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The “In Mind” Requirement for Proof of Bad Faith

Complainants sometimes have an inflated view of their international reputation: that it has penetrated to the far corners of the world; that it is inconceivable that the respondent was unaware of them; which it may have been when it registered the domain name; even though conceivably no so in the present. But for the complainant the emphasis of evidence should on the past. The Panel in Viko Elektrik Ve Elektronik Endüstrisi Sanayi Ve Ticaret Anonim S,irketi v. UniqueBrandNames, D2010-1856 (WIPO January 26, 2011) notes

Sometimes it is the case that the mark in question is so famous internationally that it is inconceivable that a respondent could have been unaware of it; sometimes it is the case that the name in question is so fanciful and unique that it is inconceivable that the respondent’s adoption of it for the domain name in issue can have been coincidental; sometimes there is specific evidence sufficient to enable a panel to infer knowledge by a respondent.

In too many of these cases, the complainant focuses its evidence on the present; but the tortuous act occurred in the past; so that the evidence necessary to prove the case must be its reputation then, not now. “However, there is no evidence before the Panel to suggest that back in November 1998 the Complainant’s name was so well-known internationally that the Respondent must be taken to have heard of it.” Further, “[w]hether or not that use of ‘Viko’ was sufficient to give rise to unregistered trade mark rights in respect of the name prior to registration of the Domain Name in November 1998, the Panel is unable to say, as there is no material before the Panel to enable the Panel to assess the nature and extent of the Complainant’s business prior to registration of the Domain Name.” Unless the complainant offers evidence of its reputation when the domain name was registered, “it would be difficult to say that the Respondent, in registering the Domain Name, was seeking to take advantage of any such rights.”

In order to establish bad faith registration, the complainant must demonstrate directly or by persuasive inference that the respondent had it “in mind.” One piece of evidence could be the content of the website; another could be the close geographic proximity of the parties; another could be the uniqueness of the term. Here [in Viko Elektrik], noted the Panael

there is nothing before the Panel to enable the Panel to say that the Respondent’s denial of all knowledge of the Complainant when it registered the Domain Name is not to be believed.

Further, the Respondent “produced evidence to show that [Viko] is a mark used by several different entities around the world,” thereby establishing that the name is not unique to the Complainant.

The fact that there are potential purchases of the <viko.com> and the domain name is for sale does not support a claim under paragraph 4(b)(i) of the Policy. “Respondent states that several companies have approached it to purchase the Domain Name, some being prepared to pay a six-figure sum for the name.” “So, what? [notes the Panel in response to the assertion that the domain name is being held passively]. “There is no obligation to make use of a domain name any more than one is required to take one’s car out of the garage or use one’s telephone.” The “so, what” is equally applicable to selling the domain name. A respondent is entitled to sell its assets, unless the proof demonstrates that it (in fact) had the complainant in mind. That evidence was missing in Viko Elektrik.

 

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