It is usually the case that where a Respondent doesn’t bother to respond to a UDRP complaint, the Panel will mostly accept the Complainant’s arguments at face value. This seems self evident, almost analogous to a default judgment in a court proceeding. So when a case decision is published where the Respondent didn’t respond but still won, it’s worth taking notice.
Enter this recent denial by a WIPO panel, on the domain serv-air.com. The Complainant is a subsidiary of Air France, and operates a global catering business under its mark, SERVAIR, which was apparently registered in 2002. The domain name was registered in 2010.
The Complainant seemed to rely on the global scope of its business and its many other registrations of domains, especially ccTLDs, containing the SERVAIR mark. The Panel’s decision doesn’t describe whether any variations of the SERVAIR mark were registered, which is something I would have found important (as in, some registrations for “serv-air” or the like).
Even though the Respondent didn’t respond at all, the Panel determined that the requirement of bad faith registration and use, the third prong of the UDRP, had not been met by the complaint.
Apart from the fact that the disputed domain name has been found by this Panel to be confusingly similar to the Complainant’s trademarks for the purpose of the first element standing requirement, the Panel finds there is not much direct evidence of the Respondent’s intention to create a likelihood of confusion for the purpose of diverting Internet users to Respondent’s website based on the Complainant’s mark in particular. The Panel notes the website appears to be in use to post links to inter alia human resource services which bear little if any apparent relationship to goods and services provided by the Compliant under its SERVAIR mark. This is not a case in which, for example links to the direct competitors of the Complainant are in evidence. (emphasis added)
This is significant for domain developers. Pay-per-click advertisement pages, landing pages, link farms, whatever you want to call them, have been found to carry a sort of stigma of cybersquatting, but recently the tide has turned away from an automatic finding of bad faith and Panels have been more willing to consider the content displayed on the pages. This was especially important in the Octopus.com decision recently, where the travel-related links doomed the apparent generic use of the domain name, because it seemed to specifically target the trademark use of a company called Octopustravel Group Ltd. Lots of domainers cried foul about that case, and perhaps there’s an element of truth to the argument that “octopus” is a wholly generic term. But the Respondent apparently doomed itself with PPC links that directly related to the business of a company that use that term as part of its name.
Here, critically, the Respondent did not do that. And this was despite the Respondent’s allegedly poor history with respect to domain name registrations and the UDRP.
On the other hand, the Panel notes the evidence provided by the Complainant alleging that VALUE-DOMAIN COM has also registered and is using at least three other domain names that visibly infringe the rights of Société Air France’s subsidiaries. Evidently such consideration does little to assist the Repondnent.
However, this Panel finds such conduct per se (while suggestive) is not enough to tip a finding of bad faith use in the Complainant’s favour in the present finely balanced case.
Interpreting the case provided by the Complainant, SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092 regarding <sembcorp.com>: “surrounding circumstances would lead one to infer that the [r]espondent ‘knew’ or ‘ought to have known’ of the existence/trademark rights of the [c]omplainant”. All the evidence suggests that Respondent’s registration of the disputed domain name was calculated rather than accidental.
This Panel understands that while the Respondent may have been a respondent in several UDRP cases, which may reflect a pattern of behaviour, such past behaviour is not enough to determine bad faith use in present case where clear evidence of bad faith use, as the use of pay-per-click links to competitors’ websites is lacking.
The Panel is not convinced on the balance of the evidence in this case that in using the disputed domain name <serv-air.com>, VALUE-DOMAIN COM is intending to refer to the Complainant.
The Panel understand that the Complainant‘s business, although it is used by millions of people all over the world, does not necessarily correspond to a trademark of such notoriety, that a term like “serv-air” would necessarily bring to mind the Complainant’s trademark.
Although the Complainant has presented evidence that the Respondent is in the business of domain name speculation, in this case in particular, this Panel finds insufficient evidence of bad faith use to enable it to confidently find bad faith.
This Panel seems to say that where there’s no clear bad faith use currently, it will not necessarily rely on allegations of a poor history with respect to the UDRP. (This statement seems odd; if there’s clear evidence of bad faith currently, you shouldn’t have to point out a Respondent’s history. Though I guess you would normally do that, just for extra support. Still, if it’s not helpful in a borderline case, one wonders when or where it’s supposed to be helpful. It is, in point of fact, written into the definitions.)
As I’ve said elsewhere, if you’re engaging in the practice of parking pages with PPC ads, you would be well advised to ensure that the links provided do not reference any obvious (or perhaps even some nonobvious) trademarks. Since the business model depends on this, it might be a good idea to retain a lawyer to do a full review of the portfolio of web sites, to be sure there’s no possibility of a UDRP being filed.
