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Establishing Credibility as an Element of Persuasion

A credible witness has a better chance of persuading the Panel than one who fails to present his case properly. “It is possible,” states the Panel in Maurice Sporting Goods, Inc. v. American Sportcase, LLC, D2010-0689 (WIPO June 29, 2010) “to theorize a different story” but the story presented is “supported by some circumstantial evidence … and the owner of the Respondent is a well-established entrepreneur operating substantial businesses that demonstrate significant industrial capacity.”  The timing of the domain name registration which is ordinarily the starting point of analysis is offset by the Respondent’s plausible showing.   It has established credibility of means of manufacture which assists in proving its own business purpose and undermines the contention that the registration was intended to take advantage of the Complainant or its trademark.

The second level domain in Maurice Sporting Goods is identical to the Complainant’s trademark, READY2FISH, published for opposition by the USPTO on December 7, 1999. The disputed domain name, <ready2fish.com> was registered December 10, 1999. The different story that could have been theorized, however, involves a series of “might have beens.” The Respondent “might have been aware of Complainant’s asserted common law use … in early 1999 … [and] might of been aware of Complainant’s application for trademark registration in April 1999 … [and] might of been sufficiently impressed … to seek to take unfair advantage.” But, there is no “tangible basis for concluding that Respondent knew or should have known of common law rights asserted by Complainant in early 1999.”

Respondent supported its “plausible story” with evidence sufficient to establish that he “is a well-established entrepreneur operating substantial businesses that demonstrate significant industrial capacity.” At the same time that it registered the disputed domain name it also registered two other domains (<ready2golf.com> and <ready2ski.com>) as part of its business strategy of “manufacturing a line of products (i.e. molded plastic cases) for use with fishing, golfing and skiing equipment.” In the Panel’s view “[r]egistration of the three similar domain names circumstantially supports Respondent’s story, and plausibly supports a claim of demonstrable preparations to use the disputed domain name for a bona fide offering of goods prior to notice of a dispute.”

In order to prove today an adversary’s  intention when it registered the domain name requires production of “meaningful evidence.” In Maurice Sporting Goods there was at best suspicion arising from the timing of the two registrations but unaccompanied by any“meaningful evidence that Respondent sought to take unfair advantage of Complainant or its trademark” at any time since it registered the domain name 10 years earlier. The evidence does not undermine the Respondent’s contention that there was a legitimate business purpose even if not realized.

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

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