Attorney Steve® Domain Dispute Essentials - Parked Domains and "Legitimate Interest" prong of UDRP Complaints.
Introduction
In order to successfully bring a UDRP complaint in WIPO or NAF, a complainant needs to be able to allege and prove the following three elements:
- That the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith by the respondent
If a complainant cannot show ALL THREE the respondent will prevail and get to keep their domain. This blog talks about prong# 2 "rights or legitimate interests in respect of the domain name."
If a respondent PARKS a domain, (even one that clearly violates trademark rights by having a likelihood to confuse consumers as to source or affiliation of the goods or services) can a Complaint show any domain dispute precedent to show that that can meet the requirements of prong two.
The following is some UDRP precedent that will support a trademark owner. Note, there may be cases posturing a different point of view, which is why it is important to have a skilled UDRP domain name lawyer.
Cases supporting that a PARKED domain can be subject to cancellation in a UDRP domain dispute arbitration proceeding.
Here are a few cases.
Bloomberg case
Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004)
DOMAIN AT ISSUE: Bloomber.ro
This was a default case where the Respondent did not respond. In these types of cases, the panel must still make sure the complainant is meeting its burden of proof.
"Complainant asserts that Respondent has no rights or legitimate interests in the <bloomberg.ro> domain name. Since Respondent did not respond to the Complaint, the Panel may accept any reasonable assertions by Complainant as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant's allegations are true unless clearly contradicted by the evidence); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent's failure to reply to the Complaint)."
The panel came out swinging citing a slew of cases to support Bloomberg:
"Respondent is wholly appropriating Complainant's mark and is not using the <bloomberg.ro> domain name in connection with an active website.
The Panel finds that the passive holding of a domain name that is identical to Complainant's mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question);
See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name);
See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name);
See also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
These are some great cases to take a look at and to cite in your Complaints. Closing out its findings on this prong of the UDRP the panel noted:
"Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <bloomberg.ro> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
SeeTercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent's WHOIS information implies that Respondent is ‘commonly known by' the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply);
See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use);
See also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Rufino case
DOMAIN AT ISSUE: Rufino.com
Claim Number: FA1706001735061 (NATIONAL ARBITRATION FORUM)
Case overview: Complainant, an Italian winery founded in 1877, is one of the most recognizable wine brands in the United States and sells products in restaurants, liquor stores, bars, grocery stores and online across 85 countries. Complainant registered its RUFFINO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 537,668, registered Feb. 13, 1951), and has rights in the mark under Policy ¶4(a)(i). Respondent's <rufino.com> domain name is confusingly similar to Complainant's mark because it is merely a misspelling of Complainant's mark appended with the generic top-level domain (“gTLD”) “.com”.
The complainant also alleged:
"Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or authorized Respondent to use its RUFFINO mark in any fashion, and Respondent is not known by the disputed domain name. Respondent uses the resolving website to park advertisements and generates income through a parking service utilized on the site.
Respondent's parking, use of typosquatting and general offers to sell the domain name to the public are also considered evidence of Respondent's lack of rights and legitimate interests in the <rufino.com> domain name. Respondent also fails to make an active use of the disputed domain name by allowing the website to be controlled by a parking site. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii)."
The panel agreed and the arbitration panel noted the burden shifting aspect of this prong of the UDRP test:
Rights or Legitimate Interests
"Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain name”).
This means the Respondent is required to show contradicting evidence. The panel continued its analysis and agreed with the arguments of the Comlainant mark holder:
"Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent has failed to make an active use of the resolving website. As stated above, a parked website constitutes passive use of a domain name. Herbalife Int'l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005). Such use cannot be construed as a bona fide offering of goods or services or legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant's mark and is not using the <bloomberg.ro> domain name in connection with an active website.
The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant's mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). Complainant has provided a screenshot of Respondent's inactive, parked webpage.
The Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶4(c)(i) or (iii)."
Finally, the court discussed the "typo-squatting" aspect of the case:
"The Panel notes that Respondent's<rufino.com> is a typosquatted version of Complainant's RUFFINO mark. Typosquatting is the practice of taking advantage of Internet users' misspellings or typographical errors and is evidence that a respondent lacks rights and legitimate interests in a domain name. See indyMac Bank F.S.B. v. Ebeyer, FA 175292 (Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x' instead of the letter ‘c'”). Here, <rufino.com> is a simple misspelling of Complainant's RUFFINO mark and <ruffino.com> website because it only differs by the addition of another letter “F”. The Panel holds that Respondent has engaged in typosquatting and finds Respondent lacks rights and interests in <rufino.com>."
The Ovation.com Case
I believe this case is in federal court, so this case is cited just as an example of factors that may be worth alleging in a complaint.
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent is using Complainant's trademark.
(b) Respondent has not monitored the disputed domain name since it was taken down in 2009
(c) Respondent has since then used the disputed domain name to resolve to a website that is monetized by pay per click advertisements. The resolving page displays advertisements or links for competing hair care companies and products.
(d) Complainant has no affiliation with Respondent. Because Complainant claims that Respondent was not authorized to register a domain name containing Complainant's registered mark, and there is no evidence that suggests Respondent is commonly known by the disputed domain name, the Panel finds Respondent is not commonly known by the domain name at issue under Policy ¶ 4(a)(i).
