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Not Granting a License is Not Dispositive of a Respondent’s Legitimate Interest

Holding a trademark does not guarantee a right to a corresponding domain name even where the trademark antedates the registration of the domain name. The paragraph 4(c) defenses, in fact, expressly recognize differences of timing. Paragraph 4(c)(i) of the Policy opens with the phrase “[b]efore notice of the dispute” expressing thereby that a respondent’s right or legitimate interest in a disputed domain name is not limited by an earlier acquired trademark. Paragraph 4(c)(ii) covers the situation in which prior to the registration of the domain the respondent had been commonly known by that name regardless whether another person earlier acquired the same name for its business sign. Paragraph 4(c)(iii) confers legitimacy on a registration as a matter of public policy where the trademark exists prior to the domain name registration. Implicit in all three defenses is the understanding that the parties have potentially parallel rights to the domain name and that the respondent only stands in an inferior position if the proof establishes that the registration was abusive.

In Bluearc Corporation v. Blue Arc, D2010-0181 (WIPO March 29, 2010) the Complainant “makes the argument that due to the notoriety and fame associated with the BLUEARC trademark, it would essentially be inconceivable for the Respondent to make a bona fide or a legitimate noncommercial or fair use of the disputed domain names without the intent for commercial gain.” This argument, however, presumes what is not the case that a respondent’s defenses are limited in scope to paragraph 4(c)(iii). “Notoriety and fame” are sometimes in the eyes of the beholder. According to the Respondent “Blue Arc-Advanced IT Solutions is a legally registered company in Turkey” where it is resident and since the website is written in the Turkish “there would be little benefit for any Internet user not fluent in the language.”

Existence of a company bearing the name of the domain satisfies paragraph 4(c)(ii) of the Policy. Operating a business that makes a bona fide offering of goods or services “before notice of the dispute” satisfies paragraph 4(c)(i). While it is true that the Respondent registered the disputed domain name without obtaining the Complainant’s permission, the “Complainant does not address the fact that the Respondent can indeed make a legitimate bona fide commercial use of the disputed domain names which is what the Respondent appears to be claiming.” In this respect the Complainant has “not sufficiently evidenced that the Respondent has no legitimate interest to the disputed domain names in light of the evidence put forth by the Respondent and upon the Panel’s assessment of the evidence.”

There is an additional factor in these cases involving the respective businesses of the parties. It may under certain circumstances be relevant if the parties service the same sector of the market. The Complainant in fact focused its argument primarily on paragraph 4(c)(iii) alleging that the Respondent was not making a legitimate noncommercial or fair use of the domain name. However, there is “no evidence that the Respondent is intentionally trying to divert Internet users to its domain pages or to create a false association with the Complainant or its business.” Rather, the “services offered by each respective Party are distinctly different and it would be unlikely that any party seeking to find assistance with its data storage needs would associate the Respondent with the Complainant. This is even more unlikely considering that many of the services of the Complainant are not even offered by the Respondent.”

Levine Samuel, LLP <>
Gerald M. Levine <>

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