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Consequences of Failing to Police One’s Trademark

Ordinarily, a transferee inherits the bad faith of its transferor and can be dispossessed of the disputed domain name if the use continues unabated. Unopposed, the inference is that the transferee has purchased the domain name for its monetized value. But, the result will be different if the transferee proves its intent to use of the domain name for a bona fide offering of goods or services. The Respondent in Averitt Express, Inc. v. DI S.A. c/o Domain Admin., FA1006001332938 (Nat. Arb. Forum August 23, 2010) alleged that it acquired <averitt.com> “because it consists of a short surname, suitable for various purposes, and represents an investment in the Respondent’s portfolio of first and last name domain names.” As a general rule, if the domain name is used as a personalized e-mail service for persons bearing identical names to the trademark and is unadulterated with illegitimate content there can be no actionable claim, Buhl Optical Co v. Mailbank.com, Inc., D2000-1277 (WIPO March 1, 2001) (<buhl.com> and Int’l Raelian Religion & Raelian Religion of France v. Mailbank.com Inc., D2000-1210 (WIPO April 4, 2001) (<rael.com>) are other examples.

What makes Averitt more interesting is that the Complainant pounced on the domain name before the Respondent had an opportunity to redesign the website. The Respondent stated that as a result of the commencement of the administrative proceeding “the disputed domain name was immediately blocked by the Registrar.” Because of this, it was “impossible for the Respondent to implement its plan to use the disputed domain name in conjunction with <lastname.com>.” Further,

The screen shot taken by the Complainant on June 24, 2010 has no connection with the Respondent, it having been placed by the previous registrant of the domain name. The Respondent has been unable to place its own content on the website because the website was blocked before the Respondent had a chance to do so.

The Panel was persuaded on this point. It seems that the transferor “represented to the Respondent that none of the domain names being sold violated any rights.” While it “is difficult to see how this representation could have been made in view of the use of the Complainant’s trademark and references to competitors on the website … that cannot be held to the account of the Respondent.”

Partly, the Complainant’s problem is that personal names are lower on the scale of protection. This is particularly the case where there is geographic distance between the parties. “In some cases the fact that the Complainant and the Respondent are located in different and distant jurisdictions does not provide a defence to a claim of registration and use in bad faith.” However, “[t]hose cases usually relate to domain names which reflect trademarks which have a worldwide reputation.” This requires the complainant to give more thought to its record. The “Complainant has offered no evidence to show what outreach its services have outside of the United States and, in particular, what, if any, business it does in Luxembourg, where the Respondent is located.” In other words, denial of complainant’s existence is persuasive because more probable than not it is true.

One other point is worth making. The Panel notes in its final paragraph that there “appears to have been abusive use of the domain name since [it was first registered], and yet it has taken the Complainant 14 years to assert its rights.” The Coda concurs with other panelists on the issue of laches: “Whilst the equitable doctrine of laches does not apply to the Policy, one might have thought that the Complainant might have taken action before now.” Sleeping on one’s rights does have consequences even if the decision is not based on a laches analysis.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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