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Passing Off, Pretending to be Complainant or Known by the Domain Name

Registrants have tried a number of ploys to avoid having the disputed domain name forfeited to the complainant, including passing themselves off as the complainant or pretending to be commonly known by the domain name. The Respondent in Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum January 13, 2003), for example, called itself “Neiman-Marcus.” The Panel in Alain-Martin Pierret d/b/a Bordeaux West v. Sierra Technology Group, LLC., FA 0505000472135 (Nat. Arb. Forum July 1, 2005) explained that “[m]ere ownership of a domain name is not sufficient to show that a respondent has been ‘commonly known by the domain name’; if it were, every domain name registrant automatically could claim protection under paragraph 4(c)(ii) of the Policy.”

The settled law is that “paragraph 4(c)(ii) requires evidence that Respondents had rights prior to and not merely following from the use of the Domain Names,” Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., D2004-0324 (WIPO June 18, 2004) (<etsworldwide.com>). Respondents contended that they adopted “ets” because it was the natural acronym of their trade name Educational Training Service. The Panel held that this contention “misses the point.” They may have been known prior to registration by their full name “Educational Training Service” but not by the acronym ETS which is a registered trademark of the Complainant.

This issue of passing off is revisited in National Westminster Bank PLC v. Nathaniel Westerly, FA0912001299106 (Nat. Arb. Forum February 2, 2010) (<natwest-inc.com>). A defaulting Mr. Westerly was caught “phishing” for personal information from the Complainant’s clients. Using the domain name for criminal purposes is tantamount to bad faith registration, Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) and Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004); both cases involved attempts to capture through fraud client information. In Capital One, the respondent was using the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients. That is, the inference from such use is that the registration was intended to target the Complainant by mimicking its trademark and composition of its landing page for the purpose of hoodwinking its clients.

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

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