The point about commonness and weakness is made in a duo of decisions by the same Panel, Mastercard International Incorporated v. Wesley Wobles, D2011-2311 (WIPO March 8, 2012) (<pricelessamsterdam.com>) and Mastercard International Incorporated v. Education, Ersin Namli, D2011-2312 (WIPO March 8, 2012) (<priceless istanbul.com>). Complainant claims PRICELESS is one of a family of trademarks. The Panel dismissed both complaints. The fact that Complainant in its MASTERCARD identity is internationally famous is irrelevant.

Whereas the adjectival phrase MASTERCARD is strong – more suggestive than descriptive – PRIVILEGE is weak. It is not made strong by association. Furthermore, Complainant’s certified services are in the financial sector. In its application to the USPTO, Mastercard describes its services as follows:

Financial services, namely, providing credit card, debit card [charge card and stored value smart card services, prepaid telephone calling card services, cash disbursement,] and transaction authorization and settlement services.

In a recently filed registered trademark, PRICELESS NEW YORK (not referred to in either of these cases) the Complainant describes its services as follows:

Promoting the goods and services of others by means of coupons, discounts, advertisements, rewards and incentives generated in connection with the use of credit and debit cards, electronic links to merchant and retailer web sites, and through promotional contests.

The Panel notes that implicit in Complainant’s claim are two assertions:

(1) that the PRICELESS family of marks is associated with some of the areas represented by third-party links on Respondent’s website, which, according to the Complaint, are “hotel reservations, restaurant coupons, and tours”; or (2) that the PRICELESS family of marks is broadly associated with virtually any promotion of goods and services on the Internet – by “merchant and retailer web sites.”

If it were so that Complainant’s trademark by its implicit range could prevent anyone from using “priceless,” then (in effect) it would take control of the word coupled or not with any product or service. Implicit in the argument is that no one else can employ “priceless.” The Panel was not persuaded:

Although hotel reservations, restaurant coupons, and tours may be among the millions of things that might be obtained through use of Complainant’s trademarked products and services, the Panel finds that the Complaint in this proceeding has not established that the PRICELESS family of marks is associated in the trademark sense with “hotel reservations, restaurant coupons, and tours.”

Mastercard in its new application for PRICELESS NEW YORK and Respondents in their domain names are all using”priceless” descriptively either to qualify the noun (New York priceless) or to suggest that which is beyond price in New York (or any other geographic location). In this use, Respondents do not violate any third party rights.

Panelists in the formative decisions adopted a “no room for general equitable doctrines [view] under the Policy such as would be possessed by Courts in common law jurisdictions,” Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO February 1, 2002). However, the consensus is not without qualification. Dilatoriness has consequences. A good illustration is The Economist Newspaper Limited v. TE Internet Services, D2007-1652 (WIPO February 5, 2008) (<theeconomist.com>) where the Complainant waited 11 years to commence the proceeding.

It was always understood that the greater the period elapsing between domain name registration and commencing a proceeding the harder it would be for a complainant to prove bad faith registration. This view drew a distinction between laches as a defense and lapse of time as a disabling fact of proof. At the same time, other panelists questioned the consensus for disallowing the defense. Why (they asked) should it not be a defense? This heterodoxy appears first to have been articulated by a dissenting panelist in 2009. Vanguard Trademark Holdings USA LLC v. Nett Corp., FA1262162 (Nat. Arb. Forum July 26, 2009) (9 years, but the domain name was identical to the trademark). It reappeared in a unanimous 3-member Panel decision in the following year without reference to the dissenting analysis. The New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010) (not apparently influenced by the Vanguard dissent). In this Panel’s view, laches “should be expressly recognized as a valid defense in any domain dispute where the facts so warrant.” The Panel continued that there appears to be no “sound basis for ignoring the potential defense.” In other words, a trademark owner can be defeated where there has been a significant passage of time coupled with a plausible explanation for registering the domain name. The New York Times waited 6 years (common law trademark).

