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Pattern of Present and Past Acts in Assessing Bad Faith

To violate paragraph 4(b)(ii) of the Policy the complainant has to prove that the respondent engaged in a “pattern of conduct.” Pattern suggests a customary practice rather than an isolated act. It can involve frequent single or multiple registrations spread out over a lengthy period or multiple registrations of domain names over a short period. Abusive intention is inferred from the composition of the domain names and their content. The paragraph is directed to respondents who “have 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 you have engaged in a pattern of such conduct” (emphasis added). Since it is unlikely that complainants would consider registering domain names confusingly similar to their trademarks (as their primary Internet location), the paragraph is not (could not be) construed literally. Engagement in a pattern to target trademarks is a violation of paragraph 4(b)(ii) whether or not the respondent literally intended to shut the complainant out of its rightful place on the Internet.

Confusing similarity subsumes purposeful typographic variations that displace, transpose, add or omit letters from the trademark. This was the case in Avid Dating Life, Inc. v. Private Whois Service, FA1004001318204 (Nat. Arb. Forum May 13, 2010) in which the Respondent registered 101 “disputed domain names that are confusingly similar, misspelled versions of Complainant’s mark.” The term also includes domain name variations that simply combine trademarks with a dictionary word. In Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, D2009-1661(WIPO January 19, 2010), for example, the Respondent registered 1,542 domain name variations of which 10 were found to be distinguishable because they incorporated only part of the trademark that in combination were found not to be confusingly similar. The Respondent in Research In Motion Limited v. Georges Elias, D2009-0218 (WIPO April 27, 2009) registered 111 domain names of which 10 joined “berry” with a dictionary word that distinguished the domain name from the trademark and were not included in the transfer of registration to the Complainant.

“Pattern of conduct” requires proof that the respondent has a history of registering domain name variations to capitalize on trademark reputations and to capture traffic. A respondent’s history (not just in respect to domain name variations) is probative of bad faith. “Its probative value may be one of weight, but it is a matter, which can be taken into account in assessing the implications of all of the information that an administrative panel has at hand…. Conduct that reveals a scheme or plan, a course of operations, is not irrelevant,” Collections ETC., Inc. v. Cupcake Patrol, D2001-0305 (WIPO May 10, 2001).

In Avid Dating and Research in Motion the Respondent targeted a single company. In Inter-Continental the Respondent targeted a conglomerate having a multiple of branded hotels. Non-use of the domain names is irrelevant since inactivity is not a defense. According to the Panel in Smokey Mountain Knife Works v. Deon Carpenter, AF-230 (a, b) (eResolution July 3, 2000). Such a pattern of abusive domain registrations can occur along two distinct dimensions:

First, a domain registrant can operate ‘horizontally’, targeting multiple entities, perhaps in multiple industries.
Second, a domain registrant can operate ‘vertically’, targeting a single entity, but registering multiple domains which reflect either different aspects of the target’s business, or different alphabetic variations of the target’s trademark.”

Respondents found to have horizontally or vertically violated a complainant’s rights by their multiple registrations are also in violation of paragraph 4(b)(iv) of the Policy. But that, of course, is the purpose of the exercise, to appear to be associated with the complainant, the better to capture Internet traffic intended for the complainant.

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

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