Economic benefit or commercial gain is fundamental to all the examples of bad faith but paragraph 4(b)(iv) of the Policy is different from the other three in that it focusses more generally on the use to which the domain name is put. The other three include the phrase “you have registered” whereas 4(b)(iv) begins with “by using.” The key elements are that the respondent has 1) “intentionally attempted to attract,” for 2) “commercial gain” by 3) directing the Internet user to an on-line location and thus 4) “creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [that on-line] location, or of a product or service [at that] web site or location.” “[U]sing a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner,” Zions Bancorporation v. Randall Comstock, D2010-1095 (WIPO September 8, 2010) (<zionmortgageline.com>).

Proof of actual confusion is not a required element, SAP AG v. UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (unisap.com>). The Panel makes an assessment of “the objective likelihood of confusion,” Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO January15, 2001). It is not bad faith to register a domain name for the purpose of attracting Internet users for commercial gain. Proscribed, rather, is registering the domain name with the intention of taking advantage of the reputation of complainant’s mark. The respondent does not assist its case by diverting Internet users to a non-confusing destination. The respondent infringes the holder’s rights and violates the Policy when it operates a website “intentionally … to attract” Internet users diverted by the complainant.

“Commercial gain” has been construed to mean any use of a domain name by the respondent or its agent that produces an income or equivalent value, presently if active or in the future if inactive. It is broadly defined to include not only gain by the respondent but others in the chain of income from the website. Paragraph 4(b)(iv) “does not require the owner of the domain name to be the entity that commercially gains from any diversion. It is simply a requirement that it is intended that somebody does,” Associated Professional Sleep Societies v. l.c./Li Chow, D2007-0695 (WIPO July 11, 2007).

The element, “likelihood of confusion” – meaning consumer confusion as to the source of goods or services – is a concept familiar from trademark disputes under the Lanham Act, but it is has a narrower application under UDRP jurisprudence. The likelihood that confusion will ensue increases in proportion to the strength of the trademark, but holders of weaker trademarks are no less protected if the evidence establishes the quartet of factors. It is simply that a trademark measured in market strength has a wider zone of protection, making the infringement more obvious. The weaker the trademark the more proof to persuade the Panel of the violation.

In the case of Zions Bancorporation the Panel found “compelling circumstantial evidence that Respondent likely knew of Complainant’s Marks when it registered the Disputed Domain Name. In fact, Complainant offers evidence that Respondent admitted a connection between his website and the Complainant’s Marks by stating that it placed a link on his website as a courtesy to Complainant’s customers.” Nevertheless, and the Respondent’s good intentions notwithstanding, “by placing advertisements on [its] website for competitors of Complainant in order to solicit business that is directly competitive to the services provided by Complainant, Respondent is using the Disputed Domain Name to disrupt the business of Complainant” which is evidence of use in bad faith.

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