While not generally endorsed, the contra view “has gained a foothold.” So notes the Panel in Mars, Incorporated v. Ben Chen, FA1109001405770 (Nat. Arb. Forum October 17, 2011) who decided that the defense did not apply in this particular case. The Respondent argued that since he was known in the family as “Uncle Ben” and had owned <uncleben.com> for 12 years he had a right or legitimate interest in it. Sobriquets have had a mixed history, but there are a couple of dotty cases holding in Respondent’s favor, “[Mr.] Penguin” and “Mrs. Jellibee” that I will pass over at this time, but not to be forgotten.

Despite Vanguard and The New York Times, the Panel in Mars did not find “Uncle Ben” a good candidate for an alleged “noncommercial or fair use” defense. She held

Whether the panel in The New York Times case was describing laches or promissory estoppel is a question for another time, but what is clear is that equitable relief, which was for a very long time dismissed as inappropriate in administrative proceedings under the Policy, now seems to have gained a foothold. Nonetheless, as with all equitable remedies, application will be discretionary and each case will have to be determined on its own individual facts.

Dilatoriness depends on the factual circumstances of each case. Offsetting the view that “[an] inordinate delay in bringing the complaint makes any claim of use in bad faith unsustainable” is a finding that “periodic display[s] of offending links haphazardly amalgamated with elements of personal use of the domain name” permits a conclusion that the Respondent chose as its sobriquet and registered a domain name identical to the Complainant’s trademark in bad faith.

The Anticybersquatting Consumer Protection Act, 15 U.S.C. §1114(2)(D)(v) (“ACPA”) provides,

A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) [the UDRP is such a Policy] may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this Act. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.

Invocation of the ACPA is not an appeal from a UDRP decision. UDRP decisions have no preclusive effect and federal courts do not defer to them.

The complainant in AirFX, LLC v. ATTN AIRFX.COM, FA1104001384655 (Nat. Arb. Forum May 16, 2011) now defendant in AIRFX v. AirFX LLC, CV 11-01064 (D. AZ October 20, 2011) moved to dismiss a one claim complaint under the ACPA for “reverse domain name hijacking.” The phrase “reverse domain name hijacking” is defined in the UDRP. It is not used in the ACPA, but the concept is implicit in the provision quoted above. An order directing transfer of a domain name creates a cause of action in favor of the domain name registrant, but the proof requirements of the two models are different. Plaintiff has to prove that its registration of the disputed domain name is “not unlawful.”

The defendant argued that to state a claim under the ACPA “plaintiffs must show that the defendant both knew of the plaintiffs’ legitimate interest in the domain name and harassed plaintiffs.” That is correct for a finding under UDRP, but not under ACPA. Defendant’s argument that it committed no wrong by “[m]erely defending [its] own trademark rights and bringing the (successful UDRP action” misstates the law. “[A] UDRP decision to transfer the domain name ‘triggers the right to sue’[for relief under the ACPA],” citing Mann v. AFN Invs., Ltd. CV-07-0083 (S.D. Cal. July 27, 2007). The “right to sue” of course is not conclusive of the merits of plaintiff’s claim so this case is worth following.

A second issue concerns venue. Defendant argued that the case should be transferred to the Southern District of Indiana “because it is the district in which defendant resides, the district where all documents relevant to its federal trademark reside, and where ‘all relevant witnesses reside’.” However, under UDRP Rule 3(xiii) of the Rules a complainant is required to select a “mutual jurisdiction” for venue in the event of an order of transfer. The term “mutual jurisdiction” is defined as “a court jurisdiction at the location of either (a) the principal office of the Registrar … or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s Whois directory at the time the complainant is submitted to the Provider.” Paragraph 1 of the Rules of the Policy. The court also rejected this argument, because plaintiffs did precisely what they were supposed to do, namely that they filed their action in “the location in which defendant expressly chose to litigate.”

