Where a trademark preexists a domain name the registration may be suspicious but “a legitimate right or interest can certainly be created in an arbitrary or entirely fanciful mark, through lawful adoption and use,” 7(S) Personal GmbH v. Zhaohua Luo, D2010-1953 (WIPO February 3, 2011). “[Un]lawful adoption and use” are complainant’s burdens. Suspicion itself is not proof of either:
In the Complaint, little is pleaded in this regard, except for the conventional allegations that the Respondent was never licensed to use the disputed domain name, was not commonly known under the name, and is not making a bona fide use of the name. In the Panel’s view, these allegations are not sufficient to meet the burden of proof when weighed against the countervailing facts established by the Respondent.
The principal interest in 7(S) lies in the views expressed in the dissent and concurring opinions. The disagreement centers on a coincidence, namely that the domain name which is identical to “an arbitrary or entirely fanciful mark” redirects to another of the Respondent’s websites that carries content unrelated to an “semantic” understanding of the domain name. The dissent insists that there be “ some semantic relationship between the domain name and the website for that use to be bona fide.” If it were otherwise (according to the dissent), then any redirecting would “trigger a right or legitimate interest in the domain name.”
Ordinarily, redirecting a domain name to another website supports the complainant’s argument that the respondent lack rights or legitimate interests in the domain name. However, the concurring opinion in 7(S) explains why there can be no bright line in reaching judgment on this issue:
I agree with the view expressed in the dissenting opinion that an arbitrary use of a domain name normally does not create rights or legitimate interests. In this case, however, we are presented with such use of the disputed domain name over a long period of time, together with the paucity of evidence that the use was pretextual or otherwise illegitimate…. Furthermore, there is no indication whatsoever that the Respondent’s selection of the domain name was motivated in any way by or targeted at the Complainant or its mark.
While it is true that “Respondent’s use of ‘7S’ does not appear to have a natural connection to a website in the field of categorical geometry… [and] is not literally descriptive of the subject matter of its website … that would not preclude the Respondent from acquiring legitimate interests or rights in the mark through appropriate means.” The reason for this is that “[t]rademark rights are fundamentally grounded in use; where the Respondent can provide tangible evidence of lengthy use (such as the 12 year period in this case) a portion of which actually predates the Complainant’s proven rights, then Respondent’s use can support a finding of legitimate interest or rights even in an arbitrary mark that is unrelated to the character or nature of the Respondent’s business.”
This does not mean that in every instance “Respondent’s use can support a finding” but it does where “we are presented with such use of the disputed domain name over a long period of time, together with the paucity of evidence that the use was pretextual or otherwise illegitimate.”