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Use of Terms by a Multitude of Third Parties

For trademarks on the weaker end of the spectrum the complainant cannot simply rely on the respondent’s mode of business. Competitors are not deprived of their choices unless the evidence demonstrates adoption for a proscribed purpose. Although professional domainers may be held to a higher standard of investigation their choices do not “not automatically lead to the assumption that the disputed domain name was registered in bad faith…. At least some evidence supporting bad faith is required,” Novo Nordisk A/S v. Andrew Melcher, D2010-0095 (WIPO March 19, 2010). The higher standard applies in cases involving well-known trademarks or trademarks of businesses for which denial of knowledge suggests “willful blindness” – a concept formulated in V&S Vin & Sprit AB v. Ooar Supplies, D2004-0962 (WIPO December 27, 2004) which according to the Panel “is equivalent to intent under most jurisdictions.”

The higher standard of investigation for domainers was further developed in a trio of cases between 2005 and 2007. In Mobile Communication Service, D2005-1304 (WIPO February 26, 2006) the Panel held that “even a cursory search [by Respondent] on search engines like Yahoo! and Google would have shown that [“mobilecom”] is a trademark.” In Media General Communications, Inc. v. Rarenames, WebReg, D2006-0964 (WIPO September 23, 2006) the Respondent failed to “indicate that it explored the possibility of third-party rights in any way before registering the Domain Name [<mcmh.com>] and offering it for sale.” Panels insist on some demonstration that the respondent has implemented appropriate safeguards against infringing a third party’s rights in its choice.

However, where a domain name identical or confusingly similar to a trademark is on the weaker end of the spectrum the respondent’s explanation is generally assertive rather than defensive. By defensive I simply mean that the respondent’s sole counter position is denial of knowledge. In the case of Novo Nordisk involving the term FLEXTOUCH the Respondent (who acquired the domain name in 2009 prior to the Complainant’s trademark registration) pointed out that the word and variants of it such as “flexitouch” “is used by a multitude of third parties to describe various products.” This suggests that the word is so common that no claim can be made for distinctiveness.

It is not in many of these cases that the respondent’s choice is free of uncertainty. What is essential is that in marshaling its case the complainant has to understand the proof required to establish its contention. Lacking proof of intention undercuts bad faith. In Novo Nordisk the Panel added that the Complainant “did not provide any evidence that the Respondent registered the disputed domain name with knowledge of the Complainant’s right in the term.” It is not sufficient for the complainant to argue “He must have known….” without explaining “how exactly the Respondent should have known, in view of the Respondent’s claim that the term … is not very distinctive, fanciful or arbitrary as such, is widely used by many others than Complainant and that the Respondent is unfamiliar with the Complainant and its trademarks,” EURO DATA GmbH & Co. KG v. Excel Signs, D2009-0465 (WIPO May 5, 2009) (<eurodata.com>).

Gerald M. Levine <udrpcommentaries.com>

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