Intellectual Property

Parking for Revenue


A number of decisions have been filed over the course of the last year in which respondents have argued that since the hyperlinks on the landing pages of their websites are chosen by their service providers they ought not be held responsible for them. The most recent is Bayerische Motoren Werke AG v. bmwrider llc, D2008-0610 (WIPO June 23, 2008), citing Villeroy & Boch AG v. Mario Pingerna, D2007-1912 (WIPO February 14, 2008). In itself, parking for financial gain is not a violation of the Policy and is, in fact, recognized as a bone fide offering of services particularly when, for example, the trademark alleged to be targeted is a generic term or common word, as was the case in Mariah Media Inc. v. First Place® Internet Inc., D2006-1275 (WIPO December 6, 2006) (<outside.com>).  
 
The distinction between parking legally and parking in violation of the Policy lies in the quality of the trademark. Generic terms and common words are on the low end of protectability, which is another way of saying that to prevail the complainant has to demonstrate that the respondent acquired the domain name intentionally to target its trademark. The difficulty is illustrated by the 3-Member Panel’s holding in Mariah Media. It rejected the Complainant’s argument that “the Respondent’s removal of an ‘OUTSIDE magazine’ link from its home page, following correspondence from the Complainant, was an ‘admission’ of bad faith” and accepted the Respondent’s contention that “it removed the link as a ‘courtesy’ to the Complainant” which it interpreted as a “rational effort to avoid a costly dispute.”
 
Liability attaches when the Respondent has “registered the domain name then placed it on a parking service, which redirect[s] the user to a website advertising [goods or services competitive with Complainant,]” Cloer Elektrogeräte GmbH v. Motohisa Ohno, D2006-0026 (WIPO March 29, 2006); Villeroy & Boch AG v. Mario Pingerna, D2007-1912 (WIPO February 14, 2008).  By identifying the Complainant on the landing page together with its competitors, the Respondent is inferentially acknowledging its awareness of the Complainant’s goods or services. Respondents have attempted to rebut any negative inferences of knowledge or awareness by arguing that they are not responsible for web site content and should not held responsible. 
 
The non-responsibility argument has on the whole been rejected.    “[T]he fact that a third party is effectively operating the website on behalf of Respondent, and making payments to the Respondent on the basis of that use, does not insulate Respondent from the conduct of its authorized agent,” Park Place Entertainment Corporation v Anything.com Ltd., D2002-0530 (WIPO September 16, 2002) (<flamingo.com>) (Majority held in favor of Complainant).   Under these circumstances, knowledge of the use to which a parked domain is being put is attributed to the respondent despite denial.   The reasoning for this is that he derives a benefit from parking the domain. Indeed, monetized parking and landing pages have become an increasing popular way for domain name registrants to create an income stream. Commentaries–Bona Fide Advertising.and Affiliate Programs.   Similarly,   Sanofi-Aventis Aventis Pharma SA, Aventis Pharma Deutchland GmbH .v. IN4 Web Services, D2005-0938 (WIPO November 24, 2005). The Panel found that the Respondent either passively condoned or was indifferent to the material posted to its domains by another party:
 
The very intention of that other party is to drive traffic through the websites. It would appear from the evidence that one strategy to do so may be to use a third party trademark which is similar to the domain name. The Panel believes that registrations made as part of such a scheme are made and used in bad faith for the purposes of this Policy if it is held that the domain name in point is confusingly similar to a mark in which a third-party complainant has rights.
 
The Panel in Diners Club International Ltd. v. O P Monga, FA0603000670049 (Nat. Arb. Forum May 22, 2006):
 
[A]fter agreeing to Sedo’s “parking” policy and not having “un-parked” the domain name, Respondent is using the domain name to intentionally attract, for commercial gain, Internet users to her website or other on-line location belonging to third parties, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of her web site or location or of a product or service on her web site or location.
 
Villeroy & Boch AG : The Respondent “cannot evade this responsibility by means of its contractual relationship with the Registrar. The relationship between a domain name registrant and the Registrar does not affect the rights of a complainant under the Policy,” citing Ogden Publications, Inc. v. MOTHEARTHNEWS.COM c/o Whois IDentity Shield/OGDEN PUBLICATIONS INC., Administrator, Domain, D2007-1373 (WIPO November 26, 2007).