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The Duty to Search for Potentially Conflicting Trademarks

A person is free to choose any string of phonetic elements or numbers as a domain name as long as its choice does not infringe the legal rights of any third party. In making its choice, the registrant represents and warrants as such in the registration agreement. The question, however, is, What duty does the registrant have to avoid infringement and what investigation satisfies it? The WIPO Final Report contemplated a light investigatory duty insofar as researching trademark databases. Paragraph 103 reads:

The WIPO Interim Report recommended that the performance of a prior search for potentially conflicting trademarks should not be a condition for obtaining a domain name registration. Almost unanimously, commentators agreed with this recommendation, whether searches were to be required to be carried out by the registration authorities or by the domain name applicants themselves. Particularly in an international context, the requirement of searches prior to the registration of a domain name was generally considered to be unrealistic and conducive to unnecessary delays in the registration process.

However, starting in 2006 panelists began drawing a distinction between respondents in the domain business (domainers) and those who were not.

The new standard can be traced to Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006). There, the Panel observed that high volume registrants were acquiring “large swaths of domain names through the use of automated programs.” It proposed a corrective that took this business model into account. That case and others that followed the Panel’s reasoning ushered in a shift of thinking about high volume registrants “who use their vast accumulations to exploit a business opportunity.” They have “a greater duty … to verify that the use of a domain name … is legitimate,” BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. Future Media Architects, Inc., D2006-0534 (WIPO July 28, 2006) (<psk.com>).

The Panel in Mobile Communication proposed a test for the high volume registrants in the form of a set of questions. For registrants who regularly engage in the business of registering and reselling domain names, and/or using them to display advertising links, they must show that

– It makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
– The domain name in question is a dictionary word or a generic or descriptive phrase;
– The domain name is not identical or confusingly similar to a famous or distinctive trademark; and
– There is no evidence that the Respondent had actual knowledge of the Complainant’s mark.

So we come to BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc. Whois IDentity Shield and Vertical Axis, D2010-1187 (WIPO September 17, 2010) and BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc. Whois IDentity Shield and Vertical Axis, D2010-1188 (WIPO September 17, 2010). The Respondent (the same in both cases) alleges in defense that “it registered the Disputed Domain Name[s] after [they were] deleted, expired and became available for registration.” However, what it registered were misspellings of BZZAGENT, <bzzaget.com> and <bzzagen.com>. Clearly no effort at all had been made to “avoid” infringing the Complainant’s trademark right. The Respondent also ran afoul of its use of a privacy service (a subject for the next Note). “[I]t seems reasonable to infer that the main purpose for which the Respondent Vertical Axis has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent.”

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

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