Ordinarily, bad faith rests on a finding that the respondent is targeting the complainant, which implies (or at least an inference can be drawn) that it is aware of the complainant and its trademark. However, there are circumstances under which the respondent may genuinely have no knowledge of the complainant or its trademark and nevertheless lose its registration to the complainant. This is illustrated in ChemRite CoPac, Inc. v. Isaac Goldstein, D2010-0279 (WIPO May 7, 2010). The Complainant inadvertently allowed its domain name, <raceglaze.com> to lapse which it had owned since 1998. The Respondent purchased the disputed domain name at an auction in January 2010. The parties reside on different continents, therefore its denial of knowledge was plausible. However, the Respondent populated the website with sponsored links to manufacturers in competition with the Complainant. In such a case it is reasonable to say that the website “speaks” for the respondent and its testimony is conclusive against the respondent even though the respondent has no knowledge of the complainant or its trademark.

The Respondent in ChemRite argued three unpersuasive points. First, the silliest, involved a non sequitur, that since the Complainant had registered the domain name in 1998 it (that is, the domain name) “could not have been registered in bad faith.” Second, the Complainant had the opportunity but failed to “enter [the] auction,” allegedly thereby choosing “instead … to save money and tr[ying] to blackmail the Respondent into giving him the domain name for free.” Third, the “Complainant was sending emails to [an] obviously mistyped email address yet added the bounced email into its Complaint to make the Respondent look bad.” The third is interesting mainly because the Panel identified it as a factor “even though not conclusive” that the Respondent’s “failure … to reply to the Cease and Desist Letter … is a further indication of bad faith.”

Clearly, proving knowledge does not require evidence that the respondent had “actual” intelligence of a complainant or its trademark. Proof can be in the conjuncture of trademark registration and country in which the respondent resides, Perfetti Van Melle Benelux BV v. MBALogy, Gaurav Sharma, D2010-0370 (WIPO May 3, 2010), or, as in ChemRite the content of the website. Purchase of a domain name at auction even if in ignorance of the complainant or its trademark is not a complete defense and cannot shield the respondent because a suggestive or arbitrary signifier would have no value used in a non-trademark sense. That is to say, although each word has a dictionary meaning the combination of “race” and “glaze” is meaningless apart from its referent. That is why for the website to yield any financial return from Internet traffic the respondent has to populate it with links to the same categories of products manufactured by or services offered by the Complainant.

It is not simply that “the [ChemRite] Respondent is unfairly gaining a benefit at the expense of the complainant through the ‘click-through’ income generated as a result of these links.” Rather, the domain name and the website to which it resolves are misleading Internet users into believing that there is an association between the Complainant and the domain name owner “by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location” [paragraph 4(b)(iv) of the Policy]. It is bad faith to use a complainant’s trademark to offer similar goods or promote similar third party services not connected with the complainant for the respondent’s commercial gain; from that use is inferred bad faith registration.

Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com