WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Validas, LLC v. SMVS Consultancy Private Limited Case No. D2009-1413 1. The Parties
The Complainant is Validas, LLC of Missouri City, Texas, United States of America, represented internally.
The Respondent is SMVS Consultancy Private Limited of Mumbai, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2009. On October 22, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On October 23, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 23, 2009.
The Center appointed Alan L. Limbury as the sole panelist in this matter on November 26, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Given the complexity of certain issues raised by this case (specifically the bad faith aspects) and the intervention of the Christmas and New Year holiday periods, the date for rendering the decision in this case was extended by Panel Order to January 29, 2010. 4. Factual Background
According to different WhoIs records before the Panel, the disputed domain name was registered on either March 5 or 6, 2000 and is due to expire on either March 5 or 6, 2011.
Since June, 2007, the Complainant has been providing telecommunication technology and services under the trademark VALIDAS. The Complainant operates a website at “www.my”.
Between December, 2008 and October 12, 2009, when the disputed domain name was suspended, the Respondent's website at “www.” advertised telecommunication products, savings and services.
The WhoIs information regarding the disputed domain name was last updated on October 23, 2009. 5. Parties' Contentions A. Complainant
The Complainant says the disputed domain name is identical or confusingly similar to its VALIDAS mark and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
The Complainant claims that the Respondent's website at copies the look, feel and colour palettes used by the Complainant, indicating that the Respondent is clearly and intentionally infringing on the Complainant's trademark and trade dress and intentionally confusing the Complainant's customers.
As to legitimacy, the Complainant says the Respondent has not invested in the business as a legitimate operating entity and its only reason for existence is to leach Complainant's customers and to sabotage its brand. The Respondent has shown no evidence of, or demonstrable preparations to use, the disputed domain name or a name corresponding to that domain name in connection with a bona fide offering of goods or services. It is clearly using the VALIDAS name to garner misdirected legitimate Complainant's customers to the Respondent's site for the sole gain of advertising revenue or other affiliate revenue. Validas is not a generic term. All the links on the Respondent's website refer the consumer to the Complainant's competitors or confusingly similar services and or technology companies, not owned in whole or in part by the Respondent. The real value of the disputed domain name is based on the value of the Complainant's trademark, from which the Respondent has profited.
As to bad faith registration and use, the Complainant says circumstances indicate that the disputed domain name was registered and was acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark (the Complainant) or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name.
The Complainant also says that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. Internet traffic reporting, which corresponds to the Complainant's marketing spend, clearly identifies traffic being directed to the Respondents site from December 2008.
The Complainant says the Respondent sought to hide its identity through the use of an India-based registrar LeadN, whose US-based entity is PublicDomainR and the use of PrivacyP services. The Complainant asserts that the Respondent's website was suspended due to non-compliance with ICANN's rules for maintaining accurate contact information.
The Complainant refers to the case of UnitedHealth Group Incorporated v. SMVS Consultancy Privacy Limited, NAF Claim No. 1275517, contending that the Respondent has repeatedly exploited third-party trademarks for the sole intent of generating revenue in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To qualify for cancellation or transfer of a domain name, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(ii) the disputed domain name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC V. MARK FREEMAN,WIPO Case No. D2000-1080 and ALTAVISTA COMPANY V. GRANDTOTAL FINANCES LIMITED et al.,WIPO Case No. D2000-0848. A. Identical or Confusingly Similar
Although the Complainant's mark was not used for the first time until after the domain name was registered, the use of the present tense in paragraph 4(a)(i) of the Policy, (“is identical”) contemplates that a complainant needs merely to establish that it has trademark rights at the time of the filing of the Complaint in order to satisfy this element, which embodies no requirement that the complainant's trademark rights must have arisen before the disputed domain name was registered. See Valve Corporation v. ValveNET, Inc., ValveNET. Inc., Charles Morrin,WIPO Case No. D2005-0038 and the cases there cited.
