Top Menu

Credibility as a Factor in Determining Bad Faith

Fortuity can enter into the choice of name, but it is tenuous when the trademark is an arbitrary collation and less suspicious when it is generic or descriptive. Take for example MOWITANIA, the Complainant’s trademark in Mowitania Wendt & Molitor GbR v. Eric Clermont, D2011-0052 (WIPO February 22, 2011). According to the Complainant the “mowi” component is formed by combining the “first syllable of Mr. Molitor’s surname (‘Mo’) and the first syllable of Mrs. Wendt’s first name (‘Wi’).” The Complainant offers no explanation for the “tania” part of the trademark, but it sounds like a fanciful addition. The Respondent, on the other hand, had a fulsome explanation for its second level domain, namely that it registered the disputed domain name “for a project involving modern wines in Tanzania and that the disputed domain name is effectively an abbreviation of that term.” The component parts are, allegedly: “Modern+ Wines+Tan(zan)ia” = MoWiTania.” The Respondent would have the Panel believe that the “identical spelling to the disputed domain name is a matter of fortuitousness.”

One should never rule out fortuity, but stories should be believable. This one includes an alleged unidentified principal who is claimed already to have incurred significant costs in the Tanzania wine project. When a party advances a barely credible story it is expected to flesh it out with evidence only it could have access to. Here, “[t]he Respondent fails to provide an adequate explanation for why, since the disputed domain name came to the attention of the Complainant in early 2010, it has only ever been used in connection with accommodation services, of an increasingly close connection to the business of the Complainant.”

It is some evidence of good faith that a respondent registered the domain name prior to the complainant’s registration of its trademark; also that the parties reside in different countries far removed from each other, as in Mowitania the Complainant in Germany, the Respondent in Tailand. These facts raise issues of knowledge and targeting. If the respondent had (could not have had) knowledge of the complainant it undercuts any inference of bad faith registration regardless of subsequent bad faith use. However, allegations of ignorance are not conclusive. “Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right,” WIPO Overview at paragraph 3.1. The WIPO Overview continues:

In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.

In Mowitania, the Panel found that the Complainant had unregistered rights predating the registration of the domain name. It also found evidence of bad faith registration from communications between the parties prior to the commencement of the proceedings. The Panel noted:

The Respondent does not deny [that since the disputed domain name came to the attention of the Complainant in early 2010, it has only ever been used in connection with accommodation services, of an increasingly close connection to the business of the Complainant and] that when it discovered the disputed domain name, it was already pointing to the hotel booking website at “www.booking.com”. The Respondent does not deny this but states that this had been done without any commercial intent.

But, “an email from Booking.com’s legal counsel to the Complainant … clearly states that the user of the disputed domain name is a business partner of that organization in terms of its affiliate program.” The inference is that “Respondent’s enrollment of the disputed domain name in such a program signifies clear commercial intent to use the disputed domain name in connection with accommodation services.” Why, if the Respondent’s purpose for registering the disputed domainname was to promote Tanzanian wines, the website would contain accommodation services rather than information about the Tanzanian wine project is not explained.

A party’s explanation fails of persuasion if implausible. “Furthermore … the Panel has serious doubts regarding the credibility of the Respondent’s submissions regarding its alleged project given that the Respondent has entirely failed to provide any supporting evidence thereof.” Incredibility supports a conclusion that the Respondent registered the domain name with knowledge of the Complainant – not fortuity at all in its choice – and for the purpose of shaking down the Complainant with a made up story of a Tanzanian wine project.

Print Friendly, PDF & Email

No comments yet.

Leave a Reply

Follow

Get every new post delivered to your Inbox

Join other followers:

4/xVVyQrMpFFp6VcOTT2qD9g.0oyCn-dWDJ0cJvIeHux6iLYvgUztkQI
%d bloggers like this: