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Question of Bad Faith When Registrar Captures Revenue from Advertising Links

When the respondent captures revenue from advertising links to companies that compete with the complainant and lacks rights or legitimate interests in the domain name it presumptively registered the domain name to take advantage of the complainant’s trademark. Respondents have made a number of attempts to evade the consequences by arguing that the registrar is responsible for establishing the links. As a general rule this argument is without merit. There is another class of respondent without any history of abusive registrations with registrar populated links who are given the benefit of the doubt. This is illustrated in Groupalia Compra Colectiva, S.L. v. Andrea Santini, D2010-1979 (WIPO January 26, 2011), (discussed in Note for February 10 on another subject) where in a footnote the Panel carved out an exception to the general rule:

While the Panel is aware that there have been decisions to the effect that it matters not whether the pay-per-click revenue goes to the respondent, it being enough that there is commercial gain, the Panel is not persuaded that those decisions are necessarily to be followed in cases such as the present UNLESS deception of Internet users and commercial gain were central to the Respondent’s plans along the lines of paragraph 4(b)(iv) of the Policy.

This being an exception — “the Panel is not persuaded” — what is the general rule? The general rule is that respondent alone is responsible for the content posted on its website, regardless of the entity that places the links or derives income, StaffEx Corp. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum October 18, 2007) (Third party placement of links “no excuse”), although a distinction is made by the 3-member Panel in A. D. Banker & Company v. Domain Invest, D2010-1044 (WIPO September 30, 2010) for transient posting of links. Transient is where the respondent has not had time to propagate its own content. Apart from respondents with “no intention to deceive” or who have not had time to expunge the prior owner’s links, respondents cannot avoid imputation of bad faith by arguing that it contracted the responsibility to a third party, any more than in civil law is there any exonerative principle that shields a principal from liability for the acts of its agent.

A consensus has formed on the issue of responsibility: “the fact that a third party is effectively operating the website on behalf of Respondent, and making payments to the Respondent on the basis of that use, does not insulate Respondent from the conduct of its authorized agent,” Park Place Entertainment Corporation v Anything.com Ltd., D2002-0530 (WIPO September 16, 2002) (<flamingo.com>). Even though the owner of a parked domain name may not control the content “it is ultimately [the] respondent who is responsible for how its domain name is used,” State Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum November 20, 2007).

By agreeing to its registrar’s “parking policy” and not “un-park[ing]” the respondent violates the Policy, Diners Club International Ltd. v. O P Monga, FA0603000670049 (Nat. Arb. Forum May 22, 2006). Stated differently, the “relationship between a domain name registrant and the Registrar does not affect the rights of a complainant under the Policy,” Villeroy & Boch AG v. Mario Pingerna, D2007-1912 (WIPO February 14, 2008), citing Ogden Publications, Inc. v. MOTHEARTHNEWS.COM c/o Whois IDentity Shield/OGDEN PUBLICATIONS INC., Administrator, Domain, D2007-1373 (WIPO November 26, 2007).

 

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