A person is free to choose any string of phonetic elements or numbers as a domain name as long as the choice does not infringe the legal rights of any third party. In making a choice, the registrant is doubly bound. It represents and warrants in the registration agreement and further assents to a similar although more detailed provision in the Policy that

(a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.

A respondent is more likely to be called to account and its actions found abusive where the domain name is identical or confusingly similar to a trademark with an established reputation, and less likely where the respondent has registered a domain name composed of common terms used in a non-infringing manner. Of recent cases, National Association of Realtors v. John Fothergill, D2010-1284 (WIPO September 20, 2010) is on one end of the spectrum (where it cannot plausibly deny knowledge of the complainant) and Halo Innovations, Inc. v. Name Administration Inc. (BVI), FA1009001344653 (Nat. Arb. Forum November 3, 2010) on the other (where it can). National Association of Realtors was discussed in the October 26 Note.

The domain name in Halo Innovations which was registered after the Complainant’s application for its trademark SLEEP SACK is identical to the it (<sleepsack.com>). However, the Complainant ran into opposition to its proposed trademark and its application only advanced to registration on the Principal Register on March 30, 2010. The Respondent is a domainer, a class of registrants held to a higher standard of investigation under the representation and warranty provisions. The question is, What action must the registrant take to avoid infringement and what investigation satisfies its duty?

It is settled that a respondent cannot be willfully blind to a trademark holder’s rights, but it is equally settled that a complainant cannot establish willful blindness by alleging that the domain name is identical or confusingly similar to a trademark. The Complainant alleged that

Respondent should have had constructive notice of Complainant’s rights in the name by virtue of this extensive use, and constructive or imputed notice is especially true for entities – such as Respondent – who register vast numbers of domain names. Indeed, Complainant refers to a case in which the Respondent in the present case was the Respondent, and in which it was concluded that it could not be willfully blind to the Complainant’s earlier rights.

The phrase “should have” (the saddest combination of words in the lexicon) is not a substitute for proof. UDRP requires evidence of actual not constructive notice, although proof of the former may be inferred from the factual circumstances. In many of these cases it is found that whatever the complainant’s reputation may be in the present it was not in the past. This places on the complainant a burden of demonstrating that so considerable was its reputation when the domain name was registered that it belies the respondent’s denial of actual knowledge. However, the Panel agreed that the “domain name is comprised entirely of common terms that have many meanings and that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith.” So, separate and apart from the fact that the Complainant in Halo Innovations did not satisfy that burden of proving actual knowledge, the Respondent’s use of the website “to display[ing] links to camping goods is a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com