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Incorporating a Trademark Well Known in the United States and Abroad

Inferences are variously drawn when it comes to passively held domain names. Dictionary words and colloquial combinations are harder to prosecute and easier to defend. The reverse is true with well known trademarks. The onus shifts to the respondent to prove a defense. Failing on the rights or legitimate interests factor is then grist in the bad faith analysis. “Disney” is among the iconic trademarks. The Respondent in Disney Enterprises, Inc. v. ll, FA1007001336979 (Nat. Arb. Forum August 31, 2010) registered <disneyoffer.com> “almost five years” ago. According to the Respondent he “does not sell any Disney products on this site. The site is not built. It is only parked at GoDaddy.com.” However, the domain name resolves to a parking website that (evidently) contains “offending material.”

The Respondent offered three arguments. The first is noted because the Respondent  misses the point about trademark and the reach of rights. He states

Just because Complainant holds onto the name “disney” it does not have the right to squash and try to control every other holder of the word “disney” in the English speaking community or every domain name with the word “disney” in it. They own the market and brand name, but they do not own the word “disney” across the entire English language as long as those interests pose no threat or try to infringe upon their business.

The Panel’s assessment is that “Respondent surely knew of the Complainant’s trademark in DISNEY at the time he registered the disputed domain name and thus his silence regarding the reasons for registering the disputed domain name is telling.” Knowing that the dominant term in the domain name is a well known trademark “suggests that Respondent registered the disputed domain name precisely for its trademark value, rather than in spite of it.” A complementary finding is that in registering the domain name “Respondent acted in bad faith by breaching its service agreement with the registrar.” That is, “Respondent falsely represented that registering the disputed domain name did not infringe on the intellectual property rights of another User or any other person or entity when he knew or should have known that it did.” This also breaches paragraph 2 of the Policy.

Respondent’s second argument recites a false history that the Complainant approached him to purchase the domain name rather than the opposite. There is a line of cases that finds no bad faith where the negotiation is initiated by the complainant, but this does not apply to domain names incorporating well known trademarks. “[A]fter receiving Complainant’s ‘cease and desist’ letter … Respondent offered to sell the disputed domain name to Complainant for an unspecified amount.” This is evidence of bad faith registration. “Even if Respondent’s offer to sell were not specific as to price, a general offer to sell a disputed domain name to a complainant is nonetheless evidence of bad faith registration and use.”

The third argument is based on the false notion that the respondent bears no responsibility for the content of a website maintained by a hosting company. On the contrary, “[o]ne who registers a famous mark in whole or in part should in effect ‘inspect and make safe’ any website referenced by some domain name to be sure there is no infringement.” When the respondent fails to do so he is accountable for the links that infringe another’s trademark.

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

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