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Insufficiency of Evidence; Benefit of the Doubt

Tatra, a.s. has national trademark registrations for TATRA in the United States and the European Community and is also the owner of a number of other TATRA and TATRA-family trademark registrations around the word, including the International Trademark Registry. It does not appear to have a trademark in Russia, the Respondents’ home jurisdiction in TATRA, a.s. v. Tatra Ltd., Tatra folks PO, FA0911001296249 (Nat. Arb. Forum February 5, 2010), but it sells trucks in the Russia market. The majority were not persuaded that the Respondent was targeting the Complainant when it registered the domain name <tatra.com>. I call this a “benefit of the doubt” case; the expression “not persuaded” translates into a failure to preponderate on the evidence. However, that being said, there are a couple of unusual features about the case.

The subdivisions of paragraph 4(b) set forth four non-exclusive examples of bad faith registration and use. It has long been established that panelists may consider the “totality of the circumstances” – coined in Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) – when conducting a review of the evidence, citing among other cases Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO March 7, 2000), “[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [paragraph 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”

However, “totality of the circumstances” is generally applied against the respondent. In Tatra the rule is reversed and applied in favor of the respondent. That is, just as there are circumstances from which an inference can be drawn of bad faith registration, equally the same circumstances can be read in respondent’s favor. The domain name was registered in 2001 and held passively since that date; passive, at least, to the extent that the domain name has no active presence on the Internet. However, the respondent “uses” the domain name as an e-mail address, “contact@tatra.com” in connection with its business communications with its business partners.

As the dissent points out, there is substantial law on what is called “passive use” stemming from Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000).
The “fact that the domain name was used in connection with an email address before any notice to Respondent of this dispute does not, at least in my opinion, necessarily support the majority’s conclusion on the bad faith element.”

However, the majority cites precedent that holds that “[a]lthough it may not be easy to discern whether a domain name is being used for e-mail, FTP services, or simply as a host, such uses are legitimate,” Thrive Networks, Inc. v. Thrive Ventures, Inc., D2003-0534 (WIPO August 26, 2003). There is certainly precedent for emails, but respondents generally register generic terms and common names for their vanity services. Tetra is different, in that the name is identical to the trademark.

The second unusual feature is that evidence that is unpersuasive to prove a right or legitimate interest in the domain name is held to be sufficient to avoid a finding of bad faith. “Whereas [the assertion that the use of ‘contact.tatra.com’ is legitimate] is not persuasive with respect to the analysis under [the] second element of the policy … it is at least some evidence in its favor with respect to the issue of bad faith, where the Complainant carries the burden.”

Gerald M. Levine <udrpcommentaries.com>

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