The Complainant is Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) of Herndon, Virginia, United States of America, represented by von lode advokat ab, Sweden.
The Respondent is Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois of St. Michael, Barbados, represented by ESQwire.com Law Firm, United States of America.
The disputed domain name <trueroots.com> is registered with Nameview Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2010. On February 15, 2010, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On February 23, 2010, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 24, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 1, 2010. The Center verified that the Complaint together with the amended 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 March 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response March 22, 2010. The Response was filed with the Center March 22, 2010.
The Center appointed James A. Barker, M. Scott Donahey and Alan L. Limbury as panelists in this matter on April 21, 2010. The Panel finds that it was properly constituted. Each member of 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.
On April 30, 2010, the Panel issued an order requesting the Registrar to confirm the date on which the Respondent registered the disputed domain name. On May 3, 2010, the Registrar responded that the disputed domain name was registered by the Respondent on January 11, 2005.
Both of the parties made uninvited supplemental filings in connection with this case. On April 29, 2010, the Complainant made a supplemental filing, to address what it said were the Respondent's claims (detailed further below) that it used its website in connection with genealogy and that it had not used the Complainant's TATA mark as a meta tag. The Complainant submitted an additional supplemental filing on May 6, 2010. The Respondent also made a supplemental filing on May 7, 2010, to explain the discrepancy in its claim in the Response (as well as in an attached ‘declaration' by the Respondent's manager) that the disputed domain name was registered by the Respondent in 2003, and the confirmation of the Registrar that it was registered in 2005.
As recognized by the parties in those submissions, neither the Policy, nor the Rules make provision for uninvited supplemental submissions. The Panel has a discretion to admit them under paragraph 10 of the Rules. In this case, the submissions were not substantial and did not materially advance the parties cases. However, because they were short and because both parties equally submitted them, the Panel considered the submissions.
The Complainant says that it is part of the ‘Tata Group', which does business in fields including information technology, communications, energy, consumer products and chemicals. The Tata Group does business in more than 85 countries. The Complainant was formed after the Tata Group acquired a controlling interest in the then Indian telecommunications company, Videsh Sanchare Nigram Limited in 2002. That company was renamed as the Complainant in February 2008.
The Complainant has registered marks for its TATA brand in various jurisdictions.
The Complainant has a website at “www.tatacommunications.com”. The Complainant is a wholesale telecommunications carrier.
As noted above, the disputed domain name was registered by the Respondent on January 11, 2005 (not, as is stated in the Response, 2003).
In 2007, the Complainant announced the launch of ‘trueroots' – an international calling service allowing people from South Asia residing in the United States to connect with family and friends via its telecommunication service. The Complainant is the registrant of a number of domain names in that connection, including <trueroots.us>, <trueroots.ca>, and <trueroots.co.uk>. The Complainant also has a registered mark for TRUEROOTS, registered in the United States, the United Kingdom, Canada, and the European Community (evidence of those marks was attached to the Complaint). Those marks were variously first filed on July 11, 2007 (United Kingdom), September 4, 2007 (United States), September 11, 2007 (Canada), and December 14, 2009 (Community trademark).
The Respondent has been a previous (successful) party in proceedings under the Policy: Indiamart Intermesh Limited v. Portmedia Inc./intermesh.com, WIPO Case No. D2009-1804. That case, as here, also involved a complainant with its address in India, and which had rights in a mark that arose after the registration of the disputed domain name.
The following is summarized from the Complaint.
The Complainant claims that the disputed domain name incorporates its TRUEROOTS mark in its entirety, and therefore infringes its rights.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The fact that the Respondent has used an identity shield supports such a finding. The Complainant says that the website at the disputed domain name is used to provide paid advertising related to the Complainant's TRUEROOTS and TATA trademarks, and the services the Complainant offers under those marks. The Complainant provides evidence of the Respondent's website as at August 21, 2009 (but also says that the website changed its appearance each time it was visited). That evidence showed the website displaying a list of links related to telephony, including “Free International Phone Call”, “Reliance India Callers”, and “International SIM cards”. On another visit that same day (the Complainant provided evidence of others), the website displayed different links, including “International Calling Online”, “Ancestry”, “Call India”, and “Flower Delivery”. The Complainant claims that the Respondent's website is designed to generate pay-per-click advertising based on Internet traffic to the website containing links to competitors of the Complainant. The Complainant says that its trademarks are used on the website in connection with links using the words “Prepaid card”, “International Calling”, “Call India”, and “Long Distance”.
