Yesterday’s Note discussed a Respondent’s attempt to explain how a string of syllables forming a non-word – for all appearances a typographic error – could have intrinsic meaning to Internet users searching for a website of that name. Although there is a history of invented words as trademarks – Xerox®, Exxon®, Kodak®, Viagra® – “State Far” is not such a one. Complainants are equally as prone to mis-claiming what they have as respondents. Claiming to have a trademark right without proof of its existence is comparable to a respondent claiming a right or legitimate interest in a domain name that all but mimics the complainant’s trademark. Proving an unregistered trademark requires substantive evidence. Alleging a right is not an actuality of having a trademark.
The latest entry of a Complainant who confuses what is with what is not is reported in Bin Shabib & Associates (BSA) LLP v. Hebei IT Shanghai ltd c/o Domain Administrator, FA0910001287164 (Nat. Arb. Forum November 19, 2009). The record indicates that the Complainant has a pending trademark application in the United Arab Emirates for the three-letter combination BSA. Plan B for unregistered trademarks – which includes those pending – must be to offer sufficient evidence that the claimed term is associated in the minds of the public with the goods or services the complainant offers and that the term has traveled beyond the borders of the respondent’s residence.
In Bin Shabib the claimed domain name <bsa.com> is a valuable asset. Panel rejected Complainant’s argument that “it only need prove ‘registration’ and then ‘use in bad faith’ as opposed to Respondent’s assertions that it must prove ‘bad faith registration’ and ‘bad faith use’.” The Respondent noted that it
acquired <bsa.com> at a publicly announced domain name auction. Respondent paid a substantial amount for the domain name but did not acquire it because of any perceived trademark value. It was acquired because it is a generic and short three-letter domain which is of unlimited use and thus has significant inherent value. Three-letter .com domain names have not been available for new registration for over 10 years and as such, they are exceedingly rare and valuable. On the open market, these names can be worth millions of dollars.
A Google search produced over 10.4 million references to the combination “bsa”. Given such a factual matrix, a complainant would need to show more than brief use of a term to persuade a Panel that the respondent had it in mind when it registered the domain name.
It is a misunderstanding of the UDRP to believe that targeting takes place without knowledge. “Respondent is located in Shanghai, China and has no business interests in the United Arab Emirates. No evidence has been provided nor has Complainant even suggested how Respondent could possibly have been aware of Complainant, a law firm with no presence in China.” Knowledge of a complainant’s trademark and registering the disputed domain name to take advantage of it are essential elements of the bad faith analysis.