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Proving Reputation When Domain Name Was Registered

Complaint must show a reputation when domain name was registered; a present reputation alone is insufficient if trademark had non in the past. Complainants and their trademarks either have established reputations in their marketplaces or they have not. By far the greatest number of disputes brought under UDRP are by complainants with trademarks whose reputations are sufficiently well established (even if unfamiliar to most of us) to be game for exploitation. Canali Ireland Ltd. v. Kanchai Tanurat, D2011-1469 (WIPO November 15, 2011) (<canalicollection.com>). A smaller number of disputes involve domain names registered after the trademark whose holders deny knowledge of the trademark when they registered the domain names. Proof of reputation must be established. Sven Beichler v. chocri GmbH, D2011-1629 (WIPO November 17, 2011) (<myswisschoclate.com>). A third group of complaints are by later acquiring trademark holders seeking to wrest from respondents earlier registered domain names. Having a lofty reputation when commencing the proceedings is irrelevant since a nonexistent reputation when respondent registered the domain name vitiates a claim of bad faith. LeWeb SAS v. Satoshi Shimoshita, D2011-1632 (WIPO November 14, 2011) (<leweb.com>); Zeikos, Inc. v. Imagemap Help Page, D2011-1458 (WIPO October 31, 2011) (<ihip.com>).

In the first group, the complainant’s reputation achieved over a period of time can be inferred from the respondent’s registration and use of the domain name. Abusive registration is evident where the domain name points to a website that offers sponsored links to other websites providing services or goods which are similar to those offered by complainant’s own website. In Canali, for example, it could be argued that a respondent in Thailand (where Complainant has no presence) is unlikely to have knowledge of the complainant’s trademark. Although irrelevant, this may true. Irrelevant, because in those circumstances it is reasonable to conclude that respondent (ignorant though he may be of the actuality of the complainant’s reputation) must have known that “Canali” had a reputation in the marketplace to which the domain name is pointed, otherwise it would not have known to link to complainant’s competitors. Acts (and silences) are evidence of bad faith.

Arguing unawareness by respondents in the second group is more persuasive if the domain name is composed of generic terms and the parties are located in different jurisdictions. The adverbial phrase “Swiss Chocolate” (or as the domain name spells it, “Swiss Choclate”) is on the lowest level of the classification scale. It thereby demands a higher level of reputation proof. The argument for unawareness is less persuasive where the domain name is identical or confusingly similar to a suggestive or arbitrary trademark. Whether or not the domain name is actively used, it can be assumed that for such a domain name respondent intended to take advantage of the complainant’s reputation.

Complainants in the third group had no reputation back then when the domain name was registered even if now they do. Even if successful in proving that respondents lack rights or legitimate interests (as is the case in <ihip.com>) complainants cannot succeed, because respondent could have had no knowledge of a non-existent trademark. In LeWeb SAS the Complainant’s trademark postdated the domain name by several years. It argued that

Respondent is a notorious cybersquatter. He has been named as a respondent in at least four domain name disputes and has lost at least three times, oftentimes not even choosing to submit responses defending his use of the trademarks of others.

Even if true that the Respondent was “a notorious cybersquatter” (an easily verifiable fact), the allegation in a UDRP proceeding is irrelevant. Respondents who have acquired legitimate interests (if not legal rights) in a domain name are not at risk of forfeiture for confusing Internet users as to the sponsorship of the domain name. Paragraphs 4(b)(iv) of the Policy is applicable only to respondents who registered domain names after complainants acquired their trademarks. If before, complainants must fail on proving paragraph 4(a)(iii).

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