The Complainant refers to previous cases decided under the Policy, finding that those who use domain names for targeted advertising cannot turn a blind eye to the possibility that the names they are using infringe or violate third party intellectual property rights. (Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448). The Complainant also says that the Respondent is not using the disputed domain name for its generic meaning, as the links on the Respondent's website indicate that it has full knowledge of the Complainant's marks. The Complainant says that the disputed domain name has never been used in connection with a bona fide offering of goods or services, and that the Complainant has never licensed or authorized the Respondent to use its mark.
Under a heading in the Complaint stating that “The domain name was registered and is being used in bad faith”, the Complainant provided evidence that the website at the disputed domain name used meta tags such as “True Roots Tata”, “Rate Call to India”, and “Call to India”. The Complainant says that the use of such meta tags amounts to bad faith, as these cannot have been chosen by accident. The disputed domain name is being used in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks. The Complainant says that it is indisputable that the domain name is being used in bad faith and that everything points towards it also having been registered in bad faith.
The Complainant also refers to the reasoning in previous decisions of one of the Panelists in this case, to support the view that bad faith registration should be deemed to have occurred: City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643; Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786. This approach should be taken, says the Complainant, without regard to the Respondent's state of mind at the time of registration, because the Respondent's subsequent use of the disputed domain name clearly trades on the goodwill of the Complainant.
The Complainant also says that the disputed domain name was acquired primarily for the purpose of selling it to the Complainant or a competitor for consideration in excess of the Respondent's out of pocket costs. The Complainant provides an affidavit regarding an approach it made to the Respondent over the telephone, in which the Respondent said that it wouldn't consider anything below USD 100,000.
The following is summarized from the Response.
The Respondent says that there is no basis for transferring the disputed domain name to the Complainant. The Respondent says that it registered the disputed domain name because it believed the term “true roots” was a descriptive term that was not subject to exclusive trademark rights. The Complainant was not using the term “True roots” as a trademark, or in any manner, when the Respondent registered the disputed domain name. The Complainant did not commence use of the term “true roots” until August 2007. Because there was no trademark for the term “true roots” when Respondent registered the disputed domain name, it is impossible to prove bad faith registration of the disputed domain name as the Respondent could not have had the Complainant's trademark in mind. In this respect, the Respondent refers to previous cases under the Policy such as Thru, L.L.C. v. Yoshiki Okada, NAF Claim No. 849145; Intermark Media, Inc. v. Wang Logic Corp., NAF Claim No. 139660: “To raise a claim against another party that would support transfer of a domain name registration, Complainant must demonstrate interests in a mark that predate the domain name registration.”
The Respondent seeks to distinguish the ‘Octogen' cases referenced by the Complainant (cited above), on the basis that there were facts in those cases demonstrating at least the possibility that the Respondent could have known about the Complainant's mark prior to registering the disputed domain. The Respondent says that this is not the case here.
The Respondent says that the links that appeared on its website were unintentional. They were auto-generated by Yahoo's search technology without the Respondent's intent or knowledge. Once brought to its attention, the Respondent says it took steps to block such links from being displayed. Contrary to the Complainant's allegations, the Respondent says that there were, and are, no meta tags on the web site. When Complainant discussed “meta tags” the Respondent says that it is apparently referring to the links on Respondent's web site.
The Respondent says that its intent at all times was to register and use <trueroots.com> in connection with its natural descriptive meaning for a web site dealing with genealogy. The Respondent provides copies of a screenshot of the website from February 2005 showing links related to the word “root,” in the agricultural sense, such as “licorice root,” “dandelion root,” etc. A screenshot from July 2009 shows links strictly related to genealogy along with family pictures which relate to a genealogical theme.
The Respondent says that it has a legitimate interest in the disputed domain name, because it was with respect to its descriptive meaning that the Respondent registered it. An advanced Google search for “true roots,” avoiding references to the Complainant, yielded 366,000 third party results. The third party use of the term “true roots” is strong evidence that the term is descriptive. “Roots” means, among other things, a person's original or home, environment or culture. True roots means where you truly come from, your ancestry. The Respondent also says that it has registered over 30 other descriptive domain names incorporating “roots,” as well as other domain names related to genealogy, such as: <chineseroots.com>, <ancestrycorner.com>, <geneologylinks.com>.
