In deciding on the issue of a respondent’s good or bad faith conduct, there are two obligatory questions: “Why did the Respondent register the Domain Name [in which he has no right or legitimate interest]?” and, Why would one register as a domain name the name of another entity, knowing it to be the name under and by reference to which that entity carries on business?” In Israel Bar Association v. Itai Ram, D2010-0003 (WIPO February 15, 2010) the questions are rhetorical since the answer is self-evident in this case.
As between paragraphs 4(a)(ii) and 4(a)(iii) of the Policy there is a symmetry. In the first the respondent has the burden of rebutting the complainant’s prima facie proof that it lacks any right or legitimate interest in the domain name which essentially means proving good faith; in the second, the complainant must prove conjunctive bad faith. Although lack of rights or legitimate interests is not conclusive on the issue of bad faith – the onus remains at all times with the complainant – it is not without meaning. The Respondent in Israel Bar offered proof to support future intention for the disputed domain name, but a future oriented intention is not equivalent to “demonstrable preparations” to do that which it allegedly intends. It could be said that an unpersuasive rebuttal is worse than no evidence, because no evidence increases pressure on the complainant to prove bad faith whereas an implausible explanation actually assists the Complainant with its burden.
The Respondent (Israeli educated) offered two (arguably inconsistent) explanations for registering <israelbar.com>, that he intended to create an “an online website for mobile devices that will provide a portal with links to popular Israeli bar” and the other for “a website for mobile devices that will provide an online bar (similar to the Google Bar, or the Yahoo Bar) with links to popular Israeli websites.” The Panel noted that if the latter was a clarification of the former “that the Google and Yahoo ‘bars’ are more commonly referred to as ‘toolbars’ and <israelitoolbar.mobi> would have been a much more informative domain name than the Domain Name <israelbar.mobi>.” In any event “the Respondent’s explanation does not ring true.”
In those cases in which a respondent lacks rights or legitimate interests but complainant’s proof is insufficient to establish registration in bad faith it is generally found that the respondent got there first. Either the trademark postdated the registration of the domain name as in CP Masters B.V. v. RareNames, WebReg, D2009-1673 (WIPO February 11, 2010) or it was a generic or descriptive term lacking market penetration to have come to the respondent’s attention as in Patricia Kelley v. Innovation HQ, Inc., D2009-1723 (WIPO February 6, 2010). However, if a respondent cannot rebut complainant’s proof on the second requirement and on the third requirement cannot explain why it registered a disputed domain name identical to a well known trademark then it is an easy step to conclude that it registered it to take advantage of the trademark.
If the respondent is going to offer an explanation it should be both factually consistent and related to the applicable law. Implausibility of explanation affects how the speaker himself is regarded, credibly or not. The Panel in Israel Bar concluded that “In the absence of an explanation, the Panel is entitled to infer that the Respondent’s intent was abusive. Where, as here, there is an explanation, but the Panel does not believe it, the Panel has no hesitation in holding that the Respondent’s intention was abusive.”
Gerald M. Levine <udrpcommentaries.com>
E-Mail: gmlevine@researchtheworld.com