As a general rule placing a disclaimer on the website is not effective to legitimize a disputed domain name, although a legitimate reason for one cannot be ruled out. Disclaimers have been found appropriate in two circumstances, legitimate use of trademark for a bona fide offering of goods or services, car parts for example, DaimlerChrysler A.G. v. Donald Drummonds, D2001-0160 (WIPO June 18, 2001) (<Mercedesshop.com> and for noncommercial, fair use and free speech, Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, D2004-0206 (WIPO April 30, 2004). Respondents in both cases placed clear disclaimers of any association or relationship with the Complainant which were found appropriate.

But, in other circumstances, disclaimers merely bolstered respondents’ bad faith because their uses were inconsistent with their professions that they were offering bona fide goods or services. Including a disclaimer “actually proves the knowledge of the Complainant’s mark,” Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry-Succession Saint Exupéry – D’Agay v. The Holding Company, D2005-0165 (WIPO June 9, 2005). And, adding a disclaimer after receipt of the complaint does not cure a respondent’s acts “because the appropriate behavior to consider is Respondent’s behavior prior to its receipt of notice from the Complainant,” Vide Universal City Studios, Inc. v. G.A.B. Enters., D2000-0416 (WIPO June 29, 2000) .

Two recent examples of disclaimers bolstering bad faith are Sanofi-Aventis, Aventis Pharma SA, Aventis Pharmaceuticals Inc. v. Syragon LLC., D2010-0331 (WIPO May 3, 2010) (<masacortnasalspray.com>) and AM General LLC v. CDC, FA1004001316858 (Nat. Arb. Forum May 14, 2010) (xhumvee.com>). In both cases the Respondents believed that they were doing the Complainants a favor. The Sanofi-Aventis Respondent “consider[ed] [offering information] both fair to the Complainants and generally helpful to the public.” The AM General Respondent alleged that the domain name “actually enhances the good will of Complainant by generating interest in a product to the private sector which cannot ordinarily acquire [refurbished and customized Humvees] from AM General.”

To succeed with these arguments the truth has to be matched with evidence. The Respondent in AM General made extravagant assertions about its business but evidentiary support there was none. When a party asserts a reputation or stakes out a position it owns it; it has to show that what it alleges really exists; that there is reality not bluster. The Sanofi-Aventis Respondent diverted Internet users to commercial sites offering the Complainants’ product, but there were also links to competing products. In these contexts, disclaiming is merely form not substance. Only when the disclaimer is consistent with the message is it successful. It is never successful when it is nothing more than persiflage.

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