In prosecuting a claim under the UDRP the complainant cannot prevail unless it demonstrates that the respondent had its trademark in mind when registering the domain name and intended to take advantage of it for commercial gain. There is no per se illegitimacy in registering and using a domain name identical or confusingly similar to a trademark. Some complainants, however, have an inflated view of their trademark’s fame and penetration in the market which leads to their belief that the respondent could only have been targeting them in choosing an identical or confusingly similar domain name.

The Complainant in Havanna S.A. v. Brendhan Hight, Mdnh Inc., D2010-1652 (WIPO November 26, 2010) argued “that a domainer operating a domain name linked to a link farm parking page to generate income through PPC advertisement can per se not have a right of legitimate interest in the domain name.” In VEDA GmbH v. Future Media Architects, Inc. / com fma, FA1009001347931 (Nat. Arb. Forum November 29, 2010) the Complainant “contend[ed] that none of Respondent’s domain names have been used for any legitimate interests and contends that all of Respondent’s web sites exhibit only token use for the purpose of UDRP proceedings.”

Although PPC advertising and “token use” of domain names do not of themselves support bad faith, they may support a respondent’s lack of right or legitimate interest. The consensus is that where the respondent “has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant’s business, and is not using the domain name to divert Internet users for commercial gain,” lack of bona fide use on its own is insufficient to establish bad faith,” Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO October 12, 2001).

The Respondent in Havanna has as a target audience for its website European travelers to Cuba. In opposition to the Complainant who contends that “havanna” is not generic because the capital of Cuba is “Havana” or “La Habana”, the Respondent argues

that the term “havanna” in the disputed domain name <havanna.com> is a generic or descriptive word for the name of the capital of Cuba in the languages of Germany, the Netherlands, Sweden, Norway, etc. The landing page associated with the disputed domain name is an advertising page composed of links to travel, hotel and related links of interest to persons who are considering or planning to visit the city of Havana or Cuba. Respondent argues that the generic use of the term “havanna” in association with links to the City of Havana and Cuba is a legitimate use of the term in good faith to attract Europeans considering a trip to Havana or Cuba who conduct an Internet search for “havanna”. In recent years over 114,000 Germans visited Cuba annually.

This is a pursuasive argument. Respondent is found to have rights or legitimate interests because, among other things, “the web page under <havanna.com> does not on the present record appear to have links based on the value of Complainant’s trademark, but only on the generic meaning of Havana as the capital of Cuba.”

Gerald M. Levine <udrpcommentaries.com>