]]> https://udrpcommentaries.wordpress.com/2011/10/26/challenging-transfer-order-under-the-anticybersquatting-consumer-protection-act/feed/ 0 1304 gmlevine https://udrpcommentaries.wordpress.com/2011/10/21/proof-of-first-use-in-commerce-earlier-than-domain-name/ https://udrpcommentaries.wordpress.com/2011/10/21/proof-of-first-use-in-commerce-earlier-than-domain-name/#respond Fri, 21 Oct 2011 09:59:49 +0000 http://udrpcommentaries.wordpress.com/?p=1301 Ordinarily, a domain name registered prior to the complainant’s acquisition of a trademark could not have been registered in bad faith “because the registrant could not have contemplated the complainant’s then non-existent right,” WIPO Overview paragraph 3.1. The trademark and disputed domain name in Spacebound, Inc. v. Amaben Internet Services Inc., D2011-1403 (WIPO October 3, 2011) are PRICE PLUNGE (registered June 21, 2011, application filed April 10, 2010, first use in commerce December 12, 2010) and <price-plunge.com> (registered February 24, 2011). Complainant registered <priceplunge.com> on April 5, 2010. The Respondent defaulted.

Default in answering the complaint, however, does not lead to an automatic ruling for complainant. Brent Redmond Transportation, Inc. v. SSI Express, D2008-1765 (WIPO December 30, 2008) (“Unlike in civil litigation in the United States of America, failure to file a response in a Policy proceeding does not constitute an admission of any matter pleaded in the Complaint or result in the Policy equivalent of a default judgment.”) A complainant does not prevail on its pleadings alone anymore than a respondent forfeits the domain name for failing to answer the complaint. VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000). While default may be a factor in assessing the respondent’s right or legitimate interests in the domain name and its intention in registering it, it is not by itself an admission of bad faith.

The parties in Spacebound are respectively in the U.S. and Canada. There is only circumstantial evidence that the Respondent had any knowledge of the Complainant or its trademark, but the similarity between domain name and trademark is suspicious. The combination of “price” and “plunge” is not common although the words are. The sole difference between the domain name and the trademark is the hyphenation. That a domain name registration precedes the certificate of trademark is a factor but not conclusive of good faith. The WIPO Overview has an “however” which reads:

In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.

The evidence in Spacebound (such as it is) consists of negatives:

[T]he Respondent does not have a clear identity, and its address is effectively a post office box. It also appears unlikely to the Panel that the Respondent can have registered a domain name so closely similar to the Complainant’s mark, but had no awareness of the Complainant’s mark or its business. Further, as noted above, the Respondent has chosen to submit no formal response. As such, the Panel considers that it is reasonable to draw a negative inference from the Respondent’s failure to reply.

It is also a negative that the domain name does not resolve to an active website. It is thus open to the argument that “it is not possible to conceive of a circumstance in which the Respondent could legitimately use the disputed domain name.” An active website offers a clue to a respondent’s identity and the nature of its business. In Spacebound Respondent’s post office box address is a strip shopping mall. For the Panel, it appeared “unlikely … that the Respondent can have registered a domain name so closely similar to the Complainant’s mark, but had no awareness of the Complainant’s mark or its business.”

In Motorola Inc. v. NewGate Internet, Inc., D2000-0079 (WIPO April 20, 2000) the Respondent threatened to “use the domain to host an ‘adult sex site’.” The majority noted that “actions that create, or tend to create, violations of the law can hardly be considered to be ‘bona fide’.” In Carso S.A. de C.V. v. RusliCyber.com and Trisakti University, Mr. Ahmad Rusli, D2008-1767 (WIPO January 5, 2009) when the Complainant decided did not respond to Respondent’s communication to talk about the domain name Respondent in retaliation threatened to divert traffic to an “unpredictable destination.” The Respondent’s explanation was that the threat “was just a way another ‘method’ to attract the Complainant’s attention.”

