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Silences in Determining Legitimacy In Registering and Using Domain Names

Silence with knowledge that a respondent has incorporated a trademark in its domain name can support legitimacy if the respondent has brought itself within the safe harbor of paragraph 4(c)(i) of the Policy. However, mere delay in prosecuting a claim for infringement – silence without intention to give approval – is not a defense. Equity theories are not formally recognized as UDRP defenses but failure to protect a right through contract (or laxness in one’s communications) and tardiness in acting on information have consequences for legitimacy. Another kind of silence (this time unintentional) is at the core of Cisco Technology, Inc. v. Nicholas Strecha, E-Careers LTD, D2010-0391 (WIPO May 7, 2010). The Respondent registered <ciscouk.com> in 2005 and based its legitimacy on the Complainant’s acquiescence. The Respondent offered documentary proof that it had given notice of its registration to the Complainant’s attorneys who inadvertently had not passed the information to their client. Acquiescence, however, connotes knowledge; a knowing waiver.

It is possible for a legitimate interest to come into existence without complainant’s approval – offering goods or services on the secondary market, Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001) – or with silent approval which is sometimes ambiguous and can be read as acquiescence in respondent’s use of a disputed domain name. A number of early cases revolved on complainants’ failure to protect themselves by contract. It is difficult, for example, to find “a violation of the Policy when there is no specific prohibition on a dealer’s registration of domain names incorporating the mark of the products it is allowed to sell,” Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, D2002-0936 (WIPO December 16, 2002):

To a significant degree, Complainant’s own actions created the circumstances in which Respondent could reasonably conclude that her conduct was permitted. Thus, I conclude within the circumstances of this record that Complainant has not met its burden of proving that Respondent registered the domain name in bad faith.

In Urbani Tartufi s.n.c. v. Urbani U.S.A., D2003-0090 (WIPO April 7, 2003) (<urbani.com>) the Respondent registered the domain name “with the evident consent of Complainant at a time when Complainant and Respondent were in a business relationship.” On the other hand, termination of right or for cause, terminates whatever right the respondent may have had for continued use of the domain name.

The question in Cisco Technology is whether notice to an agent prejudices the rights of its client. “After Respondent raised the question of earlier knowledge in its Response, Complainant submitted its unsolicited Reply, attaching a declaration of Complainant’s trademark law firm” in which trademark counsel “conceded that Respondent’s use of the domain name surfaced in 2005 correspondence over other unauthorized use of Complainant’s marks, between Respondent and Complainant’s trademark firm. However, “[d]ue to an inadvertent filing error by the law firm, counsel declares, Complainant was never alerted to the use of the domain name.”

The Respondent in Cisco Technology is in the business of training students in the use of various computer platforms including applications produced by the Complainant. There are cases in which respondents have brought themselves within the Oki Data safe harbor as consultants. In SAP AG v. UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (<unisap.com>) the Respondent offers consulting services for the software products sold by the Complainant. In Cisco Technology the Respondent is not a reseller, distributor or consultant. Instead, it competes in the primary market to enroll students for IT training. “These are pivotal facts that defeat Respondent’s claim to a legitimate interest and render the authority cited by Respondent inapplicable.”

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

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