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Website as Evidence of Abusive Registration, But the Infringement is the Domain Name

In determining whether a respondent has violated the UDRP the examination focuses on the domain name and the trademark not the website and the trademark, although the website (whether or not it exists and its content) is supportive evidence of the alleged infringement. The Panel draws this distinction in Xcentric Ventures, LLC d/b/a v. Report a Rip Off, Inc., FA1012001363406 (Nat. Arb. Forum January 18, 2011). He notes

It appears that the Respondent has fundamentally misunderstood the nature of the domain name dispute resolution procedure under the Policy. The issue here is not the website itself linked to the disputed domain name or the technology behind that website, rather, this procedure was create to combat typical cases of cyber piracy with regard to registered domain names. Thus, this Panel will only consider the complaint insofar as to see whether the three criteria under the Policy are met.

In making its choice, the registrant is doubly bound: by its representations and warranties in the domain registration agreement and paragraph 2 of the Policy to the effect that the domain registration does not infringe a third party’s rights. This has been construed to mean any intellectual property right, Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009), but a copyright violation independent of a trademark violation is not actionable under the UDRP.

In Xcentric Ventures the Respondent mimicked the Complainant’s website (a copyright infringement), although it claimed to be using a different technology than the Complainant: “The disputed website is a PHP clone script. There are no laws governing PHP clone scripts, development of such, and the sale and distribution of such. In addition, “Report A Ripoff” uses its own technology, SEO technology, and its own databases, report fields, RSS technology, Directory technology, Search Engine listings capabilities, which are not the same technology used on the Complainant’s website.” It is this “defense” to which the Panel refers in stating that the “Respondent has fundamentally misunderstood the nature of the domain name dispute procedure under the Policy.”

Copyright infringement is evidence of bad faith, but not necessarily conclusive of it if respondent’s proof demonstrates fair use of complainant’s materials. This is illustrated in Victoria’s Secret et al v. National Rag, FA0101000096492 (Nat. Arb. Forum April 3, 2001) in which the Respondent prevailed on the noncommercial and fair use defense. The Panel observed, however, that “given that the UDRP specifies that bad faith is not limited to the specific circumstances enumerated in Paragraph 4(b), certainly violations of United States Trademark and Copyright law may be considered as evidence of bad faith.”

The Respondent in Xcentric Ventures changed the order of the words of the trademark, RIP-OFF REPORT to <> and “virtually copied the Complainant’s website and domain name.” Reversing the order of words is an example of typosquatting. The second act, copyright infringement is evidence of bad faith which is conclusive (surplusage even) when coupled with typosquatting.


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