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Conducting a Business in the Same Industry Sector

Passage of time can support a respondent’s defense of legitimate interest if “before any notice” it used “the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services,” paragraph 4(c)(i) of the Policy. In the case of DirecTV, Inc. v. Pimenov Pavel, FA0911001296479 (Nat. Arb. Forum February 19, 2010) the Respondent registered <directTV.com> in 1999 and operated the disputed domain name for many years before notice of the dispute. However, “not all use prior to notice of the dispute can qualify as bona fide use,” World Wrestling Federation Entertainment, Inc. v. Rift, D2000-1499 (WIPO December 29, 2000). The website in DirecTV offers services similar to those provided by the Complainant and this raises a question as to whether the Respondent’s offering is bona fide.

Whether the operation of a business is bona fide depends upon a number of factors: its history, either of operation or in preparation for it, the contents of its website and the respondent’s explanations for having a domain name confusingly similar to another’s trademark. A bona fide business operation presupposes that the respondent is using the disputed domain name to market goods or services unrelated to those offered by the complainant. In this respect, a business with a history is more likely to be bona fide than one without, but if the respondent is a direct competitor its registration of the disputed domain name falls afoul of paragraph 4(b)(iii) of the Policy. The defense has been construed to exclude competitors, but can be effective for parties that incorporate a complainant’s trademark under the four-part test formulated by the Panel in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).

The term “legitimate interest” in paragraphs 4(a)(ii) and 4(c) of the Policy refers to the respondent’s entitlement to its choice of domain name, rather than the legality of its business. A business may be lawful, but its use of the domain name mala fides as, for example, Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, D2000-0878 (WIPO September 21, 2000) (<canonink.com>, <canoninkjet.net>:

Although the offering of replacement inkjet cartridges is a lawful and legitimate business, the use of these … disputed domain names as the initial contact points and web page banners deprives that business of the character of being bona fide, within the meaning of paragraph 4(c)(i) of the Policy.

If legality of business were the standard, then “any cybersquatter that conducted a lawful business could always find refuge,” The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., D2005-1318 (WIPO February 22, 2006). The Respondent in Abu Dhabi Future Energy Company PJSC v. John Pepin, D2008-1560 (WIPO December 22, 2008) may very well have in mind a legitimate business for <masdarcity.com> and <masdarcity.net> but its registration of those domain names evidenced “exploitative intent.” On the other hand, “it would take an exceptional case to succeed where there was no malicious or exploitative intent directed at the complainant [or its trademark] at time of registration of the domain name,” Velcro Industries B. V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, D2008-0864 (WIPO July 28, 2008) (<velcroart.net>).

In DirecTV the Respondent’s “web site basically consists of a long list of links leading to websites of TV channels from over one hundred countries. According to the Response, Respondent has created a software program allowing recording content broadcasted by TV channels. This means that Respondent’s business is related to TV channels, which also happens to be Complainant’s line of business.” This and other proof offered by the Complainant led the Panel “to conclude that Respondent, who conducts a business in the same industry sector as Complainant, in all likelihood registered the domain name in dispute knowing about Complainant, its DIRECTV marks, products and services.”

Gerald M. Levine <udrpcommentaries.com>

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