Close legal questions (or, questions said to be close and difficult) pose a particularly hard problem because they open the way to benefit of doubt in decision making. This is particularly evident in three member panel decisions with dissent, although if doubt is present the benefit of doubt should favor the respondent since the complainant has the onus of proof. The majority in Advance Magazine Publishers Inc. v. Premier Models International Inc., D2013-0757 (WIPO July 5, 2013) noted that the case “present[ed] a difficult close question,” denying the complaint over a vigorous dissent. Complainant (according to the majority) failed to make any “express allegation of bad faith use,” although it was evident that “bad faith use” was central to the complaint. The pleading oversight

forces the Panel to decide on its own, without benefit of Complainant’s analysis, whether this email exchange [response to a cease and desist letter] is alone sufficient to show the required bad faith use. Although the Dissent would find bad faith use, the Majority is unwilling to do so, concluding instead that Complainant has not met its burden.

Is this a question of form over substance? I think it is. It recalls a case early on the UDRP docket in which Complainant alleged only “identical” and not “confusingly similar.” Chernow Communications, Inc. v. Jonathan D. Kimball, D2000-0119 (WIPO May 18, 2000) (C-COM and <ccom.com>). The dissent in that case interpreted Complainant’s omission as an “elect[ion] not to pursue a claim of confusing similarity for strategic reasons…” and would have dismissed the complaint for failure to state a claim. He went on to explain that “confusing similarity is not merely a lesser included version of identicality, and alleging one of these does not automatically allege the other.” The dissent was unforgiving: he saw “no need to supplement the allegations that Complainant actually made with others that Complainant chose not to include, or to afford Complainant a second opportunity to allege what frankly is an obvious component of a prima facie case under the UDRP.” The majority, however, saw the dissent’s stance as “elevat[ing] form over substance.” If an omission of that kind were the criterion [the Chernow majority held] “it would be very easy in the future for a prospective cybersquatter, by inserting or deleting a hyphen” to avoid losing the domain name to complainant.

The majority’s stance in Advance Magazine is similar to the dissent in Chernow: “[J]ust as we are procedurally strict with Respondent, so too must we be strict with Complainant. The Complaint here does not allege bad faith use of the disputed domain name, but instead alleges only bad faith registration.” Of the four theories of bad faith, only 4(b)(iv) concerns bad faith use. The others concern registration. Advance Magazine alleged

The facts of this case demonstrate that Respondent registered the disputed domain name for commercial gain and to trade on Complainant’s goodwill and reputation. Knowing the association Vogue Magazine has with premiere modeling, Respondent lures young, aspiring models through its use of the Vogue brand. In addition, Respondent has shown a willingness to refer to “www.vogue.com” in a fashion that suggests an affiliation.

The error for which Advance Magazine is faulted is that the concluding sentence stated: “For these reasons, there is no doubt that the disputed domain name was registered in bad faith.” In the majority’s estimation, Complainant should have added “bad faith use,” which would have been redundant since it had already alleged “to trade on Complainant’s goodwill and reputation.” The majority’s error is more serious because it failed to pay attention to distinctions among the four circumstances of bad faith. The expressions “commercial gain” and “trade on Complainant’s goodwill and reputation” come from paragraph 4(b)(iv) of the Policy. The factual situation would have been different if Respondent had registered its <voguefashion models.com> before VOGUE became an iconic trademark, but Complainant’s mark is famous. In reading the unassailable facts in this case (Respondent defaulted) the analogy is with phishing:

Respondent has not denied the allegation that “knowing the association Vogue Magazine has with premiere modeling; Respondent lures young, aspiring models through its use of the Vogue brand.”

But, the Complainant (at least as the majority reads the record) “has neither alleged nor proved fraudulent misrepresentation or phishing for personal information or, for that matter, any other sort of conduct that would constitute comparable bad faith use.” Rather (to the dissent’s dismay), it focuses on Respondent’s clever response to Complainant’s cease and desist letter which reads:

We are not using the name Vogue Magazine, the dba for this company is Vogue Fashion Models, Inc. Our attorneys advised us that there is no relation with Vogue Magazine, so there should be no issue. Our customers are aware of this. We will cease and desist from using this name until this is looked unto further and reverified. We have no desire to use this name if it’s in fact gives anyone the impression we are Vogue Magazine.

The response is clever because it interposes a “defense” available under the Anticybersquatting Consumer Act. 15 U.S.C. §1125(d)(1)(B)(ii) which reads: “Bad faith intent … shall not be found in any casein which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.” The Panel in Fireman’s Fund Insurance Company v. Steve Schwartz, FA1010001355350 (Nat. Arb. Forum December 15, 2010) held that “There is no reason that the concept of domain name related ‘bad faith’ under federal law and under the UDRP should not be consistent.” If that is to be accepted it should be with the qualifier noted in H.R. Conf. Rep. 106-412, that “The bill is carefully and narrowly tailored, however, to extend only to cases where the plaintiff can demonstrate the defendant … used the offending domain name with bad-faith intent to profit from the goodwill of a mark belonging to someone else” (emphasis added).

The problem is that the Advance majority went only half-way in understanding the “reasonable grounds” defense: “Evidence that a party relied on advice of counsel when registering a domain name is relevant when deciding whether the respondent acted in bad faith,” citing The Jolt Company v. Digital Milk, Inc., D2001-0493 (WIPO August 1, 2001) in which a 3-member Panel held, on the facts in that case (which are not similar to the facts in Advance) “However, given the opinion of counsel and the differences in the goods and services of the parties, this does not appear to be a case of deliberate infringement. Legitimate disputes over likelihood of confusion are beyond the scope of the current Policy.”

In contrast to Jolt, “Advance” is not a dictionary word. The “reasonable grounds” should rather have been applied to the registration. The ground for the decision are mistaken. The dissent is correct. Using a domain name for email to deceive the consumer is equally bad faith as it would be for an active website. “There is no requirement under the UDRP that a disputed domain name must be used for a website to be used in bad faith.”