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Not all Offensive but Transient Linking is Presumptively Bad Faith

There are two classes of respondents whose registrations have been found to be immune from presumptive bad faith use even though the websites to which the domain names resolve at the commencement of the proceedings contain links that would otherwise be considered a violation of the Policy. These are newly acquired domain names populated either by 1) a prior registrant who has allowed its registration to lapse and the successor registrant (the respondent) has not had time to post its own content [A. D. Banker & Company v. Domain Invest, D2010-1044 (WIPO September 30, 2010) ]; or, 2) the registrar for its own account before the registrant has launched its own website [Fireman’s Fund Insurance Company v. Steve Schwartz, FA1010001355350 (Nat. Arb. Forum December 15, 2010)].

The general rule is that where a respondent uses a parking service to populate its website with links that redirect Internet user to goods or services competitive with complainant it violates paragraph 4(b)(iv) of the Policy. The underlying principle holds that a respondent cannot evade its representation and warranty under paragraph 2 of the Policy by denying responsibility for the content of its website. Even though the owner of a parked domain name may not control the content “it is ultimately [the] respondent who is responsible for how its domain name is used,” State Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum November 20, 2007). However, as indicated in the A.D. Banker and Fireman’s Fund cases, a distinction is made between a holding page created by the registrar following registration of the domain name and a parking page respondent intentionally creates. The former is not ipso facto bad faith; the latter more than likely is.

The “key issue” in A.D. Banker and other cases on the cusp of legitimacy, is “whether the Respondent sought … to profit from the similarities between the Complainant’s mark rather than any generic meaning of the domain name. If it did, the Domain Name is likely to have been registered and used in bad faith.” The Panel resolved the key issue in Respondent’s favor, not because it was overly persuaded by its arguments but that the Complainant failed to respond to the Respondent’s “technical claims” in its supplemental submission. The “technical claims” relate to the timing of webpage changes, that there would not have been time for them to be “reflected in the various cached servers throughout the world.” According to the Respondent and reluctantly accepted by the Panel”it would be unfair to draw any conclusions adverse to the Respondent’s motivations and intentions from web pages that were dated the day after the Domain Name was transferred.” The Panel’s reluctance is noted in the final paragraph of the decision, inviting the Complainant to refile if subsequent use “would seriously undermine the credibility of a number of the assertions that have been made by the Respondent and which have been key to the Panel’s findings in this case.”

In Fireman’s Fund, the Respondent persuaded the Panel that its registration for future use of <firemansfundblog.com> was not in bad faith. The domain name was confusingly similar to the Complainant’s trademark, but he simply had not had time to post his commentary. Under these circumstances, “although the fair use criteria under Policy ¶ 4(c)(iii) is inapplicable to demonstrate Respondent’s rights and interests in the domain name because the at-issue domain name is not being used, Respondent’s reasonable future fair use of the domain name for non-commercial commentary, absent any compelling evidence to the contrary, precludes a finding of bad faith registration and use.” Resting a defense on future use is not generally acceptable. Here, it is found acceptable because (presumably) the Respondent should be given reasonable time to launch his Blog and demonstrate his good faith regardless of the transient offensive links.

 

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