Inferring Bad Faith From the Circumstances

In a recent National Arbitration Forum decision, a three member Panel found that a domain registration, which predated the Complainant’s trademark application was not enough of a reason, among others, to deny the transfer of the domain. In Shahrad Yazdani v. Domain Deluxe FA1219173 (Nat. Arb. Forum October 2, 2008), the Panel reviewed a complaint involving the domain www.audiolearn.com.

The Complainant, Audio Learn, is a company which produces audio study guidebooks for tests such as the SAT, MCAT and PCAT. Complainant, which currently operates at www.audiolearn.net, claims to have been in business since 1997, based upon its allegations in the complaint and based upon its date of first use listed in its trademark application. Complainant has a trademark for the mark AUDIOLEARN (Reg. No. 2,740,489, issued July 22, 2003 and filed on August 7, 2002). The domain at issue was registered on May 20, 2002, predating the trademark application filing date.

The Panel noted that the UDRP Policy does not explicitly require that Complainant’s trademark rights predate the domain name registration for purposes of Policy ¶4(a)(i). As a result the Panel found that the domain name is identical or confusingly similar to Complainant’s mark. The Panel confirmed and agreed with Complainant that the Respondent was not commonly known by the domain name at issue. The Panel further noted:

The disputed domain name resolves to a website that appears only to be a search site on which companies in competition with Complainant purchase advertisements.  The Panel finds this directly competitive use of an allegedly identical domain name to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)….We find that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and Respondent has failed to meet its burden to come forward with concrete evidence that it does have rights or legitimate interests, as its site does not present a bona fide offering that would give rise to rights or legitimate interests. 

The Panel moved onto the last prong of the three part test, namely registration and use in bad faith. Although not explicitly making findings relative to this prong the Panel made some statements which seem to show their intent and ultimate ruling.

However, Complainant contends, and Respondent does not deny, that the <audiolearn.com> domain name resolves to a website displaying advertisements and “pay-per-click” links, many of which are for direct competitors of Complainant.  Accordingly, the Panel may find that the <audiolearn.com> domain name was registered and is being used in bad faith pursuant to Policy ¶ 4(b)(iv)….Additionally, we could infer bad faith registration based upon Complainant’s prior use of the name and Respondent’s subsequent inactive use of the domain name….Complainant presents sparse evidence of use; however, Complainant was using the domain name <audiolearn.net>, and it seems more likely than not that Respondent would have noticed this when deciding whether to register <audiolearn.com>, either by searching for similar domain name registrations, or simply by searching the web for instances of “audiolearn.”

Ultimately, the Panel directed the Respondent to TRANSFER the domain. 


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