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Parties in Same Business and Operating in the Same Geographical Area

Distance is not only geographical and temporal but also measured by product or service offerings. The principle underlying temporal distance is that the respondent could not have registered the domain name in bad faith if the trademark had not then come into existence. Subsequent bad faith use (except in the view of panelists who argue for “retrospective” bad faith) is not grounds for forfeiture of the domain name under UDRP. The greater the distance of all three combined the less likely that the complainant can prevail on the bad faith element, which is the ultimate test.

Geographical distance by itself does not favor the respondent’s good faith claim, but temporal distance (acquiring the domain name prior to existence of the trademark) does. The numerous proceedings by western complainants against eastern respondents are more likely to be resolved in complainants’ favor because geographical distance is unpersuasive where the domain model is merely farming the domain name for pay per click revenue. But, add product or service distance and the respondent is a clear winner.

The reverse is that the closer in geographical and product/service distance the more persuasive complainant’s allegations that the respondent lacks rights or legitimate interests and has registered and is using the domain name in bad faith. This is illustrated in Hoboken Publications, LLC v. Hoboken411.com, LLC., FA1111001414530 (Nat. Arb. Forum January 13, 2012). The parties in this proceeding “operat[e] in the same limited Hoboken geographical area and in the same general business as Complainant.” The likelihood is greater that the respondent “must have had actual knowledge of Complainant and its HMAG mark relative to print and online services.” The inference is clear that

In seeking to own the disputed domain name, identical to Complainant’s mark, and attaching a website at the name that generates advertising revenue – the same sort of revenue sought by Complainant – Respondent surely intended to divert such revenue from Complainant (i.e., disrupt Complainant’s business) and gain commercially from the likelihood of Internet user confusion with respect to the source, sponsorship, affiliation or endorsement of Respondent’s website.

In many instances close geographical distance make denial of knowledge implausible – Layby Services Australia Pty Ltd. v. Chrisco Hampers Australia Ltd., D2009-1066 (WIPO November 3, 2009) () (Direct competitor who registered the disputed domain name one year after Complainant established its business) – while far distance supports the opposite inference, namely that more likely than not there is neither knowledge nor targeting. EURO DATA GmbH & Co. KG v. Excel Signs, D2009-0465 (WIPO May 5, 2009) (Germany and U.S.A) contesting a nondescript trademark EURO DATA (). As the distance increases actual knowledge is more likely to be found only where the trademark in issue is particularly strong and heavily advertised or promoted.

An interesting footnote on the heavily advertised or promoted is international companies with strong presences in respondents’ markets. Although there is great geographical distance in one respect (corporate headquarters), it is local in another (operating a business). La Quinta Worldwide, L.L.C v. Rudi Seiberlich, D2011-0385 (WIPO April 11, 2011) (Complainant “is the registered proprietor of many trademarks for LA QUINTA and variants of that trademark both within the United States and internationally, including in Italy where the Respondent is domiciled).

The burden of proving a violation of the Policy is lighter for suggestive and arbitrary and heavier for generic and descriptive terms current in commercial activity – HSM Argentina S.A. v. Vertical Axis, Inc, D2007-0017 (WIPO May 1, 2007) in which the Panel pointed out that eEvidence of third party use of terms identical to the trademark “mitigates against a finding that the Respondent knew specifically of the Complainant or its mark when the disputed domain name was registered.” Denying knowledge is unpersuasive where the respondent uses the domain name to advertise the same goods or services as the complainant. A case in point is ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010) (Parties in the United States and Hong Kong). The Respondent denied knowledge, but populated its website with competitive links.

Use speaks for itself. So, the Panel in ChemRite transferred the domain name to Complainant. If no other inference can be drawn except that the respondent is taking advantage of the complainant’s trademark, respondent loses. Hoboken Publications wins for the same reasons.

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