Top Menu

Original Registration Date of Transferor Not Probative of Transferee’s Good Faith

However sincerely a respondent may believe that its acquisition of a domain name from a prior registrant is in good faith the proof depends on the timing of registration, the composition of the domain name and the contents of the web site. The Respondent in State Farm Mutual Automobile Insurance Company v. Eli Shoval, FA0910001291281 (Nat. Arb. Forum December 1, 2009) contended that “the registration date, under the Policy, is the date or original registration by the previous owner.” That is incorrect. The same factors as apply to the original registrant apply to its transferee. “[T]he fact, that the Respondent did not register the disputed domain name itself but acquired it from the previous owner, does not mean that the Respondent has not ‘registered’ the Domain Name within the meaning of the Policy since there is no reason to differentiate between a direct registration and registration after transfer,” Genista-Werbegesellshaft mbH v. Unasi Inc., D2005-1051 (WIPO Nov. 22, 2005).

What are the facts in State Farm and how do they support the Respondent’s contentions? The composition of the disputed domain name, <> suggests that it was launched to typosquat on the Complainant’s trademark. The Respondent cannot argue that “statefar” is a word or that “state far” has any meaning. To persuade otherwise requires an iron proof explanation that a non-word is not simply a typographic error for a well known insurance company but has a meaning independently recognized by the general public. So, in an attempt to create the impression that the word means something the Respondent stated that “[f]or most of the time during the years 2002-2009, during the time ‘State Far’ had been used on the internet, its web page portal contained multiple categories and links to help browsers find information regarding Statefair as well as about travel, gardening, flowers, finance, health and other categories.”

It is unusual but not improbable to have a string of syllables forming a nonsense word as in <>, Pet Holdings Inc. v. Vladimir Prudnikov, D2009-1003 (WIPO September 21, 2009), but in these cases the nonsense is deliberately created by the trademark holder. The USPTO treats this by assigning the nonsense term as a “pseudo mark.” It is one thing to make a typographic error to skim off Internet users and another to pass it off as a nonsense word having an intrinsic meaning that Internet users are actually looking for.

The explanation by the Respondent in State Farm strikes one as lame because if a registrant wanted to provide information about “state fairs” it would be logical to spell the word correctly. Moreover, the explanation is undermined by the pleadings that “show that the domain name resolves to a website that contains hyperlinks to various third-party websites, some of which directly compete with Complainant.” This suggests that the Respondent’s purpose for purchasing “> was to pick up stray Internet users looking for the Complainant’s website who inadvertently forget to use the index finger of the right hand to press the “m” key. Ultimately, the contents of the website are determinative. A website populated with information about “travel, gardening, flowers, finance, health and other categories” accessible by clicking on <> – even without any linking to insurance companies – does not make sense because those categories have no relation to the meaning of the word. That is why the registration is in bad faith.

Print Friendly, PDF & Email

No comments yet.

Leave a Reply


Get every new post delivered to your Inbox

Join other followers:

%d bloggers like this: