Despite misgivings expressed by some panelists over the past year (the Octogen line of cases), where there is no evidence of bad faith registration the Policy does not penalize a respondent for changing use before notice and filing of complaint. After notice and filing of complaint there are different rules. Inadvertent transgressors typically involving domain names composed of generic or descriptive words and combinations used in their commonplace sense are treated more kindly than respondents advertently taking advantage of the complainant or its trademark. Yesterday’s case, American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Nat. Arb. Forum July 27, 2010)(<americanway.com>) brought attention to this issue and it is worth reporting.
The Panel in that case noted that “[c]ontrary to Complainant’s urging, the Panel draws no adverse inference from the fact that Respondent made post-complaint changes to its website.” Although “other panels may have held that changing a website after being notified of a dispute cuts against, or negates a finding of rights or interests in a disputed domain name [citing decisions to that effect] … this Panel respectfully sees such holdings as unwarranted departures from long standing evidentiary rules and rational[e] concerning subsequent remedial measures.”
It could be argued that a position that “draws no adverse inference” under any circumstances is not sufficiently discriminating. It is appropriate when applied to the inadvertent transgressor, but not otherwise. The Panel really makes a case for the former. “A respondent, by changing its website to mitigate concerns levied by a complainant via either a cease and desist letter or a UDRP complaint, arguably reduces further harm from such website to the consuming public.” Modification of “such a website also may attenuate the harm to a complainant whose trademark or commercial interests are allegedly compromised by the website prior to remediation.” The Panel’s point is that respondents (in the innocent class) should not be discouraged from “this positive behavior…. [T]he fact of a website’s remediation should not create an evidentiary inference adverse to the respondent.”
The Panel in American Airlines arrives at this conclusion on the authority of the Federal evidence rule where “the rational[e] for excluding evidence of subsequent remedial measures is set out in the Federal Rules of Evidence §407 and its accompanying Notes.” He cites GMC v. Keystone Auto. Indus., 453 F.3d 351, 359 (6th Cir. 2006) for the proposition that “finding that evidence of post-litigation changes to the form of an allegedly infringing trademark device was prohibited pursuant to FRE 407.” Since “Rule 407 is applied in trademark litigation … there is no reason why its rational[e] should not be consider[ed] and its principles applied to UDRP disputes where appropriate.”
Other Panels take a different view. For some the defense is limited to actions taken “before any notice to you of the dispute,” hewing strictly to the letter of paragraph 4(c)(i) of the Policy. “To allow Respondent’s claim that he has made post-filing changes to his website to alter the outcome of this dispute would open the door for all future respondents … to avoid the consequences of their actions,” Hewlett-Packard Company v. Alvaro Collazo, FA0302000144628 (Nat. Arb. Forum March 5, 2003). Another Panel similarly held: “If use following complaints were taken into account, the Policy could be rendered wholly ineffective by respondents rapidly posting websites which ostensibly constituted fair use of disputed domain names,” Poker Host Inc. v. Russ “Dutch” Boyd, D2008-1518 (WIPO December 1, 2008).
The logic to this position is that a respondent should not be rewarded for sanitizing its website upon notice of infringement. The two views can be harmonized by considering where respondents fit on the continuum. There are certainly respondents who inadvertently transgress; where the evidence supports a right or legitimate interest. Just as certainly, the Respondent in American Airlines being a good example, there are respondents who advertently transgress.