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Complainant Geographically Remote from Respondent’s Market

A complainant’s trademark may be well known internationally in its particular market without being known generally or to the respondent. The disputed domain name in Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010), <webvision.com>, is almost identical to WEBVISIONS, differing only in omitting the plural “s”.  Changing the form of a name (which may be taken as typosquatting) does not distinguish the domain name from a trademark and is not sufficient to dispel any likelihood of confusion. Indeed, “many cases have found that the addition, omission or transposition of a single letter can be a common source of confusion.”  Indeed, “many cases have found that the addition, omission or transposition of a single letter can be a common source of confusion.” The “common source of confusion” in this sentence means confusing similarity between the domain name and the trademark.

The difficult hurdle for the Complainant in Webvisions is to prove that the “reduc[tion] … [from] a plural term to the singular” was intended to take advantage of its trademark, or merely adventitious. The Panel takes a step by step approach in reaching the conclusion that the evidence offered by the Complainant is insufficient:

On the record in this dispute, it is very difficult to draw [the] inference [Complainant urges]. The first and perhaps main problem is the very narrow scope of the services covered by the Complainant’s trademark registrations. The second problem is that the Complainant’s trademark in the USA was registered in November 2008, several years after the Respondent apparently registered the disputed domain name.

Although the disputed domain name did not resolve to an active website for several years “[a]t the time this decision was prepared, however, the disputed domain name did resolve to a website that appears to offer a range of IT services, but not on their face the web hosting or ISP services for which the Complainant has secured a trademark registration.” The Panel continued: “If this website accurately reflected the Respondent’s activities, it might well found a basis for inferring that the Respondent was conducting a legitimate business that did not conflict with the Complainant’s registered trademarks in the USA.”

Although the Panel found that Respondent lacked rights or legitimate interests in the disputed domain name (principally a consequence of Respondent’s decision not to answer the complaint and explain why the contact information was inactive), nevertheless “the website exhibits a degree of sophistication and scale of business which appears quite at odds with the Respondent’s portrayal of himself in his emails requesting an extension of time, or assistance in making such a request, as a small business which was being unfairly taken advantage of by a much larger business.”

The Complainant’s inability to prove that the Respondent registered the domain name with its trademark in mind is not surprising limited tools of the UDRP. “Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant.” The Panel explained that

Apart from stating that it provides services to its customers in the USA from a data center there, the Complaint does not provide any details about the scale, extent or duration of its operations there. As already noted, the Complaint does also state that it provides its services in some 40 countries. As with the nature and scale of its operations in the USA, however, the Complaint does not provide any details to flesh out that claim.

The Complainant has to contend with two obstacles: that it is a niche provider of services and that the composition of its trademark is not remarkable. “Further, … there has been a Webvision Corporation or Webvision Inc. operating at various times in the USA. While that entity is apparently now defunct and initially operated out of California, it does appear that it was based in Austin Texas for a period.” The significance of this is that the Complainant cannot demonstrate conclusively that the Respondent had its trademark in mind in registering the domain name. The rule is that a trademark not alone used by a complainant undermines its contention that it was targeted by the respondent. More is required than a supposition of targeting.

Gerald M. Levine <udrpcommentaries.com>

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