Gryphon Internet, LLC v. thank you corp. / Jon Shakur, FA1108001405610 (Nat. Arb. Forum October 11, 2011) combines threats and fraudulent acquisition. The Respondent’s (alleged) innocent purpose was to “use [the domain name] for a web site for pets and rare animal species.” It provided no evidence of this intention. Complainant’s proof was persuasive that until August 2011 the site was a thriving business when it was attacked and stolen. In response to the proceedings the Respondent threatened to point the name to adult content.

In cases that raise these issues Panels have consistently ruled that the complainant is entitled to relief. Although fraudulent transfer is not listed as an act of bad faith, paragraph 4(b) makes it clear that subparagraphs (i) through (iv) are nonexclusive examples of bad faith acts. The Panel in Gryphon cites Worldcom Exch. (above) in which the earlier Panel noted that the “Complainant seeks to expand the territory of bad faith, presenting a new type of abusive conduct on the part of the Respondent, one that on its face cries out for relief: the hijacking of a domain name through the manipulation of password access.” It is an example of cybersquatting, in effect, expanding to include abusive conduct.

Hijacking combined with threats strengthens a negative inference about a respondent’s intention in acquiring a domain name. Although the Respondent in Gryphon denied sending e-mails requesting money – a violation of paragraph 4(b)(i) – it admitted that it owned the address that sent the e-mail. That, and the e-mail to the Provider about adult content “clearly intended to portray that if the Respondent [did] not get his own way the business operated at the site [would] be damaged.” The language of extortion is inconsistent with a claim of innocense. Whether a respondent likely gained control or was given control of a fraudulently transferred domain name or even innocently acquired it from a hijacker it will be forfeited to the trademark holder.

Paragraph 4 (b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant the owner of the trade mark in question for valuable consideration in excess of documented out of pocket costs. The Respondent has not produced any evidence that it has paid any sum for the Domain Name and yet the Complainant has produced evidence by way of documents that the Domain Name was stolen.

Although the Respondent in Gryphon denies that it sent the e-mails to the Complainant requesting money for the Domain Name, it clearly threatened to point the domain name to adult content to cause damage to the business on the site. The Respondent admitted that it owned the e-mail address that sent the threatening e-mail. It was “clearly intended to portray that if the Respondent does not get his own way the business operated at the site will be damaged with the clear implication that the Respondent did not believe he really owned or was entitled to that business or site connected to the Domain Name.” As such the communication speaks in the language of extortion. Based on this evidence alone the Panelist was able to decide that the Respondent acquired the Domain Name and was using it in bad faith.

In the first line of reasoning, the composition of the domain name is irrelevant. Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (<bridgestone-firestone.net>) and Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001) (<britanniabuildingsociety.org>) are examples. The second line or reasoning holds that “it is not the address of the web site that is protected by free speech principles, but rather the content of the web site,” Valero Energy Corporation v. American Distribution Systems, Inc., D2001-0581 (WIPO August 12, 2001) (<valeroenergy.com>) and Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (<cogema.org>). In Compagnie Generale the Panel held that while Respondent has a “right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant … [that] is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark].” Thus, the right responds concededly have under this line of reasoning is hemmed in.

If “it is not the address of the web site that is protected by free speech principles, but rather the content of the web site,” then it follows that domain names identical to the trademark would always be vulnerable to forfeiture. The Panel in Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (<eastman-chemical.com>) made an even more radical contribution by stating (perhaps inadvertently given that the domain name is identical to the trademark) that “[f]ree speech cannot be used as a defense against the use of a confusingly similar mark as a domain name.”

