Conceivably, a respondent on one continent could register a domain name confusingly similar to a trademark actively used on another and plausibly deny knowledge of the existence of the complainant or its mark. Plausibility dissolves, however, when the domain name resolves to a website populated with advertisements “directed solely to US.-based businesses,” AutoZone Parts, Inc. v. Konstantinos Vardakastanis, FA1006001331739 (Nat. Arb. Forum July 27, 2010) and “100 percent of the content located at the Domain Name is in English.”
Respondent waxes indignant at being targeted by the Complainant, although he admitted to the Complainant’s outside counsel that “he earns more than $500 per month [amended in a nonconforming email to the Provider to $50 per month] from ‘link sales, publisher networks, etc’.” The Panel in World Wrestling Entertainment Inc. v. Israel Joffe, D2010-0860 (WIPO July 1, 2010) noted in connection with that case that the Respondent’s request for time “appears to be yet another attempt by a respondent to keep its domain names a bit longer, for whatever reason.”
The Respondent in AutoZone takes a further step in risibility. He “seems to admit the sole purpose of the web site is to generate ‘click through’ revenue,” although concludes his nonconforming email with “Give me a break here.” “First of all” (he says):
I would like to state that I leave [sic] in Greece and there is not any lawyer here capable of represent me as there is not such field (domain names dispute etc) in the law profession and no one has the experience in such cases. … The English language is not my mother tongue…. From the things I know when the above reasons exist:
a) The state, the complainant or the forum or what so ever appoints a lawyer free from any fees to represent the defender, in this case me. So I would like a representative free of charge for me and the fees should be covered from the complainant.
b) The defender has the right to be heard in his mother tongue in this case Greek language. So I want all the documents translated in Greek language and the sum for this translation must be covered from the complainant as he is the one starting the confliction. Also my answers will be in Greek language.
Naturally, “[a]ll the money spend [sic] in this procedure must be covered from the complainant despite the final verdict. In any other different case I declare that I do not understand any of this documents send to me and that I am not aware of any information as a result no deadline of 24/June/2010 and timeframes exist.”
Setting aside the fact that the Respondent in AutoZone offers no defense or explanation for the registration, as a general rule minor additions to a trademark are not sufficient to create a distinctive name. Adding “the” as affix and an “s” to AUTOZONE to form <theautozones.com> is not transformative; rather, it is confusingly similar to the Complainant’s trademark. When used “as a directory of links to third-party competitors of Complainant on a website resolving from a confusingly similar domain name” it supports a finding of bad faith registration and use.
Levine Samuel, LLP. <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com