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Asserting (Insisting on) Good Faith Even As the Factual Record Contradicts It

A respondent violates paragraph 4(b)(i) of the Policy if it is found to have registered the domain name “primarily for the purpose” of extorting payment from the trademark holder. If the registration is primarily for another purpose, to benefit in another way at the complainant’s expense, then the violation must be matched with a different theory. Not surprisingly in these cases respondents insist that they acted in good faith, in fact have a legitimate interest in the domain name, and resist any suggestion of abusive registration. But, they are defeated by their contradictory stances and inability to controvert or counterbalance unfavorable evidence.

This inability to reconcile contradictions with concrete evidence can be clearly seen in two recent cases, Broan-Nutone, LLC v. Ready Set Sales, D2010-0920 (WIPO July 27, 2010) and BBY Solutions, Inc. v. Thena Botanicals, FA1007001333656 (Nat. Arb. Forum August 8, 2010). In both, Respondents attempted to camouflage their intentions by alleging good faith registrations without recognizing that positive and negative inferences are most productively drawn from acts rather than assertions. It is inconsistent for a respondent to argue good faith while targeting the trademark and demanding payment.

In Broan-Nutone (<broanreplacementparts.com> and <nutonereplacementparts.com>) the Respondent alleged that “it registered the Domain Names solely for the purpose of truthfully identifying the fact that it sells products identified by the trademarks.” However, it not only incorporated the trademark in the domain names it also “copied images, schematics and other information at [allegedly] the direct request and with the explicit permission and knowledge” of one of the Complainant’s employees, proof of which was not forthcoming. And, by the way, it refused to transfer the domain names “unless Complainant granted a license ‘for rights to use certain videos belonging to … Broan-Nutone’.” The Respondent failed to reconcile means and ends. As the Complainant pointed out resellers (which the Respondent was claiming to be) have a lawful right to use a trademark “provided that such use falls within the parameters of the nominative fair use doctrine; and provided that such use is not likely to mislead or confuse consumers regarding the relationship between your client and Broan-NuTone.” However, the proof did not support a claim for nominative fair use.

In BBY Solutions (<geeksquadgirl.com>) Respondent did not deny that it had knowledge of the Complainant’s trademark, GEEK SQUAD, but alleged that it “never solicited Complainant at any time.” However, in response to Complainant’s demand for transfer of the URL “Respondent asked to be compensated … [and demanded] an amount based on expenses related to the cost of building, maintaining, and optimizing the website for the time it has been on the Web.” The Panel’s comment: “Respondent does not dispute the factual core of this case – that she knew of Complainant’s mark and chose to use it anyway as the core element of her virtually identical domain name for related services, and that when confronted about her actions, asked for the astonishing amount of $170,000.” Here, too, the Respondent took contradictory positions, but only the demand for payment was concrete.

In both cases, Respondents gave themselves away by demanding “valuable consideration in excess of [his or her] documented out-of-pocket costs directly related to the domain name.” In BBY the Complainant noted and the Panel archly agreed that Respondent “provides no evidence supporting [her] argument that the price [demanded] is consistent with the expenses incurred in connection with the disputed domain name.” In Broane-Nutone the Respondent demanded a different kind of consideration that is equally extortionate for its being a demand.

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

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