UDRP’s remedial niche is limited to disputes of abusive registration of domain names rather than trademark infringement. The WIPO Final Report states that the “scope of the procedure is available only in respect of deliberate, bad faith, abusive, domain name registrations or ‘cybersquatting’and is not applicable to disputes between parties with competing rights acting in good faith,” (Paragraph 135(i)). The string of adjectives suggests that WIPO did not intend to pin down ‘abusive registration’ to a formula of conduct that would prescribe the result.  While there may well be consumer confusion concerning the source of goods offered by a respondent on its website, that in itself is not probative of “deliberate, bad faith, abusive” conduct.  A trademark holder may have a claim for infringement but not be entitled to a remedy under the UDRP.

In Island Sky Corp. v. sky water, D2010-0039 (WIPO February 25, 2010) the Panel found that the “water-related systems offered by the parties … are not strictly, as Complainant asserts, in direct competition with one another.  As the Panel understands it, Complainant produces water from the atmosphere and Respondent purifies existing water.”  Both parties use the terms “skywater”, the Complainant as a registered trademark; the Respondent in its domain name, <skywatersystems.com>.  The difficulty for the Respondent was that its logo resembled the Complainant’s.  It explained that
“At the time of its creation, Sky Water asked the branding company for a logo that was consistent with the products and services being Go-Green, and environmentally friendly. In retrospect, this was a mistake. Water companies everywhere at the time became obsessed with Go-Green and wanted Go-Green literature and logos etc. ”

Although resemblance between art on the respondent’s website with the complainant’s could be an indicator of copying, and copying probative of a respondent’s knowledge of the complainant, “[w]hen nature and environmentalism are themes embraced by a company marketing a water-related product, the images of a green leaf and a blue droplet leap fairly readily to mind. Respondent’s explanation that it outsourced the design of its logo and, by coincidence, the logo somewhat resembles that used by Complainant is not so far-fetched as to be discredited on its face.”

Also in Respondent’s favor in Island Sky is that the parties are respectively in Florida and New York.  Denial of knowledge is more plausible the greater the geographic distance of one from the other. Absent evidence of “deliberate, bad faith, abusive” conduct the Complainant’s allegations are insufficient to tip the scale.  Nevertheless, this decision only determines the issue reserved under the Policy.  It does not foreclose a claim under the ACPA for trademark infringement.  In Island Sky, however, this would be difficult because “[o]n the spectrum of inherent distinctiveness, the trademark SKYWATER to identify a system that produces water from the atmosphere in this Panel’s view can hardly be regarded as fanciful or even arbitrary. It is, for this Panel rather, suggestive at best and even arguably descriptive.”  While this does not “negate Complainant’s right to enforce its registered trademark rights … it can undermine an allegation in a streamlined proceeding under the Policy that Respondent was aware of the mark when it registered the Domain Name.”

Gerald M. Levine <udrpcommentaries.com>