Domain names violate the Policy when the purpose for their registration is to take advantage of another’s trademark. Intent is an implicit element of proof. This is why common words used as domain names for their everyday meaning without proof that the respondent had the complainant’s trademark in mind resist monopolization. In many instances, the question of good and bad faith is determined by context. The respondent in Viking Office Products, Inc. v. Natasha Flaherty a/k/a ARS – N6YBV, FA1104001383534 (Nat. Arb. Forum May 31, 2011) (discussed June 14) persuasively explained her choice of “Viking” but the respondent in Viking Office Products, Inc. v. Multisys Computers Limited, FA1104001385981 (Nat. Arb. Forum June 15, 2011) did not.
Context does not exist by itself; its parts have to be organized into an organic whole and supported by evidence that factual circumstances are not simply make-believe. Multisys Computers in Viking Office Products arguing for a right or legitimate interest in <viking-office.com>, <vikingstationery.com>, and <vikingsupplies.com> contended that it has a “client company called Viking Office Supplies Limited.” It claims that this company (on whose behalf it allegedly registered the domain names) was “commonly known by the disputed domain names as the company was incorporated by change of name in 1987 and the descriptive words ‘office’ ‘supplies’ and ‘stationary’ relate to its business as well.”
Statements of fact are inherently demonstrable; statements of fantasy are not. Assertions of fact must be shown to be true. It may be true that there was once a Viking Office Supplies whose assets and goodwill survived its demise, but a vendor is not by assertion alone a beneficiary of those rights. The Panel summarized the Respondent’s explanation as follows:
Viking Office Supplies Limited has generated goodwill in the VIKING mark from its use since 1974 or at least the date of incorporation, that the goodwill has been transferred to the VIKING marks successors and assigns, with Respondent believing the latest owner is in administration under UK law, and claims to be under a duty of care to protect, as a service provider, the assets of its client company, including the goodwill and disputed domain names until released by the administrator or receiver under UK law.
Respondent’s theory, however, lacks traction for a number of reasons. A vendor to a “client company” would not entitled to possession of a domain name offering competing goods even if there were ever a company known as “Viking Office Supplies.” The “commonly known by” requirement refers to the domain name holder not an absent alleged beneficial owner. Unlike trademarks that signify source, domain names are essentially addresses in cyberspace. That is why to withstand a claim of abusive registration each holder has to prove its own right or legitimate interest. A proxy cannot do this, which is the reason why the Respondent in Viking Office Products told (invented?) a story about “Viking Office Supplies.” To be raised to “legal fact” the story teller has to show, not tell.
The analytical step from lack of rights or legitimate interests to registration and use in bad faith is not automatic, but the path is eased when the disputed domain names themselves contain or point to websites containing goods competitive with the complainant’s. So that while “Viking” is a common word that can legitimately be used by others in an appropriate context (Respondent Natasha Flaherty) its use as a competitive website makes it more probable than not that it was registered to take advantage of the trademark.