To state a defense under paragraph 4(c)(ii) of the Policy the respondent has to be “commonly known” by the domain name. The Panel in Bernard Janes v. L.J. Bubenicek & A. J. Main, A&L Technologies, DAU2010-0014 (WIPO September 6, 2010) “does not consider that a respondent could succeed under paragraph 4(a)(ii) of the Policy regardless of the circumstances in which it might have become commonly known by a disputed domain name that it has registered with an intent to appropriate another’s trademark.” Not simply acquisition of the domain name but there must be a more tangible submission to establish that one is “commonly known.” It “is one thing to be known, another to be commonly known,” Id. The Respondent in Bernard Janes suggested

that, in the two years of … developing its business in Australia, it has always represented itself as “Go Ballistic” and that its business is commonly known in Australia as being associated with the disputed domain name.

While “the Respondent’s website may suggest that the Respondent is at least known by the disputed domain name … [that] does not … provide substantial evidence that it has been ‘commonly known’ by the disputed domain name.” The evidentiary requirement is only satisfied on proof “that Respondents had rights prior to and not merely following from the use of the Domain Names”.

The Policy does not specify when respondent was known by the domain name but the full phrase, “[you] have been commonly known by” suggests that it must have been from a time that preceded the registration of the domain name. The term “commonly known” is construed to mean “known” prior to the acquisition of the domain name. If it were otherwise, “a respondent could rely on infringement to establish a right or legitimate interest – an outcome that is clearly contrary to the purpose of the Policy,” Bernard Janes. The “consensus … is that Respondent must already have been known [by the disputed name] at the time of registration or acquisition of the domain name in issue,” Nobel Learning Communities, Inc. v. Chesterbrookacademy, D2005-0753 (WIPO September 20, 2005) [<chesterbrookacademy.com>]. In Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., D2004-0324 (WIPO June 18, 2004) Respondents contended that they adopted “ets” because it was the natural acronym of their trade name Educational Training Service. The Panel held that this contention “misses the point.” The point being that “Respondents have not presented any evidence to demonstrate that they have been commonly known as ETS.”

In an attempt to overcome the disability of proof, a respondent’s convenient fallback position is that it is using the domain name “in conjunction with a ‘bona fide’ business and before they received notice from Complainant,” Educational Testing Service. However, “[n]ot all use prior to notice of the dispute qualifies as a bona fide use.” A business may be lawful, but its use of the domain name mala fides. Replacing inkjet cartridges, for example, is lawful but the “use of these … disputed domain names as the initial contact points and web page banners deprives that business of the character of being bona fide, ” Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, D2000-0878 (WIPO September 21, 2000) (<canonink.com>, <canoninkjet.net>. If legality of business were the standard, then “any cybersquatter that conducted a lawful business could always find refuge,” The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., D2005-1318 (WIPO February 22, 2006).

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