The Panel in Equality Charter School, Inc. v. Mona Davids / A Happy DreamHost Customer, D2011-1226 (WIPO September 2011)(<equalitycharterschool.com>) argues for a “flexible, context-based approach to fair use cases.” He “finds that no bright line may be drawn denying the existence of a non-commercial free speech right under the UDRP simply based upon whether Respondent has or has not added words (other than the gtld suffix) to Complainant’s alleged trademark.” The fact that a <trademark.com> case causes “initial confusion among Internet users” should be overlooked if the content of the website is what it purports to be.

A “flexible, context-based approach” requires examining initial interest confusion. The Panel in Equality Charter School finds that “search engines display[] descriptive content that users would see before clicking the link to be taken to Respondent’s website. The search engine descriptions of Respondent’s website picked up the critical nature of its content; users who glance at the descriptions in the search results rather than simply clicking links without reading would already be alerted to the critical nature of Respondent’s website before clicking on the link indexing the website in the search tool.” On this basis, “[t]he Panel finds that the subtitle quoted above, the other headlines and the tone of postings on the site would alert any reader upon first viewing that the website is not sponsored by Complainant, but is instead boldly critical of Complainant’s school.” Thus, although the domain name does not add terms to the complainant’s mark, no one viewing the website could have thought it was the complainant’s website.”

“If negative commentary were a touchstone of bad faith” (quoting the Panel in Equality Charter School among others) ‘then in every UDRP decision recognizing a fair use right supported by protest or criticism, the respondent registering the disputed domain name to launch the commentary would be found to have registered in bad faith.” Negative commentary may be displeasing to the complainant, but it is not grounds for silencing it.

The similarity that makes a domain name confusingly similar to a trademark must be confusing to an “objective bystander,” Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010) (analysis in concurring opinion, but dissenting on the first requirement and finding that <opensociety.org> not confusingly similar to OPEN SOCIETY INSTITUTE. The threshold requirement sets a low bar but small differences as noted above “can have a major effect on the way domain names are read,” The Football Association Limited v. Websitebrokers Limited, D2001-0156 (WIPO April 5, 2001).

“BETS” and “365” combined form the trademark BETS365 (distinctive by virtue of its having been registered), but “there is nothing in the evidence which would suggest that the Complainant has any rights in respect of the element ‘365′ on its own.” In bet365 Group Limited v. Domains by Proxy, Inc. / Steve Prime, D2011-1242 (WIPO September 14, 2011) the disputed domain names are: <365bets365.com>, <365casino365.com>, <365wager365.com>, and <365poker365.com>. Any combination that includes “365” and “bets” falls on one side of the line while “365″ combined with “casino,” “wager,” and “poker” falls on the other. “A straightforward visual or aural comparison of the Complainant’s trademark with the alphanumeric strings in these Domain Names can only result in the conclusion that they look and sound quite different from the Complainant’s BET365 mark.” The Panel held that

[T]he words “casino” and “poker” are not synonyms for the word “bet” in the English language, and they do not convey the same impression. One may “bet”, or place a “bet”, without going near a casino or playing poker. The fact that those words are terms which may be used in the Complainant’s field of business does not, in the Panel’s view, make them confusingly similar to the word “bet”.

One of the questions (although not asked by all panelists) is whether there is “a risk that Internet users may actually believe there [is] a real connection between the domain name and the complainant and/or its goods and services.” WIPO Overview 2.0, paragraph 1.2. The lower the risk, the less likelihood that the total composition of a domain name will be confusingly similar. The fault line can be seen in Open Society Institute where the majority found <opensociety.org> confusingly similar to the trademark (only to conclude that the Complainant failed to prove abusive registration) and the dissent on that issue found only similarity that would not be confusing to the “objective bystander.”