The Respondent says that it has used the disputed domain name in connection with a bona fide offering of goods and services by displaying Yahoo autogenerated pay-per-click (PPC) advertisements related to genealogy and ancestry. The Respondent says that pay-per-click links establish legitimacy where they are selected as a result of the generic or descriptive meaning of terms contained in a domain name, as opposed to being selected with a trademark in mind. The Respondent refers e.g. to Tomsten Inc. v. Registrant  a/k/a Star Access Inc. (S.A.I) Domains, NAF Claim No. 0925448.
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed below.
For the purpose of paragraph 4(a)(i), the Complainant has demonstrated, and the Respondent does not dispute, that it has rights in its registered TRUEROOTS mark. The Panel considers that the disputed domain name is relevantly identical to the Complainant's registered mark. Putting aside the domain name extension (“.com”), which it is well established as not relevant for the purpose of this comparison, there is no relevant textual difference between the Complainant's mark and the disputed domain name.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See e.g. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
The Complainant has made a prima facie case against the Respondent. In reply, the Respondent argues that it registered the disputed domain name because of its descriptive meaning. The Respondent suggests, in effect, that it is making a bona fide use of the disputed domain name within the meaning of paragraph 4(c)(i) of the Policy, because it registered and used the disputed domain name for a web site dealing with genealogy.
However, it is undeniable that, at least for some period, the Respondent's PPC website contained links that related to the subject of the Complainant's mark, and was not a site relating generally to genealogy. Where a PPC parking page contains links which are based on the trademark value of the domain name, the trend in decisions under the Policy is to recognize that such practices generally constitute abusive cybersquatting. See, e.g. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; eprimo GmbH v. Fei Fei / Lan Fei, WIPO Case No. D2009-0598; Allstar Marketing Group LLC v. Clothing Gateway, WIPO Case No. D2009-1796; Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666. To the Panel, such an abusive use of the disputed domain name means that the Respondent cannot establish rights or legitimate interests.
It does not matter that at some earlier period the Respondent's website related to the subject of genealogy. (In this respect, the Respondent provided archived screenshots of its webpage from early 2005.) The Respondent's website later incorporated a variety of links related to the business for which the Complainant uses its mark. In this way, the Respondent has also used its website to profit from the trademark association of the Complainant's mark. The Respondent says that these links were auto-generated by Yahoo's search technology without the Respondent's intent or knowledge. But this does not excuse the Respondent's conduct. The Respondent is ultimately responsible for the content of its own website. See e.g. NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ; WIPO Case No. D2007-1079, (“the Respondent cannot escape responsibility for the advertising on the Respondent's website, on the basis that it was generated by Google without any involvement on the Respondent's part”); Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. The Respondent is in the business of registering domain names in connection with PPC landing pages and, as such, would have been well aware of the potential for Yahoo's search engine to dynamically include links that relate to the value of a trademark, among other things. The Respondent provided no evidence of taking action to avoid this outcome until after the notification to it of this dispute.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
The more difficult issue in this case is whether the Complainant has established its case under paragraph 4(a)(iii) of the Policy. Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.
The Panel is unanimous in considering that the Complainant has used the disputed domain name in bad faith, for essentially the same reasons as those set out above (in relation to whether the Respondent has rights or legitimate interests).
Where the Panel diverges is on the question of whether the Respondent registered the disputed domain name in bad faith. This divergence proceeds from facts which are not in dispute: In particular, the disputed domain name was registered by the Respondent in 2005, and the Complainant's trademark rights first arose in 2007.
The majority of the Panel consider that the Respondent did not register the disputed domain name in bad faith. The majority make this finding on the basis of the reasoning set out e.g. in Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413. That case proceeded on the basis that paragraph 4(a)(iii) of the Policy prescribes a conjunctive requirement: both bad faith use and registration must be shown. As found in that case, because the complainant had no mark when the respondent registered the disputed domain name, the registration of the disputed domain name could not have been in bad faith. As the then panel stated in relation to the comparable facts of that case: “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'.” This approach was more recently supported by other panels e.g. Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716. The panelists in those cases considered registration could not retroactively be deemed to be in bad faith because of subsequent bad faith use.
