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Deliberative Conversations and the Making of Domain Name Jurisprudence

You may well ask, What does deliberative conversation have to do with the making of domain name jurisprudence? Mention was made of conversation in the Binary/Unitary Note last week. Ideas have to come from somewhere and once they are uttered interlocutors test and return them as received or modified. There are a number of interesting cases in which dissenters disapproved of the majority’s use of the Policy to transfer the disputed domain name. I pass over these cases for the moment, noting however that the majority view has prevailed, to focus on another early case, Firstgate Internet A.G. .v. David Soung, D2000-1311 (WIPO January 29, 2001) which offers a good illustration of what I mean by deliberative conversation. Initially, there was a temporality question about “rights.” The question was whether under paragraph 4(a)(i) of the Policy a complainant had to demonstrate trademark rights that preceded the registration of the domain name or had such rights when it commenced the administrative proceeding. Although not the dispositive issue in the case and offered as dicta, the panelists in Firstgate thought it important to set forth their disparate views. Thus,

Whilst the Panel agree that this issue is not necessary to its Decision, given its view on the Complainant’s failure to satisfy the third element of paragraph 4(a) of the Policy, they disagree as to when trademark rights must exist for the requirements of paragraph 4(a)(i) of the Policy. The Presiding Panelist and Panelist Chrocziel believe that such trademark rights must be in existence at the time the domain name is registered, i.e. here March 6, 2000. Panelist Creel believes that such trademark rights need only exist at the time of the Complaint.

The consensus now is that the complainant need only demonstrate that it has rights. It would be premature to say that the conversation has ended because the issue continues to be debated. A unanimous three-member Panel in New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010) held that “[w]hile registration of a domain name before a Complainant acquires trademark rights is not specifically identified in the UDRP Policy as an automatic defense to a complaint, the Panel does not believe that the intent of the Policy requires a Panel to move forward on a complaint when the Complainant’s rights in the disputed domain name are at best junior to the rights of the Respondent.”

The conversations I’m thinking of can be within the decision as with Firstgate (no disagreement as to outcome), or (most usual) offered by dissenting panelists (which I will get to below), or (occasionally) concurring panelists (an interesting subset), or by a unanimous Panel examining precedent afresh (the New York Times decision also challenged the consensus view about laches). In this Note, I want to discuss a dissenting panelist’s conversation in Computop Wirtschaftsinformatik GmbH v. Domain Administrator, FA1106001394450 (Nat. Arb. Forum August 8, 2011) (complaint granted; domain name transferred to Complainant).

The dissenting panelist (as he has done in other decisions) is of the school that holds, “similar, yes, but not confusingly so.” “I agree with the result of the majority’s deliberations on this element, but not with the reasons given for it, for the domain name is neither identical or confusingly similar to all of the trademarks that the majority have included under the heading ‘the COMPUTOP mark’.” Since there was confusing similarity with three of the four trademarks the Complainant established jurisdiction:

The Complainant suggests four candidates as the trademarks on which it relies, which the majority opinion describes as “the COMPUTOP mark”. However, the four candidates cannot be regarded as a group in that way and it is in my opinion not correct to say that the domain name is identical or confusingly similar to all of the trademarks in the COMPUTOP group. Three of the four trademarks were registered after the domain name was registered and one of them was registered as recently as 2010. Although, for that reason, they would be of little value in considering the later and real issue in this case, whether the domain name was registered in bad faith in 2001, they are nevertheless trademarks for the purposes of paragraph 4(a)(i) of the Policy.

The crux for the dissent, however, is not the relative dating of the trademarks and domain name, but the majority’s reliance on decisions that are not entirely on point. Thus,

The majority has found that the Respondent registered and used the domain name in bad faith. In support of this it relies on the fact that the Complainant made an “initial offer” to buy the domain name and the Respondent responded by stating the only offer it would entertain. It is said then that two decisions support the conclusion that such a dealing amounts to both bad faith registration and bad faith use. With respect, that is not correct.

The question is whether an inference of bad faith registration is viable where the respondent is responding to an offer by the complainant as opposed to its own initiative in offering the domain name for sale to the Complainant. “In [Computop] … it was the Complainant who made the offer, an offer to buy the domain name and the Respondent merely replied by naming its price because it had been asked to.” The difference is important:

It must be said that the use of the domain name in recent times in the present case is open to the interpretation of bad faith use, as the Respondent is ultimately responsible for its use. It is equally clear, however, that such recent conduct shows nothing about the motives of the Respondent in registering the domain name 10 years earlier. There are two reasons why this is so. The first relates to the inordinate delay on the part of the Complainant in bringing the complaint and a delay such that, if it had not occurred, the panel would have had more facts available to it than it does and facts that would enable it to find if the domain name had been registered in bad faith.

There is a troublesome holding by the majority in Computop that suggests that a finding of bad faith registration is warranted where a “respondent fail[s] to conduct a search engine search prior to requesting a domain name.” Although there was evidence of present use in bad faith historical evidence was lacking. The dissent notes

The only truly independent evidence that tilts the scales one way or the other is the extant screenshot of the Respondent’s website, showing what the domain name was used for on February 5, 2005. That screenshot shows that the website had links to several subjects within the generic or common meaning of the word “computop”, namely consoles, scrub top, pinnacle, truck cover, kitchen top cover, safety cover, car cover and pool winter cover and several generalized computer references such as software, internet and math. It shows no references to the Complainant or its competitors. None of that shows an attempt to mislead anyone or to trade off the good name of the Complainant and nothing to show that the Respondent was motivated by bad faith in registering the domain name.

It would appear that the Computop Respondent loses despite the temporal (Complainant waited 9 years) and geographic distance (Germany and Canada) because the second level domain (while it may consist of two phonetic elements that are recognizable as common words or abbreviations) is not itself a dictionary word.

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