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Factors In Favor Of and Against a Party

Intention can be deduced from both sound and silence. What a party does and says or the reverse is evidence for and against relief. A respondent may deny knowledge of a complainant’s trademark, but gives itself away through the links on its website. The more well-known the trademark, the greater the likelihood that the respondent’s denial is unworthy of belief, but its credibility improves as the trademark weakens. This is as it should be because trademark law is not intended to suppress competition or stifle commerce where respondents have chosen common words, phrases and expressions pertinent in describing their own goods or services. The weaker the trademark the heavier the burden.

Sets of terms may be confusingly similar but the domain name not infringing absent evidence that it was registered with the intention of taking advantage of the Complainant’s reputation in the marketplace. Since reputation does not exist in a vacuum, it cannot go without showing, and if not shown is not proved. This balancing of evidence is illustrated in Jake’s Fireworks Inc. v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator, Customer ID: 47520518994762, D2011-0779 (WIPO August 9, 2011) (WORD-CLASS FIREWORKS and <>).

Jake’s Fireworks holds a registered trademark which it has promoted as a source of its goods in 8 states of the United States “where it operates distribution centers and throughout the U.S. by virtue of its retail locations.” The Panel acknowledges that Complainant’s “trademark is at least somewhat well-known even if it is not a ‘famous’ brand.” Hovering as a question is, Well-known to whom? However, the Respondent denies knowledge of the Complainant and its trademark – a credible fact “supported by sworn evidence of 2 witnesses.” The Panel notes that

There are some situations where this sort of denial is simply not credible, such as where a Respondent’s website displays obvious indicia of deceptive intent, for example use of infringing graphic or textual elements. However, where this sort of damning collateral evidence is absent, as is the case in this proceeding, the Panel is faced with the difficult task of evaluating Respondent’s knowledge of the trademark based on reasonable scrutiny applied to the parties’ submissions and weighed on the balance of probabilities.

Offsetting Complainant’s favorable evidence is the composition of the trademark, which is on the lower end of protectability. Respondent’s business model is selecting “attractive descriptive terms.” “In the circumstances of this Complaint, it [does not] appear[] that [it was] Respondent’s … intention to trade on the reputation of Complainant’s brand.”

A “brand owner who adopts a clearly descriptive mark must live with the consequences of that choice, which may sometimes include situations where other users cannot be prevented from adopting those same descriptive terms to identify the character or nature of their products.” If the domain name primarily describes the category of goods then “the presence of … links on Respondent’s website [is not] … a probative indicator of bad faith.”

On the balance of probabilities, weighing the totality of evidence for and against, does not support Complainant’s argument. “The absence of any other indicia of copying by the Respondent in the design, get-up or appearance of its website is also relevant to the failure to establish bad faith. For example, the Panel notes that the disputed domain name does not replicate the hyphenated form of ‘WORLD-CLASS’ which is used by the Complainant. That small difference is obviously not determinative, but it is consistent with the overall absence of the indicia of copying.”

In light of the evidence provided in this proceeding, the Panel finds that the Complainant has failed to establish on the balance of probabilities that Respondent’s conduct amounts to bad faith registration and use of the <> domain name.

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