As the learned panelist in Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688 put it, in rejecting the idea that “bad faith registration and use” - itself mere shorthand for the language used in the Policy, paragraph 4(a)(iii) - is a unitary concept: “unless bad faith use subsequently to registration forms a basis for an inference of Respondent's bad faith at the time of registration, it cannot alone satisfy the complainant's burden of proof under paragraph 4(a)(iii) of the Policy”. The majority also respectfully rejects the idea that “bad faith registration and use” is a unitary concept, since bad faith use of the kind contemplated by paragraph 4(b)(iv) of the Policy is only “evidence” of both bad faith registration and bad faith use. It does not demonstrate them. That paragraph is not a deeming provision. That is why subsequent bad faith use cannot retroactively turn good faith registration into bad, notwithstanding the warranty contained in paragraph 2 of the Policy. (That warranty is, in any event, not one of the matters which a Complainant must assert under paragraph 4(a) of the Policy. While it might, in appropriate cases, be a provision to which regard is had, it cannot over-ride the plain terms of paragraph 4(a)(iii) of the Policy.)
The simple fact in this case is that the Complainant did not have a mark when the disputed domain name was registered. This is, at least, strong evidence that the Respondent did not have the requisite bad faith intention when it registered the disputed domain name. Taking the approach previously expressed by the panelists in Validas and Camon, the majority considers that, normally speaking, bad faith cannot be found where a domain name is registered before a mark. The majority also considers that such an approach is more consistent with the general consensus of panel views in similar circumstances. And, as noted by the panel in Camon (referring to prior panel authority): “a desire to achieve consensus should be high on the list of priorities.” For further recent support for the established approach, see Manufacturas Muñoz S.A. Colombia v. Choi Sungyeon, WIPO Case No. D2010-0312.
This approach is not to elevate form over substance, or the means over the ends. It is to apply the Policy to the fullest extent to which it may be properly interpreted. The fundamental public interest in being free from confusion as to origin or source is not to be served by ignoring the plain language of paragraph 4(a)(iii) of the Policy but rather by ICANN amending that paragraph to remove the conjunctive requirement. This is, in fact, a step that has been taken under some other polices: for example, paragraph 4(a)(iii) of the .au Dispute Resolution Policy refers to a domain name which “has been registered or subsequently used in bad faith.” (emphasis added)
The majority consider it relevant that the Respondent is likely to have registered the disputed domain name because of its generic connotation. As relevantly stated by the Panel in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (in the context of the issue of bad faith): “where a respondent has registered 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 qualities, that may constitute a legitimate interest”. The disputed domain name is self-evidently comprised of two common English words: “true” and “roots”. The Respondent provides evidence of a list of other domain names it claims to have registered, based on similar generic combinations, including combinations it claims to have used in connection with genealogy (mentioned above). In addition, the Respondent provides evidence that its PPC landing page, shortly after the disputed domain name was registered, included various links relating to its claimed target subject (although the Panel notes that the Respondent's argument is somewhat inconsistent on this point, as it also claims that the links on its website were automatically generated, without its knowledge).
In making this finding, the Presiding Panelist, however, notes that he considers the issue of bad faith registration is more finely balanced. This is because that Panelist considers that the Policy does not necessarily preclude bad faith registration in circumstances where a respondent speculatively registers a domain name in the hope of exploiting some future trademark value it might have, in addition to any other value. Prior panels have allowed that, in certain circumstances, the registration of a domain name may be in bad faith even if the relevant trademark was registered subsequently. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), at paragraph 3.1. While those ‘certain circumstances' have concerned respondents who were clearly aware of the complainant in advance of the registration of its mark, there is also substantial panel authority for the view that a respondent need not be specifically aware of a complainant when it registers a disputed domain name. ‘Willful blindness' can be sufficient for a finding of registration in bad faith. These circumstances have particularly arisen in cases where, like here, the respondent bulk registers domain names and directs a disputed domain name to a PPC landing page with automated advertising links. Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. In other words, the Policy does not, in its terms, exclude the possibility that a respondent could register a disputed domain name in bad faith by being willfully blind to current or future trademark registrations, even without some advance knowledge of a particular complainant. To this extent, the Presiding Panelist does not consider that registration of a domain name prior to a mark inevitably precludes a complainant from succeeding, even in circumstances different to the ‘certain circumstances' set out in paragraph 3.1 of the WIPO Overview. In this respect, the Presiding Panelist's view is more qualified than the view put by the panel in Validas, quoted above.