The Complainant relies upon a certificate of registration showing that a Delaware Corporation called Validas, Inc. registered the trademark VALIDAS on the Principal Register of the United States Patent and Trademark Office (USPTO) on January 1, 2008 (Reg. No. 3,362,929) for telecommunications and wireless telephone communications services in Class 38, claiming first use in commerce on July 23, 2007.
The Panel is prepared to proceed on the basis that the Complainant and Validas, Inc. are the same entity. On this basis it is clear that the disputed domain name is identical to the Complainant's registered trademark VALIDAS, the gTLD “.com” being inconsequential.
The Complainant has established this element of its case. B. Rights or Legitimate Interests
The Complainant bears the onus of proof of this and the other elements. Again, the use of the present tense in the Policy, paragraph 4(a)(ii) (“has no rights or legitimate interests”) requires the presence or absence of the respondent's rights or legitimate interests in the domain name to be assessed as at the date of the filing of the Complaint.
Although the Respondent could not have been aware of the Complainant's mark when it registered the disputed domain name, and therefore had at that time a legitimate interest in the disputed domain name on the principle of “first come, first served”, the Respondent's subsequent use of the domain name to siphon customers from the Complainant's business has deprived the Respondent of any such legitimate interest.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has established this element of its case. C. Registered and Used in Bad Faith
Preliminary Observations Relevant to Bad Faith in this Case
The Panel observes at the outset that the time at which the disputed domain name was first acquired by the Respondent is a significant consideration in the present case, because the Complainant's trademark rights were acquired relatively recently (in 2007), whereas the available WhoIs record indicates that the disputed domain name was originally registered some seven years before (in 2000). The Panel would have found it helpful in this regard if there had been some evidence provided of the time at which the Respondent in these proceedings first acquired the disputed domain name. The Panel is mindful here that the timing and circumstances of the domain name's acquisition by the Respondent, and indeed of the domain name's registration through the registrar Directi Internet Solutions using a proxy registration service located in Mumbai, India, are somewhat ambiguous. The Respondent's case is not helped by its failure to provide any explanation whatsoever for its acquisition of a domain name which happens to be identical to the Complainant's mark, which the Panel finds rather suspicious, and indeed the Panel does not exclude the possibility that the Respondent may have acquired the domain name at a date subsequent to its initial registration. However, in the absence of evidence, supposition alone does not make it so, and accordingly the Panel finds it appropriate for purposes of the present matter to proceed on the assumption that the domain name was first registered by the Respondent at or around the time of the WhoIs-listed, registrar-confirmed creation date for the disputed domain name, which in this case is in March 2000.
Having made these preliminary observations, the Panel finds it appropriate to turn to an analysis of recent consideration of the bad faith requirement under the Policy.
Recent Panel Consideration of the Bad Faith Requirement
The Panel is aware that there have been some recent cases decided under the Policy in which the conjunctive requirement for registration and use in bad faith has been discussed, and the Panel finds the particular facts of the present case to be such as to warrant a consideration of those cases. Accordingly, this Panel finds the present decision to be an appropriate occasion in which to record his own views on the matter as they presently stand. Although the issue of the conjunctive requirement under the Policy may involve only a very small number of cases in practical terms, it is nevertheless an important issue from a conceptual standpoint, and accordingly one to which this Panel has given careful consideration.
As this Panel sees it, the Policy, paragraph 4(a)(iii), requires the Complainant to prove that “the disputed domain name has been registered and is being used in bad faith”. This conjunctive requirement was recognised as requiring proof of both bad faith registration and bad faith use in the very first case decided under the Policy, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, and has been widely followed since. That this was the apparent intent behind the Policy at the time it was adopted was made clear by the distinguished panelist in that case, citing the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, submitted for the ICANN Board meeting of October 24, 1999, paragraph 4.5, a:
“The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO.”
