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Speculating in Domain Names and Monetizing them Lawful Commercial Activities

That a domain name is identical or confusingly similar to a complainant’s trademark is only part of the evidentiary journey. When that fact is coupled with proof that the respondent lacks any right or legitimate interest in the domain name it strengthens the trademark owner’s claim. Taking advantage of the trademark’s reputation to attract Internet traffic strengthens further but is still insufficient for abusive registration until it can be deduced that the respondent registered the domain name for the purpose it is being used. This involves showing only one answer to the question “Why did the respondent register the domain name in the first place?”

Let us take a step back. The term “legitimate interest” in paragraphs 4(a)(ii) and 4(c) of the Policy refers to the respondent’s entitlement to its choice of domain name, rather than the legality of its business. A business may be lawful, but its use of the domain name mala fides. Replacing inkjet cartridges is lawful but the “use of these … disputed domain names as the initial contact points and web page banners deprives that business of the character of being bona fide,” Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, D2000-0878 (WIPO September 21, 2000) (<canonink.com>, <canoninkjet.net>. If legality of business were the standard, then “any cybersquatter that conducted a lawful business could always find refuge,” The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., D2005-1318 (WIPO February 22, 2006). A respondent may very well have in mind a legitimate business in the future but it must demonstrate that in registering the domain name when it did it had no “exploitative intent,” at that time, Abu Dhabi Future Energy Company PJSC v. John Pepin, D2008-1560 (WIPO December 22, 2008) (masdarcity.com> and <masdarcity.net>). All these cases illustrate bad faith use contemporaneous with registration.

Of course, successful rebuttal ends the proceedings. But, in commencing the proceedings, many trademark owners want to believe that lawful business excludes acquiring domain names on speculation of future value or monetizing them with link farms. That is not the case, although either the respondent in its rebuttal to the prima facie case or the complainant in establishing the bad faith elements must address the issue of knowledge or awareness. A respondent without knowledge cannot be said to have the alleged intention. The Panel in ScribeWrite, LLC v. Buydomains.com / Inventory Management, FA1107001398963 (Nat. Arb. Forum September 6, 2011) held that reselling domain names was a lawful commercial activity, citing Micron Technology, Inc. v. Null International Research Center, D2001-0608 (WIPO June 20, 2001). The Respondents’ legitimate interests in both these case are bolstered by the kinds of names they acquired. In Micron, the Respondent’s inventory included names similar to the disputed domain name, <crucialtechnology.com>: <populartechnology.com>, <thirdgenwireless.com>, <biotechrevolution.com>, <seniorhealthissues.com> and <bravenewbiotech.com>.

In ScribeWrite the disputed domain name was identical to the trademark, but it specializes in the word “webmaster” which presumably identifies what it offers. Its inventory of names included <advancedwebmaster.com>; <jobwebmaster.com>; <juniorwebmaster.com>; <specialwebmaster.com>; <professionalwebmaster.com>; and <worldclasswebmaster.com>. It helps that the domain names in all these examples are common strings of words and affixes. It also helps, although it is by no means conclusive that, as with ScribeWrite, the disputed domain name was registered prior to the registration of the trademark.

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