In all cases, the issue remains that to which the bad faith registration requirement in paragraph 4(a)(iii) is directed: what was the state of mind of the Respondent when it registered the disputed domain name? A respondent which speculatively registers a disputed domain name, with an open mind to exploiting any future trademark value the domain name might develop, can arguably be said to have registered the domain name in bad faith.
There is some evidence which might support such a finding of such bad faith in this case. The Respondent's business appears to be the bulk registration of domain names for the purpose of exploiting whatever value flows from those registrations. The Respondent is no stranger to the domain name system. It cannot have been unaware that domain names often have value in relation to trademarks. On its own admission, it took no steps to avoid the disputed domain name being used in bad faith until after it was aware of this dispute. The Respondent simply allowed links to appear on its website autogenerated by Yahoo, without its direct awareness, and to obtain whatever profit flowed from those links. The Respondent's argument that it intended to establish a website dealing with genealogy is also somewhat inconsistent with its own evidence that it had no control over the links appearing on that site. It is difficult to believe that the Respondent intended to set up a website dealing with genealogy, but chose to retain no control over the links appearing on its website to achieve that purpose. The Respondent's more recent bad faith use might also provide some foundation for an inference that it had a bad faith intent when it registered the disputed domain name. Further, the disputed domain name is not clearly descriptive as a combined term. No evidence was provided that such a combined term appears in any dictionary. To this extent, this case is potentially distinguishable from the previous case involving the Respondent, Indiamart Intermesh Limited v. Portmedia Inc./intermesh.com (supra).
However, for the reasons set out above, the Presiding Panelist sides with the view that the Respondent cannot have relevantly registered the disputed domain name in bad faith, in the particular circumstances of this case.
Accordingly, the majority finds that the Complainant has not established that the Respondent registered the disputed domain name in bad faith.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Alan L. Limbury
M. Scott Donahey
Dated: June 1, 2010
I respectfully dissent.
The majority does not (and indeed cannot) deny that the domain name at issue is being used in bad faith. The Respondent asserts that at the time it registered the domain name at issue, in March 2003, it intended to use the domain name for a genealogy site. Respondent parked the domain name on a parking site which eventually targeted the Complainant's mark in order to generate revenue from direct competitors of the Complainant by attracting users seeking the Complainant's services to its site and providing users with links to the Complainant's competitors. The Respondent itself alleges the following concerning its conduct:
“Respondent's intent at all times was to register and use <trueroots.com> in connection with its natural descriptive meaning for a web site dealing with genealogy. Contrary to Complainant's allegations, there are publicly available archived screenshots showing Respondent's past use of the Disputed Domain. A screenshot of the web site from February 2005 show links related to the word “root,” in the agricultural sense, such as “licorice root,” “dandelion root,” etc. A screenshot from July 2009 shows links strictly related to genealogy along with family pictures which relate to a genealogical theme. It is true that at points between September 2009 and January 2010, links related to Complainant's goods and services appeared on Respondent's site. In January 2010 links related to Complainant's business, along with genealogical links and genealogical theme pictures appeared on Respondent's web site. None of these were intentional and, once Respondent was aware of them, Respondent arranged to have such links blocked from the web site. This is not the actions of a cybersquatter.”
However, a visit to the web site on May 5, 2010 by this Panelist shows that on that date the web site was populated with links to the Complainant's competitors offering services directly competitive with those offered by the Complainant, more than 170 such links on the pages to which the links on the home page resolve. The Complainant also submitted such evidence to the panel. Accordingly, an Internet user familiar with and seeking the Complainant's trademarked services is taken to a web site containing numerous links to the Complainant's competitors. This Internet user must be confused.
