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Targeting Complainant’s Trademark is an Essential Element for Bad Faith

Where a number of parties share a right to a trademark the complainant has the burden of demonstrating that it was the one targeted by the respondent. In OVB Vermögensberatung AG v. Michele Dinoia and SZK.com, D2009-0307 (WIPO May 6, 2009) for example it was clear from the website content that the Respondent had another company in mind; not the Complainant. “The use of a domain name for third-party advertising is not per se illegitimate under the Policy, provided that the respondent is not seeking to take advantage of the complainant’s rights.” Yeshiva University v. SS Media, Joy Dhivakar S Singh, D2010-1588 (WIPO November 24, 2010) is a variant of OVB in that the website appears to be for an entity, Einstein College of Engineering that (if it truly exists) has an equal right to the trademark, EINSTEIN. The disputed domain name is <einstein-college.com>. The ambiguity in Yeshiva University – the Complainant was unable to determine whether Einstein College of Engineering truly existed – is the Respondent’s connection to the engineering college whose images appear on the website. The evidence points to the Respondent targeting Einstein College of Engineering rather than Yeshiva University.

To prevail on its claim for abusive registration the general rule is that the complainant must “prove that the respondent has been targeting [it] in some way, such as by attempting to extort money from the complainant for a transfer of the disputed domain name, or by riding on the back of the complainant’s goodwill in its trademark by attempting to attract to a website at the disputed domain name Internet users looking for the complainant’s website.” The “relevant bad faith must be specific to the Complainant, or at very least the Respondent must have had the Complainant in mind when he registered the Domain Name,” Builder’s Best Inc v Yoshiki Okada, D2004-0748 (WIPO November 17, 2004) and “not just ‘someone’s’ mark.” In the case of Builder’s Best, the Respondent showed that there were many NNN trademarks.

Only if a respondent has registered a disputed domain name because its real value is the same as, or confusingly similar to, the complainant’s trademark, will the registration have been made in bad faith. In Yeshiva University, “each of these matters of general principle creates a difficulty for the Complainant.” Even though the Complainant has programs currently running in India, the difficulty is in proving that it was the Respondent target. In an attempt to search out facts, the Panel filed a Procedural Order requesting the Complainant to provide further information on the issue of the existence of the Einstein College of Engineering. “In its statement in response, the Complainant side-stepped giving any clear answer to the second of those questions, by stating in its answer to Question 1 that there ‘may be’ a college or school of engineering called ‘Einstein College of Engineering’ in the relevant location, and then contending that Question 2 was not applicable because it had answered Question 1 ‘in affirmative’.” The Panel noted that it “was not impressed with those answers from the Complainant.”

The complainant’s hurdle in these cases is to marshal evidence; not to speculate on what may be. “The College website provides what appear to be perfectly clear details of the claimed location of this college, complete with a postal code and a telephone number…. Taking account of the Complainant’s statement (in its answer to the Panel’s Question No. 2) that it had answered the Panel’s Question 1 in the affirmative, the Panel concludes, on the balance of probabilities that such an institution probably does exist.” And, because the institution exists and there is no evidence that the Respondent was targeting Yeshiva University – that it was not Yeshiva University that the Respondent had in mind – the Complainant fails to satisfy its burden of proof. This does not answer the trademark question, whether the use of EINSTEIN infringes the Complainant’s right. Infringement is an unsettled question, which leads the Panel to make the following observation: “Where the Respondent appears to have been targeting the Einstein College of Engineering and not the Complainant, there is no proper basis for an order directing the transfer of the Domain Name to the Complainant.”

Levine Samuel, LLP <researchtheworld.com>

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