Posts Tagged ‘Strict Interpretation’

Bad Faith Use, Despite Good Faith Registration, Causes Transfer

Tuesday, December 1st, 2009


In the recent domain name dispute decision of Ville de Paris v. Jeff Walter WIPO D2009-1278, November 19, 2009, a single member Panel was faced with a dispute over the domain www.parvi.org. Complainant is the City of Paris, France, who claims ownership of two French trademark registrations from 2002 for PARVI (for communications by computer terminals) and PARVI PARIS VILLE NUMERIQUE (for computerized file management and communications by computer terminals). Respondent registered the disputed domain in June 2006. The background story of this case involves a series of communications between the parties regarding Respondent’s use and continued ownership of the domain. Essentially, the Respondent contended he registered the domain with no knowledge of Paris’ PARVI marks and instead picked the word because it meant “small” in Latin and was to be used for a social networking site. Paris even acknowledged that he lacked the intention of causing confusion when he registered the domain. Apparently, sometime later Respondent then changed his mind and was going to run a web site dedicated to open source software projects. The resulting domain dispute occurred.

Generally, paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. In the instant case however, the Panel took some liberties and has made some interesting interpretations of the Policy and prior case decisions.

First, the Panel quickly dispelled with the first element, noting that it was identical to Paris’ PARVI trademark. The Panel also quickly rolled through the second element, noting that the word parvi is not Latin for small, but instead the correct word is parvus. The Panel found that Respondent failed to show demonstrable preparations for the domain and thus lacked any rights or legitimate interests.

The Panel spent most of the decision discussing the third element, registration and use in bad faith. Paragraph 4(a)(iii) states that Complainant must prove that Respondent’s “domain name has been registered and is being used in bad faith.” The Panel explained that recently many decisions have reviewed the interpretation of this policy paragraph to mean something slightly different then it has been applied. The Panel explained:

The Policy expressly states that the Paragraph 4(b) scenarios are “without limitation” – that is, the Policy makes clear that there can be other scenarios that are also evidence of registration and use in bad faith. It follows, therefore, that the Policy expressly recognizes that the Paragraph 4(a)(iii) requirement of bad faith can, in certain circumstances, be satisfied where the respondent has used the domain name in bad faith, even though the respondent may not have been acting in bad faith at the time of acquisition of the domain name.

The Panel attempted to justify its findings, based upon a hypotheical:

There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name. To limit the trademark owner’s redress in this way would result in outcomes that make no sense. In particular, it would mean that even the most damaging abuse of a trademark right through the most egregious bad faith use of a domain name would be immune from remedy under the Policy so long as the registrant was not acting in bad faith when the domain name was acquired. It would, in short, give a “green light” to good faith domain name registrants to later abusively use their domain names, safe in the knowledge that any such bad faith use could not provide the basis for a successful action under the Policy.

The Panel found that Respodent probably did not register the disputed domain with the intention of benefitting from Pari’s PARVI mark, but this did not end the decision.

The Respondent’s decision to change the intended use of the disputed domain name to a use that could cause confusion with, and disruption to, the Complainant’s activities, and the Respondent’s demand that the Complainant provide it with an option to acquire the Complainant’s domain names, were actions by which the Respondent sought to use its registration of the disputed domain name to derive a benefit from the Complainant’s trademark.

Ultimately, the Panel found that Complainant satisfied all three elements, and ordered the domain be TRANSFERRED.

Respondent’s Cannot Just Agree to Transfer

Monday, September 15th, 2008

In an interesting move by a panel, a Respondent’s attempt at agreeing to the transfer was not sufficient. In the case of ANOVO v. Moniker Privacy Services / Alexander Lerman (WIPO  D2008-1049, September 8, 2008), despite the Respondent’s assertion that it had no objection to the transfer of the domain, the panel decided to still go through the full three prong analysis in accordance with paragraph 4(a) of the UDRP Policy.

The Complainant is a French company incorporated since 1992 and is the owner of various trademark registrations, including a Community Trademark registration for ANOVO. Respondent registered the disputed domain, anovo.com, on May 7 2007. Respondent used Moniker Privacy Services who identified Alexander Lerman as the owner.

The Respondent’s representative proposed a suspension of the proceedings to enable the transfer to take place, by Complainant’s representative declined. Respondent noted that many prior panels had explored this similar situation, where there was a unilateral consent to transfer. See The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207, and Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336.

Wihtout regard to the Respondent’s consent to trasnfer, the Panel found that Paragraph 10 of the UDRP Policy did not grant broad powers to disregard the substantive requirement of paragraph 4(a) of the UDRP Policy and further found as follows:

In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.” It is this Panel’s opinion that this does not mean a default decision is automatically to be issued in favour of the Complainant. Consequently, the Panel must proceed with at least a basic assessment of the Complaint on its merits.

Additionally, the Panel observed:

Nor is it necessarily true that a complainant will only cause further delay by having a case taken to a decision rather than having the proceedings suspended in reply to a respondent’s reported intention to facilitate a transfer of the domain name at issue. Past experience suggests that such expressed intentions may also be employed as a delaying tactic by a Respondent. Furthermore, in cases where a respondent believes that it is likely to lose, it may also prefer to propose a transfer simply to avoid having itself identified on the list of UDRP respondents. The Panel considers it quite understandable that a complainant, having gone to the trouble and expense of preparing and filing a Complaint, might not wish to allow the respondent to avoid a formal decision at such a late stage.

As a result, the Panel embarked through the full analysis of the three prong policy test and ultimately ordered transfer of the domain.

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