“”All year, we have been citing WIPO decision for being inconsistent and blatantly unfair to domain holders.
Finally today as a late Christmas present to domainers we finally have a good decision, not only because the panel ruled in favor of the domain holder but because the panel took the time to very methodically discuss when trademarks will be protected, the circumstances under when domain parking is “legitimate use”. Moreover the domain holder in this case was a domainer. Someone who is described as the panel as holding domains and parking them as a business model and the fact that the domain holder was so engaged actually helped it in this case.
This is an important decision for all domainer to read and understand.
First as to this particular case.
The complaint had a registered trademark for the term Zero Spam.
“The only use to which the domain name has been put is to resolve to a parking page containing links to other websites advertising goods or services. At various times, those links have been to products or services concerning spam control.”
However the sole panelist in denying the complaint said:
“””The Respondent registered the disputed domain name well over seven years before the Complainant’s trademark registration was granted, almost six years before the Complainant’s application for trademark registration was lodged, and almost a year before the Complainant’s alleged first use of its trademark.”
“because there is no evidence that the Respondent was aware of the Complainant’s impending trademark rights at the time the Respondent registered the domain name, the Complainant cannot establish that the Respondent registered the domain name with bad faith intent.””
However the panelist went on to discuss that this is not an absolute rule citing the following cases:
“””This finding does not, however, resolve the dispute”””
In three recent decisions under the Policy – City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643, Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE-0900226, and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 (together, “Octogen trio of cases”) – a distinguished panelist expressed the view that, based on a close reading of the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003,
“”“bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder”””.
“The Policy itself expressly recognizes that, where the disputed domain name is identical or confusingly similar to the complainant’s trademark and the respondent has no rights or legitimate interests in the domain name, in certain circumstances bad faith use of a domain name alone is sufficient to entitle the complainant to a remedy.”
In the case of Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278, the panel found that the circumstances of the respondent’s use of the disputed domain name were such as to give rise to a remedy under the Policy, despite the fact that the domain name may not originally have been registered by the respondent in bad faith.
“”In that case, the respondent, upon becoming aware of the complainant’s trademark, intentionally altered its proposed use of the domain name to a use that caused confusion with, and disruption to, the complainant’s activities, and demanded from the complainant an option to acquire the complainant’s domain names as a condition of the respondent ceasing its confusing and disruptive use of the disputed domain name.””
Accordingly, these were bad faith actions that justified a finding in favour of the complainant.
“”In this case there is no evidence that the Respondent has, at any time after registering the disputed domain name in 2002, held the domain name registration in bad faith. There is, for example, no evidence that the Respondent intentionally altered its use of the disputed domain name so as to cause confusion with, or disruption, to the Complainant’s activities, or in any other way intentionally used the disputed domain name to derive a benefit from the Complainant’s trademark.””
Now for some of the general discussion about trademarks and domain parking being legitimate use:
“””Previous panels deciding disputes under the Policy have considered whether using the disputed domain name to resolve to parking pages with pay-per-click links can constitute a use of the domain such as to give rise to the Respondent having rights or legitimate interests in the domain name – see, e.g., Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (“Media General”), and Trade Me Limited v. Vertical Axis Inc., WIPO Case No. D2009-0093 (“Trade Me”).”
“”In the Trade Me case, the panel stated, “where a respondent registers a domain name consisting of a ‘dictionary’ term because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may establish a legitimate interest. “”
“”See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).”
“”In the Media General case, the panel recognised that “reselling domain names or using them for advertising links can in certain circumstances represent legitimate interests …but not in all instances”.
“”In the panel’s view, such practices are most likely to be deemed legitimate under the Policy when: (i) the respondent regularly engages in the business of registering and reselling domain names and/or using them to display advertising links; (ii) the respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others; (iii) the domain name in question is a “dictionary word” or a generic or descriptive phrase; (iv) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and (v) there is no evidence that the respondent had actual knowledge of the complainant’s mark. This Panel agrees with that reasoning.”””
In this case the panel found that:
“””The evidence of the Respondent’s numerous other domain name registrations indicates that the Respondent regularly engages in the business of registering domain names for the purpose of reselling and/or using them for revenue generation. The disputed domain name is a descriptive phrase, formed by the conjunction of two descriptive words. The Complainant’s trademark is not famous and, because it consists of a descriptive phrase, it is not particularly distinctive. Finally, given that the disputed domain name was registered more than seven years before the registration, and approximately one year before the first demonstrated use in commerce, of the Complainant’s trademark, the Respondent could not have had actual knowledge of the Complainant’s trademark until a significant time after registration and initial use of the domain name.””
“””Overall, it appears to this Panel to be more likely than not that the Respondent registered the disputed domain name due to its descriptive quality, and not its trademark quality. The descriptive quality of the disputed domain name is that it is a phrase that succinctly and clearly describes a situation in which spam is not present. The trademark quality of the disputed domain name only arose some substantial time after the Respondent registered and began using the domain name, upon the Complainant’s later adoption and use of this descriptive phrase as its trademark. Thus, this Panel is inclined to the view that the Complainant has failed to show that the Respondent lacks a right or legitimate interest in the disputed domain name.””
SO finally we have a “correct”, well reasoned, well written decision.
A domain made up of dictionary or generic descriptive words even if parked, is protected against a subsequent trademark as long as you do not change your parked page to “take advantage” of the trademark and/or attempt to directly “blackmail” the trademark holder buy overtly offering the domain for sale to them.
Andrew F. Christie was the sole panelist.