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.
Domain Name: entrado.com
Elements not met: 4(a)(i), 4(a)(ii)
Case: West Corporation v. Domain Admin c/o Mrs Jello, LLC, No. FA 1321540 (Nat’l. Arb. Forum June 14, 2010)
Complainant owns U.S. trademark registrations for INTRADO for use in connection with providing 911 systems and other emergency response systems. Respondent uses the Domain Name to collect links relating to dating services and other adult-oriented topics.
The Panel denied the complaint, holding that Complainant failed to establish that Respondent lacked rights or legitimate interests in the Domain Name and also holding that the Domain Name was not registered in bad faith. The Panel found that the “mere fact that a domain name resolves to a website featuring adult content does not per se render the registrant devoid of rights or legitimate interests in the domain name.”
Moreover, Respondent used the Domain Name in the sense of the Spanish word “entrado” — to connote an “entry” or portal to the Internet. On this point, Complainant could not claim exclusivity where the word was being used “in a wholly different context that is aligned with the term’s common descriptive meaning.”
For much the same reason, the Panel found that the Domain Name was not registered in bad faith. “[R]espondent is free to register a domain name consisting of common terms for use of those terms in their common descriptive sense as the Respondent did in the instant case.”
Photo courtesy Flickr user rmceoin under this Creative Commons license.
Domain Name: glasgowsigns.com
Element(s) Not Met: 4(a)(i)
Case: Glasgow Signs v. 1st Signs Limited trading as Sign-A-Rama, No. D2010-0409 (WIPO May 4, 2010)
Complainant and Respondent are both in the commercial signage business around Glasgow, Scotland. Respondent began using the Domain Name for its business in March 2006. The parties disputed when Complainant began using the term GLASGOW SIGNS.
That dispute as to facts, however, was immaterial to the Panel’s decision in the overall domain name dispute.
The Panel noted that under paragraph 4(a)(i) of the UDRP, a complainant may demonstrate rights in a mark which are not registered. But a person can only obtain rights in descriptive terms when it is shown through evidence that the term has become distinctive by acquiring a secondary meaning. Even very extensive use may not be enough to bring a highly descriptive term into the realm of protectibility.
In this case, the Panel found that Complaint failed because Complainant had put forward none of the following:
- specific evidence as to the extent of its use of the descriptive term
- a statement as to the value of sales made under the term
- a statement of expenditures made on advertising or promotion of the term
- disclosure of the nature of any advertising or promotin
- evidence showing customers or suppliers had come to perceive the term as a brand
For these reasons, the Panel found that Complainant “fail[ed] at first base,” so there was no need to consider any of the remaining arguments under the UDRP.
Photo courtesy Flickr user rightee under this Creative Commons license.