The Second Staff Report followed the Final Report of the WIPO Internet Domain Name Process of April 30, 1999, which recommended that the process be restricted, at least initially, in order to deal first with “the most offensive forms of predatory practices” (paragraph 165) and that the availability of the procedure be confined to cases of “deliberate, bad faith abusive registrations” (paragraph 166). Of immediate relevance to this Panel's analysis, the proposed WIPO definition included the requirement: “the domain name has been registered and is used in bad faith”, (paragraph 171), language virtually identical to that adopted by ICANN in the Policy, paragraph 4(a)(iii) and remaining to this day unchanged since its adoption in 1999.
As was noted by the learned panelist in another early leading case, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the Policy, paragraph 4(a)(iii) contains the conjunction “and” rather than “or” and refers to both the past tense (“has been registered”) and the present tense (“is being used”). At paragraph 7.6 the Telstra panel noted “[t]he use of both tenses draws attention to the fact that, in determining whether there is bad faith on the part of the Respondent, consideration must be given to the circumstances applying both at the time of registration and thereafter. So understood, it can be seen that the requirement in paragraph 4(a)(iii) that the domain name ‘has been registered and is being used in bad faith' will be satisfied only if the complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.”
Hence the view often cited in early leading cases such as Viz Communications, Inc., v. Redsun dba and David Penava,WIPO Case No. D2000-0905 and as expressed in SHIRMAX RETAIL LTD./DÉTAILLANTS SHIRMAX LTÉE V. CES MARKETING GROUP INC., eResolution Case No. AF-0104 that: “Registration in bad faith is insufficient if the respondent does not use the domain name in bad faith, and conversely, use in bad faith is insufficient if the respondent originally registered the domain name for a permissible purpose”. For more recent examples of this approach, see Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi,WIPO Case No. D2009-0040 and CPR Savers & First Aid Supply LLC v. John Stevens,WIPO Case No. D2009-1484.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), at paragraph 3.1, records that the consensus view amongst panels has been that, “[n]ormally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right.” In certain situations however, “when the respondent is clearly aware of the complainant and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant's potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant's enterprises” [cited cases omitted].
In a small fraction (about 1%) of cases decided hitherto by WIPO panels, out of some nearly 17,000 filed cases, a potential issue has arisen as to whether bad faith use can, of itself, suffice to ground a finding under the third element of the Policy, notwithstanding that the respondent may originally have registered the domain name in good faith. Some panels have couched this question in terms of whether bad faith use can “retroactively” change good faith registration into bad. Until recently, the answer to this question, consistent with the consensus view, was clearly “no” and had been articulated in many cases, such as Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085, in which the panel said:
“Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI),WIPO Case No. D2001-0782, the panel stated that ‘If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith'. In Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology,WIPO Case No. D2000-0026, the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would “extend the Policy to cover cases clearly intended to be outside its scope.” Similarly, in Telaxis Communications Corp. v. William E. Minkle,WIPO Case No. D2000-0005, the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met”.
Despite this long and consistent line of cases, some recent decisions have expressly espoused the idea that subsequent bad faith use may, in certain circumstances, support a finding of bad faith registration; or, as some other Panels have put it, the idea that 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. See 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 (“the Octogen trio of cases”); Denver Newspaper Agency v. J LLC, NAF Claim No. 1282148; Ville de Paris v. Jeff Walter,WIPO Case No. D2009-1278 and Country Inns & Suites By Carlson, Inc. v. Shuai Nian Qing, La Duzi,WIPO Case No. D2009-1313. See also Hertz System, Inc. v. HVH Worldwide Ventures, LLC,WIPO Case No. D2009-1181; Hertz System, Inc. v. Kwan ming Lee,WIPO Case No. D2009-1165; Richard “Cheech” Marin, Tommy Chong v. Traced, Inc.,WIPO Case No. D2009-1273; and Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master,WIPO Case No. D2009-1276 in which this recent approach has been discussed.1
There appear to be two strands of reasoning advanced to support the above idea. The first is that insufficient attention has been paid to the registrant's representation and warranty in the Policy, paragraph 2, that “you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else's rights”.
