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It Is Not Who You Say You Are, But Who You Are That Counts

For a respondent to succeed in showing it is who it says it is it must make an affirmative showing that it “ha[s] been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights” [Paragraph 4(c)(ii) of the Policy]. In determining whether respondent establishes this defense it is settled that its rights must have existed prior to registration and not coincident with it – Sony Kabushiki Kaisha aka Sony Corporation v. Sony Holland, D2008-1025 (WIPO October 2, 2008) (Complaint denied). Respondent’s nickname “Sony” derives from “Sonia.” The problem for the Complainant is that her married name, “Holland” is also the name of a country in which Complainant does business – and not merely the result of registration – Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., D2004-0324 (WIPO June 18, 2004).

Registrants have tried a number of ploys to escape forfeiture including pretending to be the complainant, Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum January 13, 2003); Club Monaco Corp. v. clubmonacoonline, D2011-1186, D2011-1186 (WIPO August 30, 2011), but the name by which the domain is registered does not qualify a respondent as being “commonly known by” the domain name. This is most recently illustrated in Homer TLC, Inc. v. HomeDepo Inc., FA1109001408632 (Nat. Arb. Forum October 28, 2011) (). The pretense is either adoption of the complainant’s name in the domain name or in the registration of the name.

In Homer, Respondent (who did not appear in the proceeding) identified itself in the WHOIS directory as “HomeDepo Inc.” While this creates the appearance of authenticity (which it is intended to do), it is in fact an illusion intended to mislead Internet users. In order for the respondent to authenticate itself it must either answer and explain its choice of domain name or if it defaults the record is clear that it either is or is not who it says it is. Two other recent cases illustrate these points. Michael Brandt Family Trust and its licensee Eco-Fresh Industries, Inc. v. Green Street Dev / Philip Beere, FA1109001408477 (Nat. Arb. Forum October 14, 2011) (, Respondent appeared and answered the complaint) and Grundfos Holding A/S v. / Incredible SEO Mehul (Sailesh Patel / Ajay Soni), D2011-1355 (WIPO October 31, 2011) (, Respondent defaulted).

In Eco-Fresh Industries, the Respondent appeared and alleged that it had conducted its business under a d/b/a “Eco-Fresh Planet” at the time it registered the domain name. “However, this argument is insufficient [for a ‘commonly known by’ defense because] the use of the d/b/a would have to have been such that it amounted to a common-law trademark, and no such showing was made.” Failing to prove the defense, however, is not conclusive of bad faith. “The use of the expressions ‘eco’ and ‘eco-fresh’ as trademarks or a portion of a trademark are weak and dilute.” Respondent showed that other businesses also used “eco” and “eco-fresh” in their names. Also significant in determining intention is the identity of the parties’ goods and customers. In Eco-Fresh Industries, the Panel found “no support in the record” that the Respondent either sold similar goods and services or targeted the same customers. The Panel noted

Whatever might be said about whether the respective goods and services of the parties are related for purposes of trademark law, the issue for this Panel is whether the respective goods and services are related such that an inference can reasonably be drawn (or as in some cases, cannot reasonably be avoided) as to the intent of Respondent with respect to its registration and use of the Disputed Domain Name. This Panel finds that here the relationship does not support such an inference.

The interest in Grundfos (which the Panel found to be phonetically similar) is that although Respondent defaulted it still prevailed on the issue of rights or legitimate interests. Clearly not in the record, but the Panel made an Internet search of “Groundforce Pumps” and found that it “leads to a webpage describing Respondent’s products. Indiamart, Ground Force Pumps Private Limited.” This emphasizes a significant difference between UDRP proceedings and procedures under civil rules of practice, in that a default is not accepted as an admission of liability. The burden remains with the complainant. Panels are authorized to conduct some minimal investigation, which in Grundfos yielded sufficient proof to rebut Complainant’s prima facie case.

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