Panels that subscribe to the “risk” analysis on the standing issue (and that includes bet365) are essentially lifting the paragraph 4(a)(i) bar higher. That is why the Panel in bet365 and even more so the Panel in The Football Association make a point of analyzing the differences at the phonetic and syntactic level:

Given that the Football Association has a protectible trading reputation in “The F A”, a second question arises. Is <thefa.com> identical with or confusingly similar to “The F A”? In such a comparison one disregards the addition of the TLD. Even so, the two marks are not identical and the issue becomes one of confusing similarity. While the practice of omitting spaces between words is characteristic of “domainspeak”, the addition of only a consonant and a vowel to the definite article in English makes for a special case. “Thefa” seems inherently a fabricated word. The combination which is the Complainant’s abbreviated name has to be picked out from it by deliberate mental effort. Not for nothing, in my view, is the Complainant’s own official domain in the form <the-fa.org>. The hyphen makes a crucial difference.

Even if confusing similarity is found between domain names and trademarks, giving the benefit of doubt to the complainant on the opening gambit, there is likely to be no “likelihood of confusion” which is a trademark term incorporated in paragraph 4(b)(iv) of the Policy.

Let us take a step back. The term “legitimate interest” in paragraphs 4(a)(ii) and 4(c) of the Policy refers to the respondent’s entitlement to its choice of domain name, rather than the legality of its business. A business may be lawful, but its use of the domain name mala fides. Replacing inkjet cartridges is lawful but 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,” Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, D2000-0878 (WIPO September 21, 2000) (<canonink.com>, <canoninkjet.net>. 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). A respondent may very well have in mind a legitimate business in the future but it must demonstrate that in registering the domain name when it did it had no “exploitative intent,” at that time, Abu Dhabi Future Energy Company PJSC v. John Pepin, D2008-1560 (WIPO December 22, 2008) (masdarcity.com> and <masdarcity.net>). All these cases illustrate bad faith use contemporaneous with registration.

Of course, successful rebuttal ends the proceedings. But, in commencing the proceedings, many trademark owners want to believe that lawful business excludes acquiring domain names on speculation of future value or monetizing them with link farms. That is not the case, although either the respondent in its rebuttal to the prima facie case or the complainant in establishing the bad faith elements must address the issue of knowledge or awareness. A respondent without knowledge cannot be said to have the alleged intention. The Panel in ScribeWrite, LLC v. Buydomains.com / Inventory Management, FA1107001398963 (Nat. Arb. Forum September 6, 2011) held that reselling domain names was a lawful commercial activity, citing Micron Technology, Inc. v. Null International Research Center, D2001-0608 (WIPO June 20, 2001). The Respondents’ legitimate interests in both these case are bolstered by the kinds of names they acquired. In Micron, the Respondent’s inventory included names similar to the disputed domain name, <crucialtechnology.com>: <populartechnology.com>, <thirdgenwireless.com>, <biotechrevolution.com>, <seniorhealthissues.com> and <bravenewbiotech.com>.

In ScribeWrite the disputed domain name was identical to the trademark, but it specialized in “webmaster”. Its inventory included <advancedwebmaster.com>; <jobwebmaster.com>; <juniorwebmaster.com>; <specialwebmaster.com>; <professionalwebmaster.com>; and <worldclasswebmaster.com>. It helps that the domain names in all these examples are common strings of words and affixes. It also helps, although by no means conclusive that, as with ScribeWrite, the disputed domain name was registered prior to the registration of the trademark.

What a complainant must do is illustrated in many case by what the complainant has failed to do. A good example is Regents of the University of Michigan v. Elite Options Inc., FA1107001400516 (Nat. Arb. Forum September 1, 2011) involving two domain names, <surveyresearchcenter.com> and <surveyclaim.com>. The Panel concluded that the Complainant had a common law trademark in SURVEY RESEARCH CENTER, but none in SURVEY CLAIM. The case proceeded to the second requirement only for the trademark in which the Complainant had a right. Although the Complainant provided extensive evidence of the website resolving from the domain name the Panel held that “this use cannot be imputed to Respondent’s domain name.” To succeed the evidence must be what the Respondent is doing with the domain name it claims is infringing its trademark.

