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Heavy Burden of Proving Bad Faith for Surname Trademarks

Complainants whose trademarks are composed of surnames relatively rare in their marketplace but held by a respondent bearing that name do not have a superior right to the disputed domain name whatever their pedigree may be. The well established rule is that “[t]rademark owners shall not be allowed to use the Policy to dispossess summarily a third party of a domain name reflecting his or her surname,” G.A. Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO July 20, 2001). It is not cybersquatting for a respondent to register a domain name identical or confusingly similar to a trademark that he has a right to maintain. Paragraph 4(c)(ii) of the Policy provides that the respondent is entitled to the domain name if “before any notice to you of the dispute [you have used or have made] demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”   The Complainant’s predecessor in Shakespeare Company LLC v. Bob Pflueger, D2010-1126 (August 19, 2010) registered PFLUEGER in 1908. The company’s pedigree dates back to 1881

when Ernest F. Pflueger founded a fish hook company called the Enterprise Manufacturing Company. When his son Earnest A. Pflueger took over the family business and founded the E.A. Pflueger Company, he expanded the company from a hook manufacturer to all aspects of fishing tackle & gear. Since 1881, Complainant and its predecessors in interest have produced, advertised, sold, and distributed fishing rods, fishing reels, and related products under the PFLUEGER mark.

Respondent Pflueger registered <pflueger.com> in 1996. His proof of personal and family use was persuasive. However, at one point in time his website contained a hyperlink to a competitor of the Complainant. Hyperlinks to competitors are some evidence against respondent’s good faith, but rebuttable. The question is whether the motivation is to take advantage of the trademark. In Shakespeare Company the Respondent made a clear disclaimer of any relationship with Complainant. He explained that he thought he had the correct hyperlink to the Complainant’s website. Whatever the reason for the hyperlink – and to the Panel it “is not entirely clear … what Respondent had in mind by using the text box with the ‘CLICK HERE’ link … the Panel is not convinced it was to obtain click-through fees.”

One Blogger has interpreted the Panel’s decision as “re-defin[ing] the time period as to when, exactly, the name infringement must have occurred.” He continues, “[t]he ruling now establishes that infringement needed to have occurred during the period when the case was filed and that simply proving past infringement (via archive.org) does not suffice.” This reading is not correct.

When use is found to have been in bad faith “at any time” (with emphasis on “found to have been”) after the registration of the domain name the inference is that it was registered for that purpose and therefore the registration was in bad faith. In Shakespeare Company, the Respondent was not found to have registered the domain name in bad faith although it was unclear whether at some point in time he could have been accused of using the domain name in bad faith. In Howard B. Stevens, Inc., dba PC Professor v. The PC Professor, D2001-1282 (WIPO December 21, 2001) the issue revolved around the construction of paragraph 4(c)(i) of the Policy. The Respondent was found to have registered the domain name in good faith.

However, in dicta the Panel stated that “If at any time following the registration the name is used in bad faith, the fact of bad faith use is established. Otherwise a party could stop and start such uses in order to avoid a finding and a transfer or cancellation of the party’s registration.” This construction of paragraph 4(c)(i) of the Policy has not been challenged in later cases. Shakespeare Company as noted above concerns application of paragraph 4(c)(ii) of the Policy.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrp commentaries com>
E-Mail gmlevine@researchtheworld.com

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