The majority apparently believes that it was the intent of the draftspersons of the Policy that a registrant is free to profit from the goodwill inherent in the trademark belonging to another and to mislead the public, so long as the registrant did not intend to do so at the time it registered the mark. The majority's argument is that the policy states the requirement of paragraph 4(a)(iii) in the conjunctive: “your domain name has been registered and is being used in bad faith,” effectively reading that section as “your domain name has been registered in bad faith and your domain name is being used in bad faith.” But as the examples of bad faith registration and use, set out in paragraph 4(b) of the Policy, demonstrate “bad faith registration and use” is a unitary concept. Subparagraphs 4(b)(i), (ii), and (iii) deal only with registration, yet they are evidence of bad faith registration and use. Subparagraph 4(b)(iv) deals only with use, yet it is evidence of bad faith registration and use. Thus, in this dissenting Panelist's view, bad faith registration and use is a unitary, rather than binary, concept.
As this Panelist sees it, the majority's interpretation elevates form over substance. The approach taken by the majority is the equivalent of applying the scienter test in the case of a shooting not only to the shooter's state of mind at the time he fired the gun, but also to his state of mind at the time he purchased the gun. Thus a man who purchased a gun with the intent to engage in target practice would be free thereafter to shoot his neighbor with impunity.
Moreover, in this Panelist's assessment, the Policy clearly indicates that this was not the intent of the draftspersons. Paragraph 2(d) of the policy states that a registrant “represent[s] and warrant[s] that [he] will not knowingly use the domain name in violation of any applicable laws or regulations. It is [the registrant's] responsibility to determine whether [the] domain name registration infringes or violates someone else's rights.” This is a representation and warranty as to the registrant's future conduct made at the time the registrant applies for registration of a domain name. Regardless of his state of mind at the time he applies for registration, the registrant represents and warrants that in the future he will not use the domain name at issue in bad faith. Moreover, it is the registrant's obligation to make sure that the domain name is not used to target the rights of a third party. “I can't help it that my parking service targets the trademark” is not a defense. The Respondent acknowledges this obligation when he asserts that, in the face of overwhelming evidence to the contrary, once he learned that the web site to which the domain name at issue resolves contained links to the Complainant's competitors, he blocked links related to the Complainant's goods and services.
The domain name at issue is made up of two common words, and the Respondent was free to maintain and use its registration in any legitimate way or not to use it at all, if it so chose. It could use the domain name at issue for a genealogy site, a horticultural site, or any site it wished, so long as its use did not profit from the good will created by a third party in a trademark and seek to confuse the public as to the origin of the services they sought. The Complainant would have no basis to bring a UDRP proceeding against any use of the domain name other than a use in bad faith, a use that “infringes and violates [Complainant's] rights.” But the Respondent is using the domain name in just such a way in breach of the warranties and representations it made at the time of registration and in direct contravention of the Complainant's trademark rights. This panelist follows the reasoning of the eminent Panelist in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and in Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278. “It is necessary for this Panel to determine whether, in all the circumstances, the Respondent is acting in bad faith.” Applying that test, this panelist would find that Respondent has registered and is using the domain name at issue in bad faith.
In this Panelist's view, sometimes in our attempt to precisely parse the language of the Policy, we can overlook the overriding purpose of the Policy and, indeed, the very purpose of trademark law. There is a third-party present that is mentioned in paragraph 4(b)(iv) of the Policy: “Internet users,” or, more properly, the public. The Policy was created at a time when cybersquatters were individuals with one or a few domain names identical to trademarks who would attempt to sell the domain names to trademark owners. There was no use of robots.txt, no parking or landing pages, no pay-per-click ads, no bulk registrations, no privacy services, no IDNs. Yet panels were forced to grapple with these new circumstances and to exercise the flexibility to apply the Policy to situations that were never contemplated by the draftspersons. Panelists did that not to protect the interests of trademark owners, although trademark owners are by far the predominant and intended complainants, as well they should be since they are obligated under the law to police their trademarks. The purpose of trademark law is to prevent the public from being confused as to the source of goods and services with which the trademark is associated. This is contrary to general contract law, with the jurist's focus on the precise bargain struck by the parties. It is more akin to antitrust law, which is designed not to protect a competitor, but rather to protect competition.
The public interest in being free from confusion as to origin or source is fundamental to trademark law. This panelist believes that this fundamental tenet should inform all our decisions.
M. Scott Donahey
Dated: June 1, 2010