This has been said by some panels to support the propositions that (a) the registrant has a duty to conduct an investigation at the time of registration, and (b) even though the domain name was registered in good faith, subsequent breach of the warranty “may be deemed to be retroactive bad faith registration”, Octogen Pharmacal Company, Inc., supra.
As to (a), in this Panel's view, assuming for present purposes that a registrant has a duty to conduct an investigation at the time of registration and may therefore be presumed to have registered the domain name in bad faith by virtue of constructive awareness of the relevant trademark (for a contrary view, see Balenciaga v. Registrant [7021]: Registrant,WIPO Case No. D2009-1410), an investigation would produce nothing by way of forewarning of the ultimate complainant's rights where the relevant trademark does not exist at the time of registration and where none of the exceptional circumstances mentioned in paragraph 3.1 of the WIPO Overview and the cases cited therein (such as ExecuJet Holdings Ltd. v. Air Alpha America, Inc.,WIPO Case No. D2002-0669) apply. To this Panel, it follows that, absent such exceptional situations, the appropriate finding is that at the time when the registration was made, it was made in good faith. Likewise, where the domain name was registered with the trademark owner's consent.
As to (b), in Octogen the learned panelist said: “A party can register or acquire a domain name in good faith, yet use the domain name in the future in such a way that the representations and warranties that the registrant made as of the time of registration are violated. If a party uses the domain name in the future so as to call into question the party's compliance with the party's representations and warranties, this may be deemed to be retroactive bad faith registration.”
To this Panel, the principal difficulty with this reasoning is that, although the warranty was given “as of” the time of registration, a breach of warranty will not be taken to have occurred at the time the agreement containing the warranty was made unless there is to be found a deeming provision to that effect. In the absence of such a provision the breach of warranty will be taken to have occurred when the conduct constituting the breach took place. There is no provision in the warranty itself which deems any breach to have retroactive effect. Thus it is necessary to find a deeming provision elsewhere in the Policy if the idea of finding “retroactive” bad faith registration by reason of breach of warranty is to be supported.
It may be the absence from the Policy of any such express deeming provision that leads to the second strand of reasoning in the recent decisions, which involves applying to the issue of registration the type of analysis applied to the issue of use in Telstra Corporation Limited, supra. In Telstra it was noted that, of the four (non-exclusive) scenarios deemed by paragraph 4(b) of the Policy to be evidence of registration and use of the domain name in bad faith for the purposes of the Policy, paragraph 4(a)(iii), only the one provided in paragraph 4(b)(iv) describes an actual use of the domain name. The other three scenarios describe purposes for which the domain name was registered (although each of those purposes contemplates use, including passive use, of the domain name in order to accomplish the purpose).
According to the learned panelist in the Octogen trio of cases:
“Under paragraph 4(b)(iv) of the Policy a respondent that uses the domain name to attract Internet users to its website or online location by creating a likelihood of confusion with the complainant's mark and its sponsorship of the website is acting in bad faith, without reference to the respondent's state of mind at the time that the registrant registered the domain name. Clearly, as under the Telstra analysis, in this Panel's view 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, just as bad faith use can occur without regard to the fact that the domain name at issue has not been (or has been “passively”) used.”
As this Panel sees it, this line of reasoning involves interpreting the Policy, paragraph 4(b)(iv) as deeming the particular form of bad faith use there described to constitute both bad faith use and bad faith registration. In fact the paragraph merely deems such use to be “evidence” of bad faith registration and use, as was pointed out in PASSION GROUP INC. V. USEARCH INC., eResolution Case No. AF-0250, in which a three-member panel interpreted paragraphs 4(a)(iii) and 4(b)(iv) by contrasting the introductory words of paragraph 4(c): “any of the following circumstances …shall demonstrate your rights or legitimate interests” with the introductory words of paragraph 4(b): “the following circumstances…shall be evidence of the registration and use of a domain name in bad faith”. The panel said:
“This contrasting language indicates that use of the kind described in 4(b)(iv) is to be taken as evidence of bad faith registration as well as evidence of bad faith use. But this evidence is not necessarily conclusive. Furthermore, the panel is not required to assign substantial weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved.
