. Arb. Forum March 16, 2009)).

Gerald M. Levine <udrpcommentaries.com>

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