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Non Commercial Use of the Domain Name and What Constitutes Use

“Actively used” does not require the domain name to resolve to an active website, although websites are “the prevalent use.” The Hong Kong and Shanghai Banking Corporation Limited v. Bill Lynn, D2001-0915 (WIPO September 28, 2001). Email, FTP and hosting services “are legitimate commercial uses …. [T]he lack of a formal web page does not detract from these real and viable commercial uses,” Innotek, Inc. v. Sierra Innotek, D2002-0072 (WIPO April 22, 2002). Domain names composed of common words of which a subset is surnames have long been used for offering vanity email services. Their legitimacy lies in their specific use, but legitimacy dissolves if respondents stray from the business model.

“The more significant issue” in Viking Office Products, Inc. v. Natasha Flaherty a/k/a ARS – N6YBV, FA1104001383534 (Nat. Arb. Forum May 31, 2011) “is that it appears Complainant has made the common error of assuming that because there is no active website associated with the Domain Name, Respondent is not making a legitimate use of the Domain Name.” If respondents offering Internet services qualify under paragraph 4(c)(i) of the Policy (“bona fide offering of goods or services”) there is no reason to disqualify respondents under paragraph 4(c)(iii) for non commercial use of the domain name. This applies to the use of common words. The Respondent in Viking Office Products registered <> which was used in family email addresses, <> and <>. Such use for a common word supports a defense under paragraph 4(c)(ii) of the Policy (“commonly known by the domain name”).

Legitimacy does not extend to appropriation of famous and arbitrary marks. Thus, registering “lion king” for use as a personal e-mail is not a legitimate noncommercial or fair use or evidence that a respondent was commonly known by the domain name. Disney Enterprises, Inc. v. The Lion King a/k/a NULL NULL, FA0906001266261 (Nat. Arb. Forum June 24, 2009). Similarly, Sydney Opera House Trust v. Jeffrey Campbell, Hkcc-0900013 (December 29, 2009) for prospective use as a “heritage web site.” It also does not extend to surname domain names that resolve to websites displaying links to goods or services competitive with a complainant. Pernod Ricard v Co., D2008-0789 (WIPO August 21, 2008) (<>).

Domain names used for Internet services may not be easily discernible for lack of a website but they are not inactive or fail for passive use. For a complainant to overcome the paragraph 4(c)(iii) defense of noncommercial use it must offer proof of targeting. In Viking Office Products, “[a]dditionally, the <> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s VIKING mark.” A Google search for ‘viking’ “return[ed] about 74,600,000 hits, including numerous commercial and noncommercial uses.” A respondent is free to register a domain name consisting of common terms. Examples are too numerous to site, but are permitted on a “first-come, first-served” basis.

In preparation for the UDRP proceeding Viking Office Products resorted to undercover efforts to entrap the Respondent into demanding a price for <>. “It appears that this tactic was for the purpose of getting Respondent to offer to sell the domain name and establish a basis for bad faith.” This rarely works, because such negotiations are commenced by the complainant and there is no proof that selling the domain name was the respondent’s primary purpose in registering it. In any event, in this case the tactic backfired; the Panel entered a finding of Reverse Domain Name Hijacking.


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