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Knowledge as Evidence of Abusive Registration

See Anthology of Commentaries — 2014

Knowledge is the key element in proving abusive registration. In obvious cases such as British Sky Broadcasting Group Plc, Sky IP International Limited, Sky International AG v. Tarek Esmail, D2014-1792 (WIPO December 26, 2014) (SKY NEWS and <skynewsmisr.com> and Rockefeller & Co. Inc. v. William Foo, D2014-1886 (WIPO December 17, 2014) where Complainants’ marks are well-known internationally there is inferential knowledge. In British Sky “[t]he word ‘Misr’ … is an English transliteration of the colloquial Arabic language word for ‘Egypt’”, thus a geographic addition to the trademark that is incapable of making the domain name distinctive in its own right.

 Similarly, in Rockefeller with the addition of a generic term, “ventures.” ROCKEFELLER is a brand with an international reputation. Although a domain name holder may argue that a suit for infringement is “abusive, overbearing, unreasonable and too extensive” (as Respondent did in Rockefeller) it is in fact a necessary policing practice by a mark owner with an established world-wide reputation. Marks can be lost if anyone starts using them for their own commercial markers without opposition.

 Inferences of knowledge (or awareness that a domain name is identical or confusingly similar to a mark) hardens with direct evidence of active or passive use. In British Sky “it appears that the Respondent, by using the disputed domain name, is pirating Complainant’s goodwill and consumer recognition for its own financial gain by capitalizing on consumers looking for the news services offered by the Complainants by creating a likelihood of confusion with the Complainants’ SKY NEWS trademark as to the source or affiliation of its website.” In Rockefeller Respondent set up his company before purchasing <rockefellerventures.com> but was holding the domain name passively.

As the Panel in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) explained that “paragraph 4(b) recognises that inaction (eg. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith … [when it is] when it is “not possible to conceive of any plausible actual or contemplated active use of the domain name by respondent that would not be illegitimate.” In British Sky inferred knowledge is supported by the use of the domain name (direct evidence) to resolve to a website offering news reports. In Rockefeller there was no direct evidence (because of passive use) but a respondent’s “request[] [for] an amicable solution and in this context … ask[ing] for compensation … ha[s] been interpreted by other UDRP panels as an indication of bad faith.”

 Where the domain name maybe confusingly similar to a trademark (or identical except for the added generic term) other factors must be considered. In Rueducommerce v. Chain Avocats, 100866 (ADR.eu December 31, 2014) the Panel agreed that <rdecommerce.com> was confusingly similar to <rueducommerce> but held that Respondent had a right or legitimate interest in the domain name based on bona fide use (paragraph 4(c)(i)) and commonly known as (paragraph 4(c)(ii)). In assessing whether Respondent had knowledge of Complainant or its mark the Panel held that “[i]t must not be forgotten that the Complainant focuses on the French market and has no presence or trade marks in the USA where the Respondent is based. Thus the Panel is convinced that the Respondent is being honest in stating that it had never heard of the Complainant when it registered the disputed Domain Name.”

 There was neither inferential nor direct evidence of bad faith in Rueducommerce. Complainant offered a further argument based on paragraph 4(b)(i) that “the Respondent’s offer to negotiate the sale of the disputed Domain Name in some way implies bad faith.” The Panel rejected this argument. A “cause of action” under this head is defeated if the evidence establishes that complainant made an “unsolicited approach” to purchase the domain name to which respondent responded with a price. If this is the evidence, as it was in Rueducommerce

[t]he Panel finds no contradiction in the Respondent’s assertion that it plans to use the disputed Domain Name in the near future but yet would be prepared to sell it and use another domain name instead – it is understandable that the Respondent would sell if offered enough money and it would not be difficult for the Respondent to find another suitable domain name to demonstrate eCommerce software, indeed the Respondent already owns <rd-ecommerce.com>.

 Domicile in different countries or operating in different markets is not a factor where the mark has an international reputation. This is made clear by the Panel in Rueducommerce. Importantly, however, it is not a factor in respondent’s favor if complainant’s trademark is not registered in the country of the respondent’s domicile. ROCKEFELLER is not registered in Malaysia, but “the Policy does not require the trademarks of the Complainant to be protected in the Respondent’s country” citing cases from the formative years of the UDRP and more recent.

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