It is not unusual to find trademarks composed of common terms competing in the cyber marketplace for the attention of Internet users or for an arbitrator to conclude that the coincidence is not an actionable offense. Recent examples include <kineret.com> (a Biblical geographic place name) [Swedish Orphan Biovitrum AB (pub) v. Zahav.net Inc., D2011-0257 (WIPO March 18, 2011)], <ultimateguitars.com> [Quester Group, Inc. v. DI S.A., D2010-1950 (WIPO February 14, 2011)], and <dealbook.com>[The New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010)]. Neither is it conclusive of abusive registration even if there is an existing relationship between the parties and likelihood of confusion. The threshold question is, What was the purpose for registering a domain name and the circumstances of acquisition?
The parties in USA DANCE, INC. v. Rhapsody Ballroom, FA1102001372072 (Nat. Arb. Forum April 4, 2011) (<usadance.com>) are not strangers. According to the Complainant and not denied, “Respondent is owned and operated by Richard and Laurie Collett … [who] were members of Complainant’s Southern Star Chapter until about 2004 … [and who] continue to maintain a close relationship with USA Dance, Inc., Tampa Chapter.” Respondent alleged that it had operated a Ballroom business since 1992 and in 2006 “opened and has since maintained an Ebay store selling dance shoes and dancewear for all styles of dance.” The disputed domain name became available for sale in 2007. The Complainant knew about its availability and decided not to register it for its own account. The Respondent “expended considerable funds to purchase the Domain Name, along with its archived web pages and feeder pages.”
The critical facts are the Respondent’s purpose and the timing of the acquisition. According to the Respondent and not disputed, its “sole intention was to use the Domain Name and website to advertise and promote [its] online dance wear sales … [which it has done] to drive traffic to and generate sales from the Ebay store.” Also not disputed, that “Respondent has invested substantial time and money updating and maintaining the Domain Name and the website.”
On the timing of the acquisition, the Complainant changed its name in 2005 from United States Amateur Ballroom Dancers’ Association, Inc. to “USA Dance, Inc.” It acquired a trademark for USA DANCE in 2009. The facts surrounding the acquisition of the domain name are also not disputed. According to the Respondent “the president of Complainant’s Southern Star Chapter in Tampa, Florida knew about and encouraged Respondent’s acquisition of the <usadance.com> domain name.” It is alleged and not disputed that Complainant also knew about the availability of the domain name and “chose not to purchase the domain name because it was too expensive.” There is no issue that the first holder of the domain name acquired it in good faith as the first to register the combined common terms “usa” and “dance.”
Where the respondent is found to be making a bona fide offering of goods on its website confusion can be ameliorated by disclaimer. In USA Dance, the Respondent “placed a disclaimer on its resolving website in a prominent, conspicuous place disclaiming any affiliation with Complainant to avoid confusion [that] … include[ed] a link to Complainant’s website.” Satisfying the legitimacy test under paragraph 4(c)(i) of the Policy Proof is conclusive because it negates bad faith registration.