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Direct Competitors, Geographic Terms and the Issue of Bad Faith
By Gerald M. Levine on April 5, 2010 in Abusive registration, Uniform Domain Name Resolution Policy
Adding a geographic term to a famous trademark is not less infringing because the trademark also happens to be a dictionary word. The addition neither avoids confusing similarity nor in the case of famous trademarks a finding of abusive registration. The question is whether the domain name – confusingly similar though it may be to the trademark – is distinctive in its own right. The Respondent in Advance Magazine Publishers Inc. v. Vanilla Limited/ Domain Finance Ltd./ Minakumari Periasany, D2004-1068 (WIPO April 18, 2005) for example, was unable to make such a case for adding geographic terms to "vogue" such as <newyorkvogue>; similarly, Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum March 27, 2007) adding "Cancun" to trademark CHEAPTICKETS.
Some dictionary words are common in an industry and their concurrent use neither surprising nor necessarily indicative of bad faith. Nevertheless, where the Respondent is a competitor, as it is in Interactive Data Corporation v. Maharaja Global c/o Tamal Das Gupta, FA1001001305447 (Nat. Arb. Forum March 29, 2010), it must explain the addition of a geographic location. Complainant is the trademark holder of ESIGNAL registered by the USPTO in 2001 and ESIGNAL PRO registered by the USPTO in 2006; the respondent registered the disputed domain name <esignalindia.com> in 2005. Although the Respondent provides a similar, although less expensive service than the Complainant it is nevertheless in competition with it. The service is legitimate but that does not legitimize the use of the domain name as a defense under paragraph 4(c)(i) of the Policy. Because the Respondent is not commonly known by the domain name and is exploiting the domain name for commercial gain it cannot prevail under paragraphs 4(c)(iii) and 4(c)(iii).
The question, then, comes down to the twin issues of reputation and timing. "The fact that both parties are competitors, while sufficient to establish Respondent's lack of rights or legitimate interest in the domain name, does not show that Respondent has registered and used that domain name to disrupt the business of Complainant…. Complainant has not established that its ESIGNAL trademark is so well known that Respondent can be presumed to have been intended to trade on Complainant's reputation and goodwill in registering and using the domain name in dispute." The problem for complainants with trademarks composed of what are essentially colloquial or familiar expressions is that they are common currency. As such, the evidence of bad faith registration particularly where the use is consistent with the domain name cannot rest on speculation.
As the Panel emphasizes in Interactive Data "[l]ack of rights or legitimate interest under Policy ¶ 4(a)(ii) does not automatically translate into a finding of bad faith under Policy ¶ 4(a)(iii)." Mere assertion of bad faith is no more than a feather on the scale. The Respondent's business is limited to the stock exchanges in India. It is not sufficient merely that parties are in competition in using an unsurprising expression for their Internet moniker for the services offered. The general rule is that without supporting facts or specific examples to supply a basis for drawing a conclusion the respondent cannot be deprived of its choice of domain name.
Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com
Listed and Additional Circumstances of Bad Faith
The Conjunctive Requirement of Bad Faith Enforced Regardless of Respondent's Subsequent Bad Faith Use, However Egregious