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Credibility as a Factor in Inferring Intent

It is perfectly rational to register a domain name for its income potential. Pay-per-click revenue can be respectable, but it shades into illegitimacy when the motive to create revenue is coupled with intent to take advantage of another’s trademark. While “generation of revenue from domain name parking activities is not necessarily activity in bad faith” it is mala fides to use a domain name “in the hope and expectation that … similarity [to the Complainant’s trademark] would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page,” Fundação CPqD – Centro de Pesquisa e Desenvolvimento em Telecomunicações v. Gary Lam. D2009-1403 (WIPO November 27, 2009).

The assessment in Fundação CPqD “[e]ssentially … boils down to the question; is the Respondent using the Domain Name with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?” Respondents conventionally deny having the complainant in mind when they registered the domain name. In many instances geographic distance makes the denial plausible. EURO DATA GmbH & Co. KG v. Excel Signs, D2009-0465 (WIPO May 5, 2009) (Germany and U.S.A.). Denial not plausible in Fundação CPqD or Credit Industriel et Commercial S.A. v. Demand Domains, Inc., D2009-1184 (WIPO October 19, 2009) (same Panel in both cases) because the apparent random strings of letters – “cpqd” and “escic” – correspond to the Complainants’ trademarks. Whatever may be appearance, the strings are not random, but referential or symbolic.

The Panel relies on a number of facts to support a finding of bad faith registration that are worth looking at. The Respondents in both cases have a history of UDRP findings against them for abusive registration. History undermines a respondent’s credibility in denying knowledge of the Complainant’s rights unless it gives a fuller account as to how it selected the letters. In order to succeed on such an argument the respondent has to show that its selection reflects its normal practice (generic words, 4 or 5 letter strings) and explain how it decided on the specific sequence it registers. Does it, for example, use an algorithm to select the sequence of letters? “Perhaps the [d]omain [n]ame is merely one of an extensive set of registrations by the [r]espondent all of which comprise similar ‘meaningless’ combinations of five letters.” But if that is the case, it needs to be fleshed out with evidence. Silence is construed against the party asserting a right.

In Fundação CPqD the letters sequenced as they are “have no obvious meaning in any language and are not associated with any person or business other than the Complainant.” The “only credible reason why an Internet user would type the Domain Name into a browser would be that he or she was seeking information about the Complainant or its activities.” The confusion element under 4(b)(iv) of the Policy means misleading the Internet user into believing that the website is that of the trademark holder – sometimes referred to as “initial interest confusion.” “It does not matter that when the Internet user arrives at the pay per click site that it then becomes clear that the website is unconnected with the trade mark holder.” The damage is already done because the respondent has achieved its goal of enticing Internet users to the website.

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