Bona Fide Use of Domain Name Prior to Notice

Bona Fide Use of Domain Name Prior to Notice


Of two parties equally entitled to a domain name, even though one has a registered trademark and the other does not, the first to register has a superior right unless there is proof that the respondent with knowledge of the complainant or its mark has taken advantage of the complainant’s good will to redirect Internet users to its own website. However, “it would take an exceptional case to succeed where there was no malicious or exploitative intent directed at the complainant [or its trademark] at time of registration of the domain name,” Velcro Industries B. V. and Velcro USA Inc. v. allinhosting.com/Andres Chavez, D2008‑0864 (WIPO July 28, 2008).
 
The respondent in such a match‑up who has been conducting a business using the name incorporated in the domain has an evidentiary burden that combines two defenses. To prove a right or legitimate interest, the respondent has to pass a two part test based partly on ¶4(c)(i) and partly on ¶4(c)(ii). The first requires proof that the business in which “you” are engaged “corresponds with the domain name used in connection with a bona fide offering of goods or services” [¶4(c)(i)] ; the second, that “you have been commonly known by the domain name, even if you have acquired no trademark or service mark right” [¶4(c)(ii)].
 
Domain names identical or confusingly similar to trademarks can be legitimately used for a variety of business models that support a defense under ¶4(c)(i) of the Policy. Thus, 1) Vanity e‑mail services, Stephen Wheatcraft v. Reison, Inc. c/o Domain Manager, FA0811001232650 (Nat. Arb. Forum December 22, 2008) (<wheatcraft.com>,); 2) Paid search advertising, Decal (Depositi Costieri Calliope) S.p.A. v. Gregory Ricks, D2008‑0585 (WIPO June 11, 2008) (<decal.com>,); 3) Domain names for sale, CeWe Color AG & Co. OHG v. Shenbun Limited, D2008‑0810 (WIPO July 10, 2008)(“The buying and selling of domain names is, of itself, a perfectly legitimate trading activity”); 4) Cultural activities, Velcro Industries, supra. (<velcroart.net>); 5) Affiliate program, Authorize.Net LLC v. Cardservice High Sierra, D2008‑0760 (WIPO June 30, 2008) (<authorized.net>), citing National Futures Association v. John L. Person, D2005‑0690 (WIPO August 15, 2005) (<nationalfutures.com>, in which the registrant was a member of the Association).
 
To succeed on a ¶4(c)(i) defense, the respondent must demonstrate concretely and not by inference that “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name [is] in connection with a bona fide offering of goods or services.” Whether the operation of a business is bona fide depends upon a number of factors: its history, either of operation or in preparation of it, and registrant’s credibility for having a domain name allegedly confusingly similar to another’s trademark.

It is not the business model that upends a respondent’s contentions of legitimacy. The term “legitimate” in ¶4(c) refers “to the respondent’s entitlement to the domain name it has selected,” rather than to the legality of its business. If legality of business were the standard, then “any cybersquatter that conducted a lawful business could always find refuge,” The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., D2005‑1318 (WIPO February 22, 2006). The Respondent in Abu Dhabi Future Energy Company PJSC v. John Pepin, D2008‑1560 (WIPO December 22, 2008) may very well have in mind a legitimate business for <masdarcity.com> and <masdarcity.net> but its registration of those domain name evidenced “exploitative intent.”
 
The underlying principle is illustrated in Shutterfly, Inc. v. Shutterfly Productions, D2008‑1114 (WIPO September 28, 2008). The Panel first stated that “not all such use [that is, offering goods or services] qualifies as bona fide use.” A business may be lawful, but its use of the domain name mala fide as, for example, Canon Kabushiki Kaisha v. Price‑Less Inkjet Cartridge Company, D2000‑0878 (WIPO September 21, 2000) (<canonink.com>, <canoninkjet.net>:
 
Although the offering of replacement inkjet cartridges is a lawful and legitimate business, the use of these ... disputed domain names as the initial contact points and web page banners deprives that business of the character of being bona fide, within the meaning of paragraph 4(c)(i) of the Policy.
 
The Panel in Shutterfly stated that “[t]o conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy,” citing Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, D2000‑0847 (WIPO October 12, 2000), “[U]se which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services.”
 
The principle to be derived from these facts is that for the complainant to prevail in a Shutterfly set of facts, it has to marshal evidence sufficient to raise doubts about the respondent's proof, otherwise the issue of “deliberate infringement” is never reached and if not reached the complainant cannot deprive the respondent of the domain name in a UDRP proceeding.