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Opportunistic Bad Faith

The phrase “opportunistic bad faith” is not found in the WIPO Final Report, but was coined by early Panels initially to refer to disputed domain names that are so obviously connected with famous and well-known trademarks that their use by someone with no connection with them or the complainant’s products suggests respondents taking advantage of Internet user to lure them to alternative web sites.  Early cases include Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000) (<xpediatravel.com>) Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., D2000-0163 (WIPO May 1, 2000) (<veuveclicquot.org>).  Intentionally diverting web traffic by misleading Internet users into believing that they are accessing the trademark holder’s website is prima facie bad faith.

However, opportunism embraces a larger community of respondents and is not limited to trademark holders.  It describes those who prey on the prestige and drawing power of a complainant’s rights for commercial gain.  One aspect of this conduct is identified in the WIPO Overview at paragraph 3.1 which describes respondents who with knowledge of a third party’s rights register domain names in anticipation of a the filing for trademark registration. This form of opportunism is at the center of Monty Program Ab v. Tong, FA0912001299742 (Nat. Arb. Forum March 2, 2010).  “According to the Complainant, it or its predecessors in business, as well as Mr. Widenius, have been using the mark Monty Program for commercial activities since at least 1992.”  However the term became prominent in February 2009 when it “was publicly announced that Mr. Widenius was resigning from a major company and would form his own new company, which would be called Monty Program AB.”

The Respondent in Monty Program registered <montyprogram.com> one day after the announcement.  The Panel cites as precedent 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”) and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do”).  See also Pro Confort SRL v. PIER56, Ion Robu, D2008-0801 (WIPO August 8, 2008).  Although the Complainant’s trademark registration for RIN GRAND HOTEL followed the registration of the domain name by several months, the Respondent registered the domain name a month after the hotel’s official opening which was “notoriously advertised by Romanian media.”

In order to avoid forfeiture, the respondent must be offer evidence that it had no knowledge of the complainant’s plans and that the registration of the disputed domain name was in preparation for a bona fide use.  In Monty Program, the Respondent contended that “as a child, he had been an avid fan of the well-known comedy group Monty Python.  When cleaning out his room in January 2009, he came across some old programs and was motivated to create a web site to let more people know about the group.  Since the domain name <montypythonprogram.com> was taken, he chose the disputed domain name, which was available.”

The mere fact that a domain name identical to a trademark is available, however, is not a defense to abusive registration.  An excuse has at least to rise to the level of plausibility; not descend to risibility.

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

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