This approach accords with the Policy by enabling a finding of bad faith registration to be made where bad faith use within 4(b)(iv) is the only evidence tending to show the purpose for which the domain name was registered. Where, however, there is other relevant evidence, such as evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith.”
This approach was followed by a three-member Panel in Viz Communications, Inc., supra and by this Panelist in Global Media Resources SA v. Sexplanets aka SexPlanets Free Hosting,WIPO Case No. D2001-1391, the latter being cited in the WIPO Overview in relation to the interpretation of the Policy.
By contrast, in another recent case, Ville de Paris, supra the learned panel said:
“… the Policy expressly deems one particular scenario to be “registration and use of the domain name in bad faith” even though that scenario makes no mention of the mental state of the registrant at the time of acquisition of the domain name. The Policy expressly states that the Paragraph 4(b) scenarios are “without limitation” – that is, the Policy makes clear that there can be other scenarios that are also evidence of registration and use in bad faith. It follows, therefore, that the Policy expressly recognizes that the Paragraph 4(a)(iii) requirement of bad faith can, in certain circumstances, be satisfied where the respondent has used the domain name in bad faith, even though the respondent may not have been acting in bad faith at the time of acquisition of the domain name.”
In another such case, Denver Newspaper Agency, supra the panel referred to the Telstra decision as explaining that “registration and use” is used in the Policy as a “unified concept” and that although the concept mentions both “registration” and “use,” the examples provided in the Policy make clear that some types of registration alone will be sufficient to satisfy this “unified concept”.
Although the expression “unified concept” is not used in the Telstra decision, the Panel in Denver Newspaper Agency may have been influenced by the passage in Telstra which states “each of the four circumstances in paragraph 4(b), if found, is an instance of ‘registration and use of a domain name in bad faith'”. In this Panel's view, this passage ignores the fact that paragraph 4(b) merely deems these circumstances “evidence” of the registration and use in bad faith and that this is “for the purposes of paragraph 4(a)(iii)”, thereby making it clear that the expression in paragraph 4(b) “registration and use of a domain name in bad faith” is mere shorthand for the expression in paragraph 4(a)(iii) “the disputed domain name has been registered and is being used in bad faith”.
The difficulty this Panel has with the reasoning in the recent cases, including Denver Newspaper Agency, and Ville de Paris, is that, absent paragraph 4(b), it would be necessary for the Complainant to prove separately both elements required by paragraph 4(a)(iii). The fact that the circumstances in paragraph 4(b) are stated to be “without limitation” does not, in this Panel's view, mean that panelists are free to find that proof of other circumstances of bad faith registration may be “deemed” to be evidence of bad faith use, nor that other examples of bad faith use may be “deemed” to be evidence of bad faith registration. This is because paragraph 4(a)(iii) uses the conjunctive “and”.
As this Panel sees it, the words “without limitation” simply make it clear that a complainant may always meet the conjunctive requirements of paragraph 4(a)(iii) by proving both of its required elements, and that the circumstances said to evidence each such conjunctive requirement are not limited to those set out in sub-paragraphs (i)-(iv).
Equally, a complainant may in some cases meet the conjunctive requirements of paragraph 4(a)(iii) by proving both of its required elements jointly, for example by pointing to certain reasonable inferences as to a registrant's intent on registration that can in some cases (particularly those involving very well-known marks) quite readily be drawn from clearly evidenced abusive use and the established fame of a mark at the time of the domain name's registration. But that does not mean a complainant is freed from the burden of establishing both.
