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Referent for Identical or Confusingly Similar to Trademark is Domain Name Not Any Post-Domain Path

UDRP is not an all-purpose forum for resolving infringement claims. The Policy is limited to abusive registration of domain names. What happens if the infringement occurs in a post-domain path (that takes the Internet user to an interior page of the website)? The Complainant in Romantic Tours, Inc. v. Whois Privacy Protection Service, Inc., FA1003001316557 (Nat. Arb. Forum April 28, 2010) complained that the Respondent had incorporated into its post-domain path a string that infringed its trademark, HOT RUSSIAN BRIDES.

It is not illegitimate for a respondent to operate an online advertising portal from a domain name even if (under certain circumstances) it is identical or confusingly similar to a trademark. Romantic Tours argued for transfer of the Respondent’s domain name because of the post-domain path: “Respondent has no rights or legitimate interests in its registered <jimslists.com> domain and for its <jimslists.com/agencies/hotrussianbrides> post-domain.” Upon receiving the complaint, however, the Respondent deleted the post-domain path. However, what if “Jim’s List” were simply an advertising portal that included a section on “foreign brides” with links to Complainant and its competitors?

It is not targeting in a cybersquatting sense to include reference to a trademark holder in a general purpose directory. Targeting implies registering a domain name that crosses a threshold. Even with domain names that are identical or confusingly similar – using generic words or descriptive phrases in their ordinary or dictionary meanings – unless targeting appears evident it is legitimate to operate an advertising portal, First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO May 1, 2001). “Neither the current UDRP nor current ICANN registrar contracts preclude” the practice of registering domain names in connection with an advertising venture, Williams, Babbitt & Weisman, Inc. v. Ultimate Search, FA98813 (Nat. Arb. Forum October 8, 2001); pay-per-click websites constitute a bona fide use (absent targeting), Terana, S.A. v. RareNames, WebReg, D2007-0489 (WIPO June 7, 2007); Fratelli Carli S.p.A. v. Linda Norcross, D2006-0988 (WIPO October 4, 2006); or paid link farm services, Aquascape Designs, Inc. v. Vertical Axis, Inc c/o Domain Adminstrator, FA0601000629222 (Nat. Arb. Forum March 7, 2006) (<aquascape.com>) (Complaint dismissed).

If domain names for advertising websites that are similar or confusingly similar to trademarks can be legitimate then a fortiori it is not abusive to register a domain name dissimilar to the lexical units of the trademark. Although a post-domain can arguably be a trademark infringement it cannot be a UDRP violation any more than aggregating competing providers of goods and services would be in a print on paper business directory. Romantic Tours’ argument is unpersuasive precisely because the domain name is not identical or confusingly similar to the complainant’s trademark. The domain name, “<jimslists.com> … is neither identical nor similar with the Complainant’s trademark as it bears no resemblance to [it].” The “UDRP does not offer relief for infringements via use of registered trademarks in post-domains and that the proceedings under the UDRP may be applied only to domain names.”

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

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