(e) Further, the advertisements or links displayed in the disputed domain name lead consumers to competing hair care companies and products. The Panel finds that Respondent's use of the domain to provide advertisements and links to site competing for Complainant's business does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)
Given that Respondent owns numerous domain names it is unlikely that it is not aware of how to control the content of the disputed domain name.
The Panel finds that despite Respondent's claims that it at one time used the disputed domain name in connection with its business, the disputed domain name has been used to park a website containing monetized links.
The Panel notes that Respondent has not offered any proof in the form of evidence of his legitimate intent to use the disputed domain name.
All of these matters go to make out the prima facie case against Respondent.
Herbalife case
Here is yet another case to look at dealing with Herbalife International.
See Herbalife Int'l, Inc. v. Farmana, D2005-0765 (WIPO Oct. 3, 2005) (parking of the domain name for many years constitutes no more than a passive use or de facto activity, which activity can reinforce a finding of no legitimate interest).
Accor v. Eren Atesmen
Case No. D2009-0701
DOMAIN AT ISSUE: accorreviews.com
In this case Complainant is one of the world's largest groups in travel, tourism and corporate services. Complainant operates the websites “www.accor.com” and “www.accorhotels.com” used for hotel accommodation services.
Complainant owns numerous trademark registrations throughout the world for ACCOR, among them International Trademark No. 480492, filed on November 10, 1983, renewed and covering products and services in classes 16, 39, and 42; and International Trademark No. 727696, filed on December 28, 1999, renewed, covering products and services in classes 16, 39, and 42, inter alia for hotel and restaurant services and accommodation.
The disputed domain name <accorreviews.com> was registered to Respondent on February 18, 2009. The domain name resolves to a website providing various commercial links to Complainant's websites and those of its competitors in the hotel industry.
The panel found that the Respondent had no legitimate interest in the domain and stated:
"The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) using the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name;
or
(3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Based on exhibits accompanying the Complaint, Respondent's website presently appears to offer sponsored link advertising.
Respondent's website also listed links to websites promoting Complainant's competitors. By diverting traffic to third parties using paid link advertisements, the Panel finds that Respondent is using Complainant's marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)).
See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd., WIPO Case No. D2006-1079.
In the absence of a response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use the ACCOR mark in its domain name and that Respondent is not commonly known by the disputed domain name.
Respondent is seeking to attract Internet users through Complainant's widely known marks for Respondent's own commercial purposes.
The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate non-commercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
The Panel also finds that since there are no reviews posted on Respondent's website, there is no bona fide offering of goods or services by Respondent, and that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant's prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name. Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amicus Trade AB v. Dharshinee Naidu
Case No. D2014-0418.
One more case to top it off:
"The Panel further concludes that the Respondent's use of a confusingly similar domain name in association with a click-through site is not in the present circumstances evidence of use in association with a bona fide offering of goods and services."
What about "BAD FAITH" in Parked Domains (the third prong)?
I will wet your whistle with this case. I will be writing a more through blog in the near future. In the Amicus case cited directly above)
C. Registered and Used in Bad Faith
"In the absence of any Response, the Panel accepts that the domain name <holdon.com> was acquired by the Respondent in 2013. At the time the disputed domain name was acquired in 2013, the Complainant's HOLDON trademark had been registered for over 12 years, and had been extensively used on products and had been marketed in Europe and Asia for 15 years. At that time, the Complainant had also been active on the Internet for quite some time via its domain names <holdonsystems.com> and <holdon.info>.
The Panel is further prepared to accept the Complainant's uncontested assertions that the use of the disputed domain name in association with a click-through site has interfered and/or is interfering with the Complainant's business, and that the disputed domain name is leading Internet customers seeking the Complainant's website to the Respondent's unauthorized website for purposes of monetary gain. In the absence of any evidence to the contrary, the Panel finds that the disputed domain name was registered and used in bad faith by the Respondent.
The Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iIi) of the Policy.
Attorney Steve® Tip: Section 4 of the UDRP policy notes 4 factors that can be used to help a complainant establish bad faith. This is NOT an exclusive list and the panel will entertain other applicable factors:
(i) the domain was registered primarily for the purpose of selling it to the complainant or a competitor for more than the documented out-of-pocket expenses related to the name; or
(ii) the domain was registered in order to prevent the mark owner from using it, provided that the registrant has engaged in a pattern of such registration; or
(iii) the domain was registered primarily to disrupt the business of a competitor; or
(iv) by using the domain, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.
Contact a UDRP Domain & Trademark Lawyer
Hopefully, these cases have helped illustrate this prong of a UDRP dispute where you have parked websites.
If you need help filing or responding to a UDRP Domain Name Dispute, with either the World Intellectual Property Organization ("WIPO"), or the National Arbitration Forum ("NAF"), contact us at (877) 276-5084 to discuss our services. We can also help with trademark infringement lawsuits in federal court including dilution claims, ACPA RDNH cases (reverse cybersquatting abuse), and drafting and responding to cease and desist letters dealing with valuable trademarks. You may also leave us an email through our contact form.