As the learned panelist in Hertz System, Inc. v. Kwan-ming Lee,WIPO Case No. D2009-1165 said:
“This Panel is not presently prepared to read the few unified concept approach cases to say that any use in bad faith, even occasional conduct that fits squarely within one of the examples of bad faith in paragraph 4(b) of the Policy, as automatically establishing bad faith for purposes of paragraph 4(a)(iii). If it did, the clearly conjunctive language of paragraph 4(a)(iii) could be too easily circumvented.”
In this Panel's opinion, the result of the reasoning in these recent cases would in effect turn “and” into “or”, which would be inconsistent on its face with the plain meaning of those words.
It remains to be seen whether the recent cases which have explored a reinterpretation of paragraph 4(b) to the effect that a finding that good faith registration may be turned “retroactively” into bad will be taken up generally by panels. Those recent attempts have clearly been motivated by a laudable desire to provide a remedy under the Policy and to do justice in the very small number of cases in which the rights of a trademark owner are being abused by the perceived bad faith use of an identical or confusingly similar domain name, in which the registrant has no rights or legitimate interests, but in which it seems that the domain name was registered by the respondent in good faith. To this extent, these decisions accord with the purpose of the Policy, namely to address the fundamental problem which is cybersquatting.
In the view of this Panel, the only permissible way for this to be achieved is for ICANN to amend the Policy, paragraph 4(a)(iii) by changing “and” into “or”. Until then this Panel believes that (unsatisfying as it may be in its practical effect in the small number of cases in which it has been an issue) the view should prevail, as expressed in Weatherall Green & Smith v. E,WIPO Case No. D2000-1528, following Telstra, that “registration of a domain name that at inception did not breach [Policy] 4(a)(iii) but is found later to be used in bad faith does not fall foul of [Policy] 4(a)(iii)”. This Panelist concurs in this regard with the learned panelist in another recent case, that of Torus Insurance Holdings Limited v. Torus Computer Resources,WIPO Case No. D2009-1455.
In the present case, as to paragraph 4(b)(i), because the disputed domain name was registered more than seven years before the first use in commerce of the Complainant's trademark, this Panel does not accept the proposition that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to one of its competitors. Indeed, this circumstance and the absence of evidence in these proceedings that, at the time of registration, the Respondent was aware of the Complainant's existence (although such possibility cannot be entirely excluded), lead to the conclusion here that the registration of the disputed domain name in 2000 was not in bad faith.
That said, as to paragraph 4(b)(iv), the Panel has little difficulty in finding that, until the domain name was recently suspended, the Respondent used the disputed domain name since December, 2008 intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on its website. But the Panel sees no evidence before it that this could plausibly have been the Respondent's intention back in 2000, assuming that was in fact the time it first acquired the disputed domain name.
The UnitedHealth Group case on which the Complainant relies differs significantly from this case because in that instance there was evidence that the mark was registered (in 1985) prior to the time the domain name was registered (in 2007). Here the domain name was registered in 2000 (and the Panel assumes for present purposes was then acquired by the Respondent) and the mark was first used in 2007.
To adapt the words of the learned panelist in Ville de Paris, supra, the fundamental question that arises for determination here can be stated simply: does the absence of bad faith intent by the Respondent at the time of acquisition of the disputed domain name in 2000 inevitably preclude the Complainant, whose mark was first used in 2007, from succeeding under the Policy, even though the Respondent has subsequently used the domain name in bad faith? In this Panel's view, in the absence of any evidence of advance knowledge of the Complainant's plans of the kind identified in the WIPO Overview, the answer to that question is provided by the express terms of the Policy itself, and that answer is “yes”.
In this Panel's view, until the Policy is amended, in cases such as the present the approach of the Panel in Meeza QSTP-LLC v. Torsten Frank / medisite Systemhaus GmbH,WIPO Case No. D2009-0943 should be followed. Applying this approach, the Complainant has failed on the record in the present proceedings to satisfy this Panel that the domain name was registered in bad faith.
Accordingly, this Panel finds that the Complainant has failed to establish the requisite third element of its case under the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Sole Panelist
Dated: January 29, 2010
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