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Inadvertent Infringing Use of Domain Name

There can be inadvertent infringing use of domain name without incurring forfeiture. Complainants of trademarks on the lower end of the classification scale have a greater burden to prove bad faith registration even where there is proof of infringing use, albeit quickly cured. Proving a trademark is only the first step in the process of proving abusive registration. “The number of other persons or entities holding identical if non-competing marks and the number of other users with rights in [a] name are clear evidence of the limited ownership claims of the Complainant.” Electronic Arts Inc. v. Abstract Holdings International LTD / Sherene Blackett, FA1111001415905 (Nat. Arb. Forum January 4, 2012) disputing over <ssx.com>. The Respondent in this case is a high volume registrant. It acquired the disputed domain name as part of a portfolio of three and four letter generic names from a prior holder.

High volume registrants have an enhanced duty of care, but it does not impose an impossible burden of investigating every domain name for possible infringement of a third party’s trademark rights. Where Panels have rejected respondent’s good faith allegations it generally involves trademarks well-known in the market place. For registrants who regularly engage in the business of registering and reselling domain names, and/or using them to display advertising links they must be able to show that

1. It had made good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
2. The domain name in question is a dictionary word or a generic or descriptive phrase;
3. The domain name is not identical or confusingly similar to a famous or distinctive trademark; and
4. There is no evidence that the Respondent had actual knowledge of the Complainant’s mark.

Where there is no evidence of bad faith registration the Policy does not penalize a respondent for changing use of the domain name after notice that it contains infringing content. Inadvertent transgressors typically involving domain names composed of generic or descriptive words and combinations used in their commonplace sense are treated more kindly than respondents advertently taking advantage of the complainant or its trademark. Enhanced investigation of domain names identical or confusingly similar to trademarks can be traced to Mobile Communication Service Inc. v. WebReg, RN., D2005-1304 (WIPO February 24, 2006) contending for. The Panel in that case held that MOBILCOM (an unregistered trademark) was not a dictionary word or a generic or descriptive phrase. He concluded that where

a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.

This is in contrast to high volume registrants such as the respondent in Electronic Arts who is “in the business of buying and selling generic domain names.”SSX is composed of generic letters. “Complainant clearly does not have an exclusive monopoly” on letters that can equally and legitimately be employed by other parties in unrelated fields. Although it is not a defense that respondent’s hosting company was responsible for placing content of a website, nevertheless where hyperlinks are quickly removed it is some evidence of its intentions. “Respondent alleges that the resolving website was only supposed to contain generic hyperlinks and not competing hyperlinks.” The Panel accepted this explanation. “Generic hyperlinks” is the broadest generic meaning that an ordinary dictionary word is capable of carrying. Tomsten Inc. v. Registrant [7281], FA 925448 (Nat. Arb. Forum April 20, 2007). For made up words like “mobilcom” there can be no legitimate use by another party in an unrelated field. For “ssx” the opposite is true.

Dissents in a number of cases have argued for greater diligence. The dissent in BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. Future Media Architects, Inc., D2006-0534 (WIPO July 28, 2006) for example suggested that registrants who use their vast accumulations to exploit a business opportunity have “a greater duty … to verify that the use of a domain name … is legitimate.” In that case the parties were contending for. But, the consensus view is that bulk registrants may legitimately hold generic domain names absent clear and convincing evidence that their use demonstrates knowledge and targeting of the trademark.

Unintentional hyperlinking quickly removed upon receipt of notice reinforces a respondent’s assertion of good faith registration. By “[m]odifying such a website also may attenuate the harm to a complainant whose trademark or commercial interests are allegedly compromised by the website prior to remediation.” American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Nat. Arb. Forum July 27, 2010)(). The Panel’s point is that respondents (in the inadvertent class) should not be discouraged from “this positive behavior…. [T]he fact of a website’s remediation should not create an evidentiary inference adverse to the respondent.”

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