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Inactivity of Domain Name a Factor in Determining Intent, Not Conclusive of Bad Faith

Activity is full of evidentiary possibilities. It enlarges the sphere from which inferences can be drawn and can be said to speak even where the respondent defaults. Inactivity of the domain name (passive use) limits the sphere of inference. Instead of content and hyperlinking as proof, inferences have to be drawn from other indicia: the fame of the trademark or lack of it, respondent’s history with domain names and its prior use (if any) of the name in issue, the relative dates of domain and trademark acquisitions and the respondent’s contact information. The Complainant in La Sirena Alimentacion Congelada, S.L. v. Tom Fisher, D2011-0582 (WIPO May 16, 2011) alleged that the Respondent provided the wrong contact information for the WhoIs database. In appropriate circumstances, incorrect and misleading contact information on the Whois directory may be conclusive evidence of deception. But, for failing to provide or correct contact information the complainant has to do more than allege intention; it must prove that respondent intended to evade service, hide its true identity and thus obstruct the arbitral proceedings. However, negligence in maintaining the Whois directory is not evidence of bad faith.

La Sirena, though, raised a more important issue, name current passive holding following active use. The Respondent appeared, but provided little information about his historical use of the domain name. He simply denied bad faith without disclosing any history. A domain name may be identical or confusingly similar to a trademark and the respondent even be found to have no right or legitimate interest in it but nevertheless registered it in good faith. The Panel “accepts that the Complainant has not authorised the Respondent to use the LA SIRENA trade mark. The Panel further accepts that there is insufficient evidence to suggest that the Respondent has … become commonly known by the Disputed Domain Name.” But, the domain name was acquired in 1997 and even though the Respondent makes no mention of its history it nevertheless has one. The domain name has either been held passively for 14 years or used but presently inactive. Respondents are expected to produce a record in defense to a charge of abusive registration; not to remain silent. To say nothing is a risky strategy.

The Policy has been construed to authorize panelists to perform limited investigation (Rule 10[a]). Paragraph 4.5 WIPO Overview of WIPO Panel Views on Selected UDRP Questions reads: “Consensus view: A panel may visit the internet site linked to the disputed domain name, order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.”

The fact that a domain name does not resolve to an active website at the time of the complaint is merely a factor; not conclusive of bad faith. In La Sirena the Panel undertook limited factual research into the history of domain name and found that “the Domain Name resolved to active websites between at least 1997 and 2006. For most of this time, the Disputed Domain Name resolved to a number of diving websites, some of which were operated using the name ‘La Sirena Divers’ and featured pictures of mermaids (the Panel notes that ‘la sirena’ is Spanish for ‘mermaid’).”

Legitimate use of a domain name in the past, even if inactive in the present undermines a complaint’s argument that it was targeted. The La Sirena record supplemented by the Panel’s investigation “indicate[s] that the Respondent used the Disputed Domain Name in connection with a bona fide offering of services over a period of almost 10 years…. [The] fact that the Disputed Domain Name does not currently resolve to an active website does not of itself serve to extinguish such lengthy interest in the circumstances of this case,” citing Warm Things, Inc., Inc. v. Adam S. Weiss, D2002-0085 (WIPO April 18, 2002), where the use of the disputed domain name for a period of 2 years was held to constitute use of the disputed domain name in connection with a bona fide offering of goods or services, irrespective of the fact that the disputed domain name was not in use at the time that the complaint was filed.

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