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Benefit of the Doubt on the Issue of Bad Faith Favors the Respondent

Since the complainant has the burden of proof, any doubt that the respondent registered and is using the domain name in bad faith necessarily favors the respondent. Doubt is the consequence of an insufficiency of evidence. The most dramatic illustrations are cases in which the complainant has failed over many years to police its trademark and demands that the domain name be transferred to it. But Panels are reluctant to order forfeiture despite the non application of laches; generally for good reason. In The Economist Newspaper Limited learned this in its claim against TE Internet Services, D2007-1652 (WIPO February 5, 2008) (<theeconomist.com>) the Complainant waited 11 years. In a more recent case, Betty Bossi Verlag AG v. SinoSwiss Co., Ltd., D2010-2264 (WIPO February 22, 2011) the Complainant also waited 11 years to claim <bettybossi.com>, determined incidentally by the same panelist as in The Economist.

In problem in both The Economist and Betty Bossi is not just the sitting on one’s rights over an extended period, but the difficulty of marshaling conclusive evidence of abusive intent at the time of the registration. “The longer the interval between registration of the disputed domain name and the filing of a complaint under the Policy” (noted the Panel in Betty Bossi) “the harder it becomes for a complainant to prove bad faith registration and bad faith use. Both need to be proved.” One Commentator noted with regard to the Betty Bossi case that “[u]nfortunately, I think the Panel got hoodwinked.” But, was the Panel really hoodwinked or is the commentator overlooking the Panel’s genuine doubt? What is really the case!

It may appear that way because (I can hear the Commentator saying) there is surely a difference between the second level terms of the two cases, The Economist and Betty Bossi. “The economist” (after all) is a common phrase even though distinctive when referring to the news magazine known as The Economist. However, the Respondent appeared and explained why he had chosen the domain name: “I considered this powerful man [Alan Greenspan], who was an economist to be ‘the Economist’.” I do not have any particular interest in economics. I was simply fascinated with Alan Greenspan.” By itelf, this would not support a passing-off action.

The term “betty bossi” on the other hand does not appear to be common; at least, is not common on the surface. But, apparently (as the Panel notes) “betty bossi” was “a fictional character – a cook – whose name was invented in the 1950s and first used in a cooking magazine in 1972.” There is no evidence that the Complainant invented the fictional character, therefore had no intellectual property right to it, so the term must have become a cultural commonplace in Switzerland where the Complainant does business and where one of the principals of the Respondent came from.  So in the “betty bossi” case, a name that on its face appears arbitrary is actually a common term until exploited in the marketplace. But, who is to say whether trademark of a cultural term registered in one jurisdiction has priority over the same term registered in another jurisdiction? In makes no difference that the Respondent business entity included a Swiss national because he was equally exposed to the common term as was the Complainant.

The problem (if we may express it that way) is that expressions common in a particular community are not owned by A anymore than B unless they have already become for A distinctive as the source of its goods or services before B has used the same expression for its own goods or services. However unsatisfactory the respondent’s explanation in Betty Bossi for its choice of name (and, frankly, the explanation is difficult to credit), it appeared to be making a bona fide offering of services in a market far removed from the complainant’s. Its right is further enhanced by the fact that it obtained a trademark for the services it offered in that remote jurisdiction. “The available evidence shows” (notes the Panel) “that the Respondent has been using the disputed domain name for 11 years in connection with its apparently legitimate business of offering career-enhancement for women. It obtained registered trademarks in Thailand, the country where it is located.”

Although not quite apropos, but emphasizing that benefit of the doubt favors the respondent is the Panel’s observation in Quester Group, Inc. v. DI S.A., D2010-1950 (WIPO February 14, 2011): “[While the] descriptive use of common dictionary words to link to sites that deal in the described goods may not avoid capitalizing on a similar trade mark using the same words … that is an exposure that owners of descriptive marks must accept when the select their brands using common product names.” In Betty Bossi, the Complainant chose as its mark a name it did not own circulating in its culture. In that respect “it must accept” the possibility that others thought the name would also work for them as a trademark. That is not evidence of abusive registration!

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