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Assessing Closeness of Domain Name to Trademark

The UDRP analysis begins with assessing the closeness of the domain name to the trademark. Identical is letter by letter the same; similar is a string that can be confused with the trademark. A complainant has standing to maintain a proceding only if it can show that the  accused domain name raisees the probability of infringing on complainant’s right to exclusivity of the mark in the cyber marketplace. However, what constitutes abuse sufficient to support a remedy is something more than registering and using a string of letters either identical or confusingly similar to a trademark. Initiating a proceeding on a non-actionable claim is an abuse of the Policy. What if the complainant initially believed it had a meritorious claim, and then learned from respondent’s submission that respondent had a right or legitimate interest in the domain name? This factual situation occurred in Avaya Inc. v. Avayo Electronics, FA1302001487607 (Nat. Arb. Forum April 19, 2013) where the 3-Member Panel came up with a surprising answer that (to my knowledge) has not previously been offered and which I think marks an advance in declaring a reverse domain name hijacking.

Avaya illustrates the rare case in which Complainant has a history of commencing proceedings “against legitimate businesses” and having its complaints denied in all three. In the most recent case it is “Avaya” and “Avayo” (“[Respondent] chose the disputed domain name because it corresponds to the name of its Canadian corporation that was founded in 2005). In one of the earlier two cases, Avaya Inc. v. Moayyad Hamad, FA 1456063 (Nat. Arb. Forum Sept. 14, 2012) it is “Avaya” and “Ayava” (“[t]he Ayava name was created by combining one of the owners’ names, Aya Hamad, with the letters ‘V’ and ‘A’ (abbreviation for video and audio)”); and, in the other case, Avaya Inc. v. Sudhir Sazena, FA 1229266 (Nat. Arb. Forum Dec. 9, 2008) it is “Avaya” and “Cavaya” (“Cavaya” means “intelligence” in the Sanskrit language.”).

The most recent Avaya case that triggers this blog is important because it pronounces a view about responsibility where a respondent submits affirmative evidence that so totally undercuts a complainant’s claim that it becomes untenable. The 3-member Panel in Avaya suggests that continuing to prosecute a claim after it becomes clear there is no actionable infringement supports a finding of reverse domain name hijacking:

It is clear from the record that the Complainant knew that the Respondent is engaged in a legitimate business. When it filed the Complaint, the Complainant could plausibly have been unaware of the fact that the disputed domain name corresponds to the Respondent’s business name. However, the Complainant could not have ignored this after the Response was filed.

The appearance of an actionable claim may support commencement of a proceeding, but once the appearance is shown to be insubstantial the claim dissolves and should be withdrawn, at least that appears to be the holding:

Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent. Further, the Complainant merely asserts that the Respondent registered and used the disputed domain name in bad faith, without providing any evidence to support its assertions.

Only in the middle case did the Panel make a finding of confusing similarity, and that because the apparent transposition of “y” and “v” is generally a clue to typosquatting.  However, similarity of domain name to trademark that could be confusing does not condemn its use where the facts demonstrate a right or legitimacy to it.

Where the evidence establishes at a hearing that a respondent is engaged in legitimate business activity complainant becomes at risk of RDNH if it continues to press its case. A similar result comes from another 3-Member Panel in Edward Smith v. Douglas Bates, FA1302001483682 (Nat. Arb. Forum March 27, 2013) () where the domain name was registered eleven years before Complainant acquired its rights in the trademark. Here, the initiation of a proceeding is abusive. No case could ever have been made out. In declaring that Complainant was engaged in reverse domain name hijacking the Panel held that it “should have known it could not [prove its case]” Further,

the Complainant filed its trademark application shortly after it was unable to acquire the Disputed Domain Name from the Respondent on acceptable terms. The panel finds that failing in this effort, the Complainant undertook to use the Policy to acquire the Disputed Domain Name.

In doing so it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy” citing earlier authority.

These cases illustrate two streams of thinking. The first supports withdrawal of a complaint upon conclusive responsive evidence that there is no factual basis for abusive registration; the second supports finding abusive use of the proceedings where the factual circumstances cannot possibly have justified an actionable claim.

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