Arrow Productions, Ltd. v. Caladonia Ltd., Domain Manager
Claim Number: FA0807001213977
PARTIES
Complainant is Arrow Productions, Ltd. (“Complainant”), represented by Anna
M. Vradenburgh, of Piccionelli &
Sarno,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <deepthroat.com>, registered with Moniker Online Services, Inc.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
James A. Carmody, Debrett Lyons and Dennis A. Foster (chair) as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 9, 2008.
On July 7, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <deepthroat.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 4, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@deepthroat.com by e-mail.
A timely Response was received and determined to be complete on August 4, 2008.
An Additional Submission was received from Complainant on August 19, 2008. The Additional Submission is deficient with respect to Supplemental Rule 7, which requires such a submission to be delivered within 5 calendar days of the Response, and thus will not be considered by the Panel. In response to the aforesaid Additional Submission, Respondent sent the National Arbitration Forum another Additional Submission on August 23, 2008. The Panel will not consider this latter submission, as it is responding to claims not considered by the Panel in the former additional submission.
On
August 15, 2008, pursuant to Respondent’s request to have the dispute decided
by a three-member Panel, the
National Arbitration Forum appointed James A. Carmody, Debrett Lyons and Dennis A. Foster as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- The pornographic motion picture, “Deep Throat,” premiered in June 1972, and went on to earn somewhere between $100 Million and $600 Million in revenues worldwide. The success of the original caused a series of sequels to be produced, the first in 1974.
- The original movie was the subject of documentaries and general discussion for decades after its release. It became a cultural phenomenon, such that, especially in light of the numerous sequels, anyone associated with the field of adult entertainment would be aware of the strong brand name. Indeed, anyone in the civilized world has at least heard of “Deep Throat.”
- Complainant is the successor-in-interest to all rights in the motion pictures, including the common law trademark DEEP THROAT. Complainant also owns United States Patent and Trademark Office (the “USPTO”) registrations for the mark. Complainant’s predecessor-in-interest used the trademark continuously and consistently since at least 1974, and Complainant has used the mark continuously and consistently in association with adult entertainment products since1995.
- Complainant has spent in excess of $500,000 to market and advertise products associated with its mark, including the release of a remake and new series entitled, “Deep Throat: The Quest.” Since 1996, products bearing the DEEP THROAT mark have generated wholesale revenues of $1.18 Million. Product video units so marked retail from $29.95 to $59.95, far in excess of the average adult offering, which sells for between $10 and $12 per unit.
- Complainant’s products are distributed throughout the world, and are downloaded on a video-on-demand basis (licensing fees in excess of $3,000 per month) and through Internet websites, including at Complainant’s own domain name. Complainant has also attended trade shows in which various paraphernalia bearing Complainant’s mark is circulated. Moreover, Complainant has licensing arrangements for ancillary products such as an energy drink, shot glasses, clothing, clocks, wall art, etc.
- The disputed domain name, <deepthroat.com>, is identical to Complainant’s trademark.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent uses the name to host a website that directs Internet users to a wide variety of adult entertainment products and services that are similar to Complainant’s goods, a use that does not constitute a bona fide offering of services or goods. Respondent is not commonly, or otherwise, known by the disputed domain name. As the name is used for commercial gain, Respondent is not making noncommercial or fair use of the same.
- Respondent registered and is using the disputed domain name in bad faith. The name was registered after Complainant’s trademark became well known around the world. Respondent attempted to rent the name to Complainant as evidenced by an e-mail solicitation from an entity called “Net Play Media.” That same entity may be directly related to Respondent who, in any event, has used deception in its registration information connected with the disputed domain name.
- Respondent’s registration of the disputed domain name has prevented Complainant from reflecting its mark in a corresponding domain name – Complainant having been forced to utilize the domain name, <xxxdeepthroat.com>, a name not as valuable as the disputed domain name. Finally, Respondent is using the name to attract, for its commercial gain, Internet users to Respondent’s website based on confusion with Complainant’s mark as to affiliation or sponsorship.
B. Respondent
- Pending trademark applications do not validate a claim to trademark rights.
