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Bad Faith Must be Directed at Complainant or its Trademark

Domains that are identical or confusingly similar to a well known trademark of which the respondent cannot plausibly deny knowledge are on one end of the spectrum. In a great majority of these cases respondents do not bother to answer the complaint unless they can offer or the record contains sufficient evidence that supports a defense under paragraphs 4(c)(i) or (ii) of the Policy. A recent example of a default in which, however, there was sufficient evidence in the record is General Electric Company v. Estephens Productions, D2009-1438 (WIPO December 17, 2009) denying transfer of <geentertainment.com>.Where the trademark is lesser or plausibly unknown to the respondent, the evidence in support of forfeiture must be persuasive. An example of an unpersuasive submission is Letstalk.com, Inc. v. Inofirma, Ltd c/o Domain Administrator, FA1002001310279 (Nat. Arb. Forum April 21, 2010) (the Panel was “quite troubled by the apparent carelessness with which the Complaint in this proceeding was prepared.”)

The Complainant in Letstalk received registration of LETSTALK.COM on the Principal Register in 2010, although it “had made active use of its later-acquired mark for several years prior to Respondent’s registration” of <letztalk.com> in 2003. The Complainant resides in California; the Respondent in Russia. “[I]t does not appear that [Complainant’s] mark is used outside the United States (aside from the fact that Internet users worldwide presumably can view Complainant’s website).” The Panel decided to go directly to the issue of bad faith. He apparently agreed that the domain name was confusingly similar otherwise he could have terminated the proceeding, but he found it unnecessary to pass judgment on either paragraphs 4(a)(i) or 4(a)(ii) of the Policy. Whether similar or not or even confusingly so, the Complainant lost for failure to prove bad faith.

As a rule of thumb, it is more probable than not that domain names identical or confusingly similar to famous or well known trademarks have been chosen for their value to capture Internet traffic, regardless of website content. The opposite is true for trademarks less well known or composed of common words and descriptive phrases. Even in the presence of confusing similarity bad faith is not a given. It is proved by showing that the registration was directed at the Complainant or its trademark. “The essence of the Complaint is an allegation of bad faith, bad faith targeted at the Complainant,” Asset Mktg. Sys., LLC v. Silver Lining, D2005-0560 (WIPO July 22, 2005); Terana, S.A. v. RareNames, WebReg, D2007-0489 (WIPO June 7, 2007) (requiring that “the trademark owner or its mark [be] targeted by the domain name registrant”). Denial of knowledge is less plausible the greater the market penetration of complainant’s trademark or where the market penetration is local or regional rather than national.  This is particularly so where the parties are engaged in the same business in the same territory, Texas Wind Power Company v. Wind Works c/o Savvy Dog Design, LLC, FA0903001252746 (Nat. Arb. Forum May 12, 2009) (<texaswindworks.com>).

In finding for the Respondent in First American Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO April 20, 2001) (<firstamerican.com>) the Panel held that it would be “inconsistent with existing trademark principles and with the limited language and scope of the Policy” to construe paragraph 4(b)(iv) “without a requirement of direct action by the Respondent.” It would

Create a tremendous scope of protection around existing owners of marks of common words and mundane expressions, and prevent new entrants from using these words and terms – even in entirely different fields from existing uses.

Respondent’s content in First American did not support a conclusion that it was targeting the Complainant, whereas incorporating a competitor’s trademark with a minor variation – substituting “works” for “power” in Texas Wind Power – does. Letstalk is in the category of First American, not Texas Wind Power.

Gerald M. Levine <udrpcommentaries.com>

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