A domain name identical or confusingly similar to a trademark is not dispositive of abusive registration; neither is a respondent’s lack of rights or legitimate interests. The three tests are independent of each other. Internet users may in fact be confused; the respondent may in fact fail to prove that it has a right or legitimate interest in the domain name, but if the complainant and respondent are not competitors and there is no evidence that the respondent had the complainant in mind when it registered the domain name an allegation of bad faith is no more than an unproved assertion. Suspicion is a good start, but by itself it is not sufficient to support abusive registration.

These truths are illustrated in CIE Exploitation des Services Auxiliaires Aeriens Servair v. Value-Domain Com (Privacy Proxy), Wert Domain, D2011-0608 (WIPO May 31, 2011) involving a claim for <serv-air.com>. A combination of common words does not (or does not necessarily) create a common phrase; it also does not surprise (even if suspicious) that another person continents apart has chosen the same combination for its domain name. In the ordinary course, there are numerous instances of simultaneity of invention; why not phrases?

There have been instances where the complaint has been dismissed and the domain name holder subsequently changes the content to take advantage of the trademark holder’s good will. An example is Newport News, Inc. V. Vcv Internet, AF-0238 (eResolution July 18, 2000). In that case, the trademark holder years later when the violation became clear chose to commence an action under the Lanham Act and moved for partial summary judgment on its ACPA claim [Newport News Holdings Corporation v. Virtual City Vision, Incorporated, d/b/a Van James Bond Tran, ___ F3d ___, 09-1947 (4th Cir. April 18, 2011)]. In rejecting the defendant’s arguments, the Court held:

The record conclusively shows that in making changes to its website in 2007, VCV shifted its focus away from the legitimate service of providing information related to the City of Newport News and become instead a website devoted primarily to women’s fashion…. Not only was the site dominated by advertisements for apparel, it also contained dozens of links to shopping websites.

The defendant argued that this did not amount to bad faith. At its registration of the domain name the evidence supported the respondent/defendant’s position that it was in good faith in pursuant of a particular business purpose, but intentional transformation of content strips the respondent/defendant of its defense. The ICANN decision found that VCV was not in competition with [Complainant] precisely because of their disparate business models, but changing the model has consequences. A domain name holder “cannot escape the consequences of its deliberate metamorphosis.”

Over the years Panels have invited losing complainants to refile if circumstances change. Not many invitations have been accepted. Newport News Holdings chose a civil action and won transfer of the domain name together with a substantial statutory damage award. In CIE Exploitation, the factual circumstances also did not support bad faith. But, the Panel issued a warning to the Respondent, not dissimilar to the warning by the e-Resolution Panel in Newport News:

The Panel wishes to record that although the Complainant has failed on balance here to persuade it that the present use of the domain name is in bad faith, if such use would change after the issue of the present decision to become clearly abusive of the Complainant’s trademark, such material new development may provide grounds for a re-filing naturally subject to a determination being made by a future panel on the satisfaction of the relevant criteria regarding such re-filing.

The value of a domain name employed for capturing traffic – why retain it if it cannot earn its keep? – is dependent on the content of the website. There has to be something on the website that attracts attention. The evidence in Newport News Holdings (trademark case) showed that the returns increased significantly as the model changed to take advantage of the holder’s trademark. Given the nature of the Respondent’s business in CIE Exploitation that could be the fate of <serv-air.com> and it is to that possibility that the admonition is directed.