A recent WIPO UDRP decision contains language to the effect that it is “reasonable” to infer that a registrant of a ccTLD domain name knew or checked the corresponding gTLDs for similar registrations. The UDRP case involved the domain name infotools.co, which is the ccTLD for Colombia, and has been marketed as an alternative to .com gTLDs.
The Panel notes the Respondent’s claim to want to use the Domain Name for future services of his/her company Technolyst.Inc in Colombia. The Panel finds this explanation highly improbable since this company does not appear to use the name anywhere “Infotools” on its website.
It is also apparent from the evidence that the Respondent and T. Dayal have registered large numbers of domain names. It is therefore reasonable to infer that they would have checked who owned the domain name <infotools.com> before registering <infotools.co> and found that it was the Complainant.
In these circumstances, it does not appear to the Panel that the Domain Name was directed to a web page containing sponsored links innocently as a temporary measure pending a genuine commercial use of the Domain Name. Rather, the Panel infers that the Respondent intentionally attempted to attract Internet users to the web page by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web page, for commercial gain in the form of click-through commissions. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of bad faith registration and use, or at any rate would have done so if T. Dayal had remained the registrant.
The Panel further finds that the Domain Name was transferred to the present Respondent in bad faith in the hope of defeating the Complaint. The Panel infers that the Domain Name was registered in the name of the Respondent with the likely intention of continuing the previous use for sponsored links and/or with a view to sale to the Complainant at a profit.
In all the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith. (emphasis added)
So there was some shenanigans going on with transferring the domain name to attempt to avoid an adverse decision under the UDRP, which ultimately proved both futile and probably helped the Complainant’s case, as anyone who has children will know: when they’re acting guilty, they invariably have done something they shouldn’t have.
Still, this is an interesting decision because the panelist seems to believe that the registrant(s) knew about the company that owned infotools.com, and purposefully chose infotools.co to profit on the misdirected traffic (this is, in essence, a typosquatting case). And yet there’s a totally different side of this that the panelist didn’t get into: the generic nature of the mark at issue. Apparently that issue wasn’t raised because the respondent(s) did not raise it, and that’s a classic example of why you should protect your domain name portfolio. I think this one could have easily gone the other way.
