Of the three defenses [4(c)(i-iii) of the Policy], the first and third require proof of a legitimate use. The first defense expressly requires proof that the legitimate use or demonstrable preparations for it preceded notice of the dispute. The third defense is not explicit that the “noncommercial or fair use” use be before notice of the dispute, but it cannot be after because a post notice change cannot legitimize pre-notice infringing use. The second defense requires proof that the respondent is commonly known by the domain name whether or not the domain name resolves to an active website. Commonly known is construed to mean known prior to the acquisition of the domain name. Adventitious naming (by which I mean adopting a name consistent with the domain name to make the registration appear legitimate) is a subterfuge. This was pointed out in Hennessy Industries, Inc. v. Private Whois Service c/o ammco.com., FA 1360143 (Nat. Arb. Forum January 17, 2011) where the respondent listed itself on the WHOIS directory as “ammco.com” in an attempt to position itself to claim a right or legitimate interest under 4(c)(ii) of the Policy.
No amount of legerdemain transforms AMMCO (the Complainant’s trademark) into two “common generic term[s].” According to the Respondent “AMMCO is … composed of the three letters ‘amm’ and ‘co’, which is an abbreviation for the common generic word ‘company’.” While it may be true that the “mere registration of domain names that contain generic terms [assuming ‘amm’ is such] establishes a legitimate interest under the Policy,” a lexical string that forms a well known trademark cannot be deconstructed into its elemental parts without violating the anti-dissention rule.
A respondent seeking to bring itself within the second defense must proffer “affirmative evidence” that prior to the acquisition of the domain name it was who it now claims to be, Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003). “Mere ownership of a domain name is not sufficient to show that a respondent has been ‘commonly known by the domain name’; if it were, every domain name registrant automatically could claim protection under paragraph 4(c)(ii) of the Policy,” Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum January 13, 2003) (the Respondent called itself NEIMAN-MARCUS). The “consensus … is that Respondent must already have been known [by the disputed name] at the time of registration or acquisition of the domain name in issue,” Nobel Learning Communities, Inc. v. Chesterbrookacademy, D2005-0753 (WIPO September 20, 2005) [<chesterbrookacademy.com>].
The pretense of claiming to be who one is not is a factor in determining the issue of bad faith. It carries over from the second to the third element; is some “evidence of” the respondent’s mala fide intent in registering the domain name. The additional evidence lies in the use of the domain name, which in the case of Hennessy Industries, resolves to a website populated with links to the Complainant’s competitors that clearly takes advantage of the Complainant’s reputation. It is not a defense for the respondent to pass the blame for the website to the registrar who populates, but rather affirmative proof of infringement.
The Panel in Hennessy Industries held (consistent with precedent) that “[although] revenues accrue to the domain name registrar who offers a ‘parking service’ for domain holders until they are ready to post their own content … [the] respondent is spared the cost of website hosting fees, which inures to [the] respondent’s commercial benefit. Therefore, [the] respondent has allowed the domains to be used to attract, for commercial gain, Internet users who may be confused as to [the] complainant’s affiliation with those sites.” This “is sufficient evidence of [the] respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”