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Protecting Existing Trademarks from Predators and Parasites

Predators and Parasites come in a variety of shapes and sizes as are abundantly illustrated in these ongoing Notes. Some specialize in omitting or adding letters to a complainant’s trademark; others, adding affixes or suffixes to the second level domain; still others, appropriating the whole trademark and running with the domain name until forfeiture. Some are strangers; others are contractually related. Trademarks whole or altered (but confusingly similar) have demonstrable power to attract traffic, which is the summun bonum of the exercise. The “website is used only for two purposes:  advertising hyperlinks to Complainant’s competitor pandemic preparedness providers and purportedly selling fake pig noses,” MM Herman & Associates, LLC v. Black Knight Publishing c/o Black Knight, FA1005001324437 (Nat. Arb. Forum June 16, 2010).

The underlying premise of the UDRP is protecting existing trademarks from predators and parasites. The UDRP is available only to holders whose trademarks are incorporated in whole or in part by respondents who have no right or legitimate interest in the domain name and are shown to have registered it in bad faith. Cybersquatters are “people who register domain names knowing them to be the trade marks of others and with the intention of causing damage or disruption to the trade mark owners and/or unfairly exploiting the trade marks to their own advantage,” Tomatis Developpement SA v. Jan Gerritsen, D2006-0708 (WIPO August 1, 2006). The “the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights,” WIPO Final Report, paragraph 135 [ii]). In defining the proscribed conduct WIPO chose to use the encompassing term “abusive registration” rather than “cybersquatting”. It explained that “[i]n popular terms, ‘cybersquatting’ is the term most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks and service marks”, Report, paragraph 170. However,

precisely because of its popular currency, the term has different meanings to different people. Some people, for example, include “warehousing,” or the practice of registering a collection of domain names corresponding to trademarks with the intention of selling the registrations to the owners of the trademarks, within the notion of cybersquatting, while others distinguish between the two terms. Similarly, some consider “cyberpiracy” to be interchangeable with “cybersquatting,” whereas we consider that the former term relates to violation of copyright in the content of websites, rather than to abusive domain name registrations.

Therefore, (the Final Report continues) “[b]ecause of the elastic meaning of cybersquatting in popular terminology, we have … chosen to use a different term––abusive registration of a domain name––in order to attribute to it a more precise meaning.” The term “abusive registration” describes a range of deceptive practices that adversely impacts the rights of trademark holders. Theories encompass violation of statutory prohibitions and rights; tort (wilful and negligent), such as misappropriation, conversion and breach of fiduciary duty; and criminal conduct, such as larceny and identity theft (phishing).

However, a case can be made that instead of being more precise the term “abusive registration” opened up opportunities to include by construction abusive conduct as a distinct category of bad faith within the scope of the Policy. Elasticity more invites expansion than contraction. It can reasonably be argued that since its inception there has been an incremental broadening of the UDRP. Issues and factual circumstances that in early decisions were thought to be outside the scope of the Policy have been brought within.

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

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