Transferees who acquire domain names from related entities or by purchase and registrants who independently acquire their domain names after non-renewal by prior registrants are treated differently. The former inherit bad faith use (the alleged good faith transfer is implicitly tainted); the latter, untainted by any prior bad faith use, start anew.  Just how heavy the complainant’s burden is to prove bad faith registration where there is bona fide use is illustrated in A. D. Banker & Company v. Domain Invest, D2010-1044 (WIPO September 30, 2010) contesting <adbankers.com>; decision by a 3-member Panel. The Complainant is the holder of the trademark A.D. BANKER. For contrast, see La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Easthaven Ltd., D2010-1167 (WIPO October 22, 2010), an alleged intra-party transfer.

While there were a number of factors in A.D. Banker “point[ing] in the direction of a finding of bad faith” there was also countervailing evidence. The Respondent did not deny that the TLD could be read as identical to the Complainant’s trademark. However, it was (it claimed) attracted to the domain name because of the combination of the word “ad” which is short for “advertising” and “bankers.” Nevertheless, “[p]rima facie [] the Domain Name suggests a reference to the Complainant and the Complainant’s mark.” The Panel accepted the Respondent’s “not entirely implausible explanation” that it

intended and intends to use the Domain Name in order to promote content related to advertising and bankers. It [the Respondent] accepts that this is “Perhaps not the ‘best’ keyword search domain”, but contends that it is not an entirely illogical combination for that purpose.

This assertion was supported by a witness statement signed by the general manager of the Respondent. The Panel was (it said) “reluctant to conclude that Schnermann[’s] statement is untruthful which it would need to do if the Complainant is to succeed in these proceedings) in the absence of further compelling evidence in this respect.” In other words, the Complainant would need further evidence to rebut the Respondent’s declaration. The Panel granted the Complainant the opportunity to supplement the record by a Procedural Order.

The Complainant supported its contention of bad faith registration by demonstrating that the Respondent was continuing the bad faith use of the predecessor registrant. Ordinarily, this would be conclusive against the respondent, but in A.D. Banker the Respondent “claim[ed] that the[] search terms [that] resulted from the pay-per-click settings [were] chosen by the previous owner of the Domain Name” and that the continuation was a “question of timing.” It had not had time to make the appropriate adjustments. It claimed that it

registered the Domain Name either on June 21 or June 22, 2010. The Complaint was issued only on June 23, 2010 and the evidence of the web pages operating from the Domain Name which contained the problematic links relied upon in the Complaint were dated June 22, 2010. It asserts that although it changed the settings for the Domain Name “immediately” on registration, this would take several days (the Respondent suggests up to 3 days) for these changes to be “reflected in the various cached servers throughout the world”.

According to this (the Respondent argued) “it would be unfair to draw any conclusions adverse to the Respondent’s motivations and intentions from web pages that were dated the day after the Domain Name was transferred.” It appears, then, that the Complainant pounced too quickly, which is the reason that the Panel concluded its decision with the following:

The Panel would, however, add that should in future the Respondent use the Domain Name in a manner which can only be explained in some manner by reference to the Complainant’s marks (whether directly or through the means of an algorithm devised by its pay-per-click service provider) that would seriously undermine the credibility of a number of the assertions that have been made by the Respondent and which have been key to the Panel’s findings in this case.

Uncertainty of bad faith registration supports benefit of the doubt in the Respondent’s favor. However, if the Respondent continues or commences bad faith use and there is sufficient evidence to reexamine the Respondent’s motivation in registering the domain name the Complainant is invited to commence a fresh proceeding, although its maintenance at that time “would be a matter for a subsequent panel to determine.”

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