- The motion picture, “Deep Throat,” did attract considerable social attention nearly 40 years ago, but a title is not a trademark and that particular term is not exclusive to Complainant. Complainant’s USPTO trademark registrations might allege use of its mark since 1972, but a movie title does not function necessarily as a trademark.
- Complainant does not produce most of the goods or services listed under its trademark registrations, and only recently started selling some of them well after registration of the disputed domain name. A trademark registration should not be considered by the Panel to grant conclusively rights in that trademark to a complainant.
- “Deep throat” is a reference to an act, and not simply a movie title. Many novel or movie titles (e.g., Catch-22, Lolita and Manchurian Candidate) have become part of English vocabulary without conferring trademark status for their creators.
- There is widespread use of domain names owned by third parties that incorporate the phrase “deep throat” (i.e., <deepthroatpalace.com>, <deepthroatlove.com.>, etc.), and are connected to websites involving explicit adult entertainment.
- “Deep Throat” has become a particular category of pornographic motion pictures, and many third parties use the term as part of titles for such movies without infringing on Complainant’s rights.
- Respondent has a legitimate interest in the disputed domain name because it is using the name in a bona fide offering of products which are germane to the connotation given the simple term “deep throat.” The term is “famous” not as a mark owned by Complainant, but as a generic term defining a specific sexual act involving the human throat.
- The issue of bad faith under the Policy is one of intent, and Respondent did not intend to violate Complainant’s rights when Respondent registered the disputed domain name. The name was originally registered in 1997, and Respondent bought it, along with many other generic domain names relating to explicit adult entertainment in the same sale, to provide links to such entertainment products. Respondent had no knowledge of Complainant or its claimed rights in the disputed domain name.
- The term “Deep Throat” has also been used in other contexts, most famously as a code name for an informant in the so-called Watergate Scandal.
FINDINGS
The full-length
pornographic motion picture, “Deep Throat,” was released by Complainant’s
predecessor-in-interest in 1972, and became well-known throughout the
world. Complainant, a
The record of registration of the disputed domain name <deepthroat.com> was created on May 21, 1997. Respondent purchased the name as part of a sale that included more than 150 other domain names referring to explicit adult entertainment including at times specific sexual acts, in December 2005. Respondent uses the disputed domain name for its website that hosts links to third party websites offering adult entertainment material and/or products.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant has presented the Panel with undisputed evidence (see Annex 1) that it owns a valid USPTO registration for the trademark, DEEP THROAT. The Panel finds such evidence to be conclusive for purposes of establishing Complainant’s rights in the mark. See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”); and Spencer Douglass, MGA v. Bail Yes Bonding, D2004-0261 (WIPO June 1, 2004). Respondent contends Complainant’s trademark rights should be invalid in the context of paragraph 4(a)(i) of the Policy, because the registration of said mark in 2005 followed the registration of the disputed domain name in 1997. However, the Panel accepts the consensus view of prior UDRP panels that such a consideration is irrelevant with respect to that paragraph. See for example, Inmate Connections LLC v. Bad Boy Networks c/o Dave Carlin, FA 1177352 (Nat. Arb. Forum May 27, 2008); Javacool Software Development, L.L.C. v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum January 2, 2007); and AB Svenska Spel v. Andrey Zacharov, D2003-0527 (WIPO October 2, 2003) (“…Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name.”).
Detecting the identity or confusing similarity between the disputed domain name <deepthroat.com> and the mark DEEP THROAT requires a mere cursory examination. The only alterations are the lack of capitalization, the elimination of the space between the two words, and the addition of the g.TLD, “.com.” The Panel determines that these trivial distinctions do not prevent a finding of confusing similarity, if not identity, between the name and the mark. See Diesel v. LMN a/k/a L. M. Nordell, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); and Celebration Shoes Ltd. v Bridal Shoe Path, D2001-1123 (WIPO Nov. 8, 2001) (where the panel found <celebrationshoes.com> to be identical to the trademark, CELEBRATION SHOES).
Accordingly, the Panel finds that Complainant has succeeded in proving that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The Policy places the burden upon Complainant to establish that Respondent has no rights or legitimate interests in the domain at issue However, numerous prior UDRP decisions have held that a complainant need only make a prima facie case in its favor, after which the burden falls upon the respondent to demonstrate such rights or legitimate interests. See for example AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006); and Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
By confirