The key concept of the Policy is exploitative intent directed to a holder’s trademark. If the respondent has registered and is using a domain name non-exploitatively, resting its case on paragraph 4(c)(iii) of the Policy, it is likely to have a legitimate interest in it. The Panel in Bulmers Limited and Wm. Magner Limited v. (FAST-12785240) magnersessions.com 1,500 GB Space and 15,000 Monthly Bandwidth, Bluehost.Corn INC/Jason LaValla, D2010-1885 (WIPO January 17, 2010) notes that prior decisions have identified “three types of legitimate non-commercial or fair use: … ‘criticism & commentary’, ‘parody sites’, and ‘fan sites’.” But, these three are not the universe of possibilities.

The Respondent in Bulmers is an amateur musician associated with local bands. The domain name, <magnersessions.com> which is confusingly similar to MAGNERS is, according to the Respondent an elision of “Marty” and “Wagner.” He uses the website as a portal for friends to download the “sessions” without charge. “The word ‘sessions’ is commonly associated with the recording or rehearsal of live music.” “What is a legitimate noncommercial use must be determined by the circumstances of each case.” The “velcro” case is a good example, Velcro Industries B. V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, D2008-0864 (WIPO July 28, 2008) (<velcroart.net>): “it would take an exceptional case to succeed where there was no malicious or exploitative intent directed at the complainant [or its trademark] at time of registration of the domain name.” The Velcro Respondent was an artist working with velcro.

The Complainants in Bulmers alleged what they could not (or, at least in this case did not) prove. Their case “is largely formulated on the basis that the Respondent was seeking to exploit the value of the Complainant’s MAGNERS mark when he registered and used the disputed domain name. The Complainant says that the Respondent has copied or imitated its trade mark primarily to elicit an offer from the Complainant to purchase it.” However,

there is no evidence that the Respondent’s website was intended for commercial gain. Neither is there any evidence that the Respondent sought to misleadingly divert Internet users looking for the Complainant…. There is also no evidence that the Respondent was motivated to tarnish the Complainant’s mark. Tarnishment usually involves a deliberate attempt to devalue a mark by associating it with things that dilute or damage its commercial value. There is no evidence that the Respondent’s website carried associations of this kind.

The mere registration of a disputed domain name “cannot be sufficient evidence, on its own, for a finding that the Respondent lacks a legitimate interest.” If it were, it would conflate the first and second elements of the Policy. To have registered and be using a domain name identical or confusingly similar to a trademark says nothing about whether the registration is legitimate.

To argue of a respondent’s registration that there is no conceivable non-infringing use of the disputed domain name can only be persuasive if the assertion is true, otherwise it shows a lack of imagination. The “difficulty with this argument [the Panel continues] is that the Respondent has put forward a plausible reason for his registration and use of the disputed domain name.” And, the “evidence of the Respondent’s website also supports his story…. The website otherwise does not suggest to the Panel that there is an ulterior motive behind it.” Finally, “[i]t is not, in this Panel’s experience, typical of a website established to exploit the value of a trademark.”