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Admissions Against Interest: Documentary Evidence Drawn from Complainant’s Website

In the electronic age as compared to the paper it is harder to scrub or obfuscate the past because the past is continually present in some accessible form, whereas papers may be lost or lie undiscovered. Parties may deny facts, but be unexpectedly confronted by electronically preserved proof contradicting their present contentions. The point is illustrated in India Infoline Ltd. v. Myles Hare, D2010-0542 (WIPO June 16, 2010). (I mentioned this case on another point in last Friday’s Note).

There is no disagreement in India Infoline that the disputed domain name is confusingly similar to the Complainant’s trademark or that the Respondent is a member of that much criticized fraternity, a domainer who “registers domain names for speculative purposes and associates such domain names with a pay-per-click revenue system.” The Complainant’s colorful but unavailing epithet for the Respondent’s line of business is that it is a “career cybersquatter,” believing apparently that domaining and cybersquatting are synonyms. There is also no dispute that for a short period the website included links to the Complainant’s competitors and for this reason was being used in bad faith. Prompt removal of offending links after notice is forgivable. Charter Communications, Inc. v. CK Ventures Inc./Charterbusiness.com, D2010-0228 (WIPO June 25, 2010).

The controlling issue in Infoline, however, turned on registration. The disputed domain name was originally registered in 2003, but not acquired by the Respondent until 2007 upon the expiration of a prior registration unrelated to the Complainant. The Complainant submitted no evidence that it used its trademark prior to 2007. The Respondent offered the following evidence in support of its registration in good faith: an email from an officer of the Complainant in 2007; a screen capture of a television advertisement published on the Complainant’s website; and information on the Complainant’s website.

Each of the pieces of evidence was a proverbial nail in the coffin. The email was a request to purchase the disputed domain name. “Our project is on innovations in Freelancing landscape for which we wanted the domain www.iifl.com.” No mention is made in the email about abusive registration of the domain name. The screen capture of the television advertisement which began running only in April 2010 stated that “India Infoline group’s brand identity is now [the IIFL logo].” The announcement on the Complainant’s website dated March 2010 was to the effect that henceforward “we have shortened our name to IIFL.” These facts, however, do not support the conclusion

that, at the time the disputed domain name was acquired by Respondent, Complainant was using the designation IIFL as a trademark or servicemark. Rather, the record indicates that Complainant only recently re-branded itself as IIFL and invested significant advertising expenditures in that rebranding effort in 2009 and 2010.

The aggregate of evidence accessible to the world is that the Respondent’s registration of the domain name preceded the Complainant’s registration and that “[w]ithout evidence of bad faith, registering domain names is not an illegitimate activity under the Policy.” On the other hand, Respondent was “aware that the disputed domain name was linked to websites providing financial services.” Since the Respondent “has a continuing duty to ensure that the domain name is not used in violation of third party trademark rights” its failure to “abide by his continuing duty … constitutes bad faith.”

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

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