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Engaging in Extensive, Widespread Publicity of Website and Service Prior to Domain Name Registration

As a general rule, domain name registrations that precede trademark rights cannot have been in bad faith even though (and when) there is subsequent use in bad faith. However, where the complainant has extensively publicized its goods or services in the same jurisdiction in which the respondent resides and particularly if the respondent is a competitor, the complainant is deemed to have the requisite trademark rights to maintain a UDRP proceeding. This principle of standing is restated in the WIPO Overview at paragraph 3.1: it applies where the respondent acquires advance knowledge through the media and “registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.”

In News Digital Media Pty Limited v. Steve Tope, D2010-1608 (WIPO February 3, 2011) the Respondent argued (among other points) in opposing standing that “The Complainant uses consistent design and stylistic features to identify the ‘True Local’ business and these are not incorporated into the Respondent’s website. Further, there is no reference to ‘True Local’ as being the name of the Respondent’s business. Therefore, the disputed domain name is not confusingly similar to the Complainant’s trademarks.” The argument that website content and design affects the confusing similarity analysis has been similarly rejected. The consensus is stated in the WIPO Overview at paragraph 1.2:

the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity.

The commonness of the trademark in News Digital notwithstanding, TRUE LOCAL, the crux is the publicity preceding registration of <truelocalaustralia.com> and the propinquity of the parties. Had the respondent been a person resident on another continent and plausibly without knowledge of the complainant the registration of a common term would be no more than adventitious. That is not true where the respondent is in the same jurisdiction and a competitor:

By the Respondent’s own admission in his Supplementary Submissions as well as in his Response, the Respondent has never at anytime branded or used the name “True Local” in promoting his business or website…. The Respondent’s website is merely titled “Local Business Directory[T]he Respondent was already in the business of online local directories and has not proffered any evidence denying his knowledge of the Complainant’s business…. “.

In News Digital Media, “the Respondent is using the disputed domain name for the very services covered by the Complainant’s rights in the [same] territory.” It is “[i]n light of this” (continues the Panel) that “the Panel finds that the Respondent intentionally chose the disputed domain name in order to cause confusion in the mind of Internet users as to the affiliation between the Respondent’s website and the Complainant’s trademarks and as such attract them to its website.”

 

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