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What Proof Satisfies for Demonstrable Preparations?

Receiving notice after a website has become operational supports a defense under paragraph 4(c)(i) of the Policy. There is no violation if the respondent is either presently using or making “demonstrable preparations to use” the domain name, as long as it is “in connection with a bona fide offering of goods or services.” The amount of proof (from the respondent’s perspective) is necessarily lesser for generic and descriptive names identical or confusingly similar to complainant’s trademark and greater where the comparison is with well-known trademarks. The reverse is true for complainants; the respondent’s “lesser” is their “greater.”

The Complainant in Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) is the current holder of trademarks for AUTOCAR, first registered in 1905, but which the Complainant only acquired in 2001. The Respondent registered <> and <> in 1998 and 1999. “The AUTOCAR trademark had multiple owners prior to Complainant.” According to the Complainant it was “ ‘inconceivable’ that Respondent ‘innocently registered’ the disputed domain names given the AUTOCAR mark’s ‘worldwide fame’.” However, the term “autocar” (a quaint ancester of “automobile” and perhaps not as common as it once was although clearly understood) has democratized since its first use in commerce; it is no longer a newly formed noun nor is the signified an object of curiosity as once it was. Nevertheless, the question is, Were the registrations a deliberate infringement of the Complainant’s trademark rights? The Respondent denies any prior knowledge of the trademark.

Denial of knowledge cannot be overcome by an allegation that a trademark enjoys “Worldwide fame.” The status has to be earned. However, “Complainant does little to support the alleged ‘world-wide’ fame of its mark other than point out that the mark has been registered for over one hundred years.” This is not a pay-per-click case. There is nothing on the website to suggest competition with the Complainant. “The contested issue is whether Respondent has established that it comes within the safe harbor provided by paragraph 4(c)(i) of the UDRP: that it made demonstrable preparations, before notice of the dispute, to use the disputed domain names in connection with a bona fide offering of goods or services.”

Keeping in mind the common meaning of the word (that is, common even though the word itself may no long have the currency it once had), it is not implausible that a company in the automobile buiness would have a legitimate interest in the disputed domain names. The general rule (elastic depending on the term in issue) is that “[p]roof of demonstrable preparations to use a disputed domain name does not require a showing of ‘a fully operational business’,” citing DigiPoll Ltd. v. Raj Kumar, D2004-0939 (WIPO). “Rather, it is sufficient for Respondent to show that, before notice of the dispute, preparations to use a disputed domain name were made, ‘even if…those preparations were “perfunctory”, meaning superficial, or mechanical’.” Satisfactory proof includes “a business plan or partners, the proposed technology or how it would function, how the business would be financed, [or] a timetable,” Id.

In counterpoise to the complainant’s burden, the Respondent too must make an affirmative showing. This leaves an open issue as to whether the Respondent’s business is a bona fide offering of services. Its proof – shown with sworn statements and contemporaneous documents – demonstrated that it was. “Respondent has shown considerably more than ‘superficial or mechanical’ preparations to use the disputed domain names.”

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