It should be de rigueur – like reading off a check list – to offer in evidence the most obvious proof of use. Internalize the requirement. Show the Panel what the respondent is doing and how that use relates to the Policy. “In this case, [the Regents of the University of Michigan] has not provided any screen shots of the website resolving from the domain name.” Offering screen shots is persuasive in showing where the disputed domain name leads because it corroborates a use or non-use of the domain name. See, Skyy Spirits LLC v. Stanislaw Krzenszczynski, FA0808001220829 (Nat. Arb. Forum November 26, 2008). Regents of the University of Michigan “also failed to make arguments in its Complaint as to Respondent’s use of the disputed domain name and how that use relates to the Policy.”

Failure to follow the formula for making the prima facie case is fatal. In addition to the miscues in Regents of the University of Michigan other examples include failure to “bring evidence of Respondents use of the disputed domain name in a way that infringes upon Complainant’s rights,” Nike, Inc. v. nikerotterdam, FA0804001180664 (Nat. Arb. Forum August 19, 2008) (<nikerotterdam>). When the complainant fails to marshal evidence it fails, even for famous brands. At the very least – rising in difficulty from common words and generic terms even if registered as trademarks – the complainant must be preemptive in presenting its prima facie case; that is, persuade the Panel that respondent cannot satisfy any defense under any subparagraph of paragraph 4(c) of the Policy. This will undoubtedly include deconstructing the respondent’s website and tracing its history from one of the services that provide this kind of information, the Internet Archive’s Wayback Machine or DomainTools.

In Tom Welling, the Respondent captures the actor’s name, <tomwelling.com>; in Stafani Germanotta, the Respondent captures the persona of the singer, Lady Gaga, <ladygaga.org>. Panelists who subscribe to the intolerant view focus on impersonation – “any use which gives rise to a right or legitimate interest must be fair and impersonation is not fair.” The tolerant view takes into account the reality of both the website as well as the enthusiasms of fandom: “Respondent notes that upon reaching her website consumers immediately read ‘Your best #1 online fan resource of Lady Gaga,’ and ‘Welcome to your #01 unofficial Lady Gaga fansite’.”

One of the benefits of notoriety for entertainers is commercial success and adoration; but it comes with a burden. “The Complainant cannot have fame without fans and fans cannot have fan sites without referring to the objects of their adoration.” Domain names that resolve to fan sites are protected under paragraph 4(c)(iii) of the Policy for their noncommercial or fair use of the complainant’s trademark. This is found to be the case with <ladygaga.org>. However, the holding of a domain name sanctioned under paragraph 4(c)(iii) does not so much recognize a “right” as it does a “legitimate interest.”

The distinction between a right and a legitimate interest is important, and in Stafani Germanotta it is expressly noted. A domain name holder with a legal right, someone (for example) who has a right concurrent with the trademark holder, has all the rights of a property owner. (This last observation comes with some qualifications too extensive to discuss in a short Note). A domain name holder with a legitimate interest in a domain name holds legitimately only so far as it uses the domain name noncommercially and in fair use. Thus, for the moment “Respondent’s fan site does meet Complainant’s definition of nominative fair use by its identification of Complainant’s music and related goods and services.” However,

[i]f the Respondent were to change her use in the future in a manner that indicated an intent to profit, such as by selling items, offering any commerce, or offering or accepting the sale of the disputed domain name such facts might justify a refilling and, depending on the circumstances, could lead a Panel to a different outcome than the one reached by this Panel in the present matter.

In other words, if use changes to undercut a defense under paragraph 4(c)(iii) the complainant has an actionable claim to arbitrate anew the question of rights in second proceeding. There is no res judicata effect under UDRP or the Anticybersquatting Consumer Protection Act where the subsequent proceeding or action is for subsequent conduct. The reason is noted in Storey v. Cello Holdings, 347 F.3d 370 (2nd Cir. 2003): “Because Cello’s ACPA cause of action is predicated on conduct that post-dated the First Action, we hold that res judicata does not bar the Instant Action.”