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Pattern of Conduct as Defining Proof of Bad Faith Registration and Use

Of the four examples of bad faith paragraph 4(b)(ii) of the Policy has reference to multiple instances in the present and the past. The Policy is violated if the respondent “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [it has] … engaged in a pattern of such conduct” (emphasis added). It applies to respondents currently infringing a single owner’s rights with multiple registrations at one time or having a history of multiple registrations involving a diversity of trademarks over a period of time. It is more likely to involve domain names confusingly similar than identical to the trademark. If confusingly similar the domain names are likely to be either SLDs identical to the dominant term in the trademark plus generic terms or typographical errors. Given the variety of lexical arrangements and extensions the complainant is unlikely to be prevented from “reflecting [its] mark in a corresponding domain name.” It is equally unlikely to covet typographical variations except to bring to an end the infringing conduct.

Paragraph 4(b)(ii) applies in any circumstance in which either the domain name incorporates the trademark joined with a generic term (SLD+term or Term+SLD) and describes the complainant’s business, United Services Automobile Association v. Top Business Names / Domain Administrator, FA1008001338416 (Nat. Arb. Forum September 16, 2010) (<usaaautoloan.com>) or the complainant seeks to shut down typosquatting domain names trolling for its Internet users, Morgan Stanley v. Purple Bucquet / Purple, FA1007001336613 (Nat. Arb. Forum September 6, 2010) (<marganstanley.com>). It is likely that a finding of “pattern of conduct” (in the present) also implicates paragraph 4(b)(iv) of the Policy (past as well as present attempts for commercial gain at the complainant’s expense). For example, Respondent Purple Bucquet has a perfect record of losing 11 proceedings, for the most part involving one domain name as with <marganstanley.com>, although it has also registered domain names with the dominant element of the trademark (< autosaol.com>, <televisionaol.com> and <aolsongs.com>).

Since complainants are seeking to shut down infringing websites, paragraph 4(b)(ii) cannot mean literally what it says. For example, it is not the Complainant’s intention in Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) any more than in Morgan Stanley to be known on the Internet as AYHOOO or MARGON STANLEY. Bad faith is then reinforced by the additional fact that the Respondent redirect Internet users to third-party websites that directly compete with Complainants’ businesses. However, “a pattern of abusive conduct under the Policy can only succeed if the Panel is satisfied that when registering the Domain Name the Respondent was targeting the Complainant,” eSnipe, Inc. Modern Empire Internet, Ltd., D2009-0719 (WIPO August 5, 2009). The fact that a serial respondent may have successfully defended itself against one or more complaints in earlier proceedings does not make its conduct less a pattern in the current case if the disputed domain name is identical or confusingly similar to the complainant’s trademark and the respondent has no right or interest in it, Société BIC v. Domain Deluxe, D2005-0369 (WIPO June 2, 2005). “Each case must be examined on its merits,” Intesa Sanpaolo S.p.A. v. RareNames, WebReg, D2007-0671 (WIPO July 30. 2007).

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

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