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Domainer’s Responsibility for Creating a Filtering System to Prevent Competitive Links

Domainers are held to a higher standard for investigating bulk acquisitions. Denying knowledge of the complainant and its trademark is an insufficient defense. They are expected to deploy technology to prevent infringing activity. Paragraph 2 of the Policy reads in part “[i]t is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” The Respondent in Carol House Furniture, Inc. v. Registrant [3458020]: Oversee Domain Management LLC, D2010-2103 (WIPO March 21, 2011) “claims it had no knowledge of Complainant prior to this dispute, and that during the registration process, neither Respondent’s automated filtering system nor Respondent’s human reviewers identified <> as confusingly similar to a trademark.” Complainant has used its mark in commerce for 45 years.

Although not phonetically identical, “carroll” and “carol” have identical pronunciation. By itself, this would not ordinarily be suspicious, but alarm is sounded with proof that the Respondent’s “dynamically generated PPC links … have been optimized to boost ‘furniture’ to the most prominent links on Respondent’s site.” Whoops (I didn’t mean that!) is not a defense. A unanimous 3-member Panel rejected Respondent’s contentions because it was not forthcoming in its disclosures:

[It] does not state whether its filtering system uncovered Complainant’s mark, whether Complainant’s mark came to the attention of the three human reviewers, or whether the reviewers, if confronted with Complainant’s mark, considered the Domain Name unlikely to cause confusion, an assessment that would be different from this Panel’s determination.

Moreover, Respondent failed to answer questions about its reviewing procedures; answers to which are entirely within the Respondent’s control:

Does Respondent aggressively choose word strings that risk crossing the line? Again, the Panel is not told anything about the process used by Respondent’s human reviewers. While Respondent denies that it was targeting Complainant, the issue remains open as to whether it was aware of Complainant’s trademark. Is it too much to expect that Respondent should prove that it was unaware of Complainant’s mark, when this evidence is only within the zone of Respondent’s own operations?

The Panel was emphatic (without citing paragraph 2 of the Policy) that “Respondent’s use of automated technologies does not relieve [it] of its responsibilities to avoid infringing on the rights of third parties.” If there is an explanation for the competitive links to furniture, it must come from the respondent. “As between Complainant and Respondent, the latter should be able to provide its own data,” which it failed to do. The “possibility that furniture-related PPCs links can appear on Respondent’s web page, combined with the certainty that the web page included these links when Complainant accessed it, negate Respondent’s claim that its landing page had a ‘permissible purpose’ weighing against bad faith registration.”

Where a domainer has the technological means to prevent infringement of third party rights there is “no reason why Respondent, as a domain name company with filtering technology, could not have added code to its web page system in order to avoid furniture-related PPC links.”

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