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Prevailing Against One Respondent Does Not Guarantee Proving Bad Faith Against Another

There are many repeat complainants policing their trademarks in UDRP proceedings. Those of well known brands invariably prevail against defaulting, but not always against appearing respondents. Pharmaceuticals (Sanofi-Aventis), banks and finance (Citigroup, Inc., MasterCard International Incorporated) , fashion (Christian Dior Couture), retail (Harrods Limited, Burberry Limited), hotels and travel (Sheraton International Inc.), automobiles (Bayerische Motoren Werke AG (BMW AG)) and toy manufacturers (LEGO Juris A/S) are frequent targets. Lesser known brands composed of common words or descriptive phrases prevail some of the time. The demand for proof is inversely proportional to the strength of the mark. The less the strength, the more persuasive the proof required.

Aspen Holdings, Inc. owns the trademark 1ST QUOTE on the Principal Register. In the past year it has policed its trademark against three different respondents for the second level domain with the numeral spelled out, “first quote.” “1ST” and “first” are phonetically identical. The Complainant prevailed in the two earlier of the three cases, Aspen Holdings Inc. v. Christian P. Vandendorpe, D2009-1160 (WIPO October 16, 2009) (<firstquote.net>) and Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, D2009-0776 WIPO August 20, 2009) (<firstquote.org>). The Respondent defaulted in the first case and appeared in the second. In the most recent case, the Respondent also appeared and its defense was persuasive, Aspen Holdings, Inc. v. Isaac Goldstein, D2010-0576 (WIPO June 3, 2010) (<firstquote.com>).

Why does the Complainant lose when its experience has been to prevail? Or, turned around, what proof has the new Respondent offered that differs markedly from other records? The resolution of all cases depends on the factual circumstances supported by concrete evidence. Victoria Woo known by her stage name “Kianna Dior” prevailed over Christian Dior while other Dior respondents forfeited the disputed domain names. When a respondent defaults it is permissible to draw an adverse inference from its failure to defend its registration. It does not change the complainant’s burden to prove bad faith, but default is generally conclusive on the issue of right or legitimate interest in the disputed domain name. The Panel in the case of Aspen against Goldstein wants to make sure that she clearly distinguishes the facts before her from the record in the earlier two cases. “In this Panel’s assessment, the present case needs to be distinguished from previous – though not binding – cases decided under the UDRP.”

In Aspen Holdings against Vandendorpe the Panel found that while the word “quote” was frequently used in connection with financial products, the phrase “first quote” called for some explanation that was not forthcoming. The domain name – <firstquote.net> – “was registered only 5 days after the Complainant had first started using the term 1STQUOTE in commerce. As the respondent in the case had been involved in an earlier UDRP proceeding, and as he had not replied to the Complainant’s contentions, the panel in that case decided that these ‘factors when combined together are sufficient to tip the scales in the Complainant’s favour on the balance of probabilities’.”

In Aspen Holdings against Natsch the Respondent is a high volume registrant of domain names. I have mentioned in earlier Notes that Panels have reached near consensus that more is expected from this class of respondents. “The Panel notes that paragraph 2 of the Policy implicitly requires a registrant to make some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.” Moreover, citing cases that hold respondents accountable for their choices under the retroactive bad faith construction of the Policy, “the obligations imposed by paragraph 2 are an integral part of the Policy applicable to all registrants, [which] cannot be ignored.”

In contrast to the two earlier cases, the Respondent in Aspen Holdings against Goldstein “gave well-founded reasons why he was unaware of any known corporations operating under the brand name ‘first quote’ when acquiring the disputed domain name. Moreover, brought evidence to the Panel’s attention that numerous insurance companies are advertising under the term ‘first quote’.” The plethora of uses argues against any monopoly absent proof that the Respondent is taking advantage of the trademark rather than using the expression in its lay meaning. “To sum up .. compelling facts and circumstances on the record of this case do not suggest that the disputed domain name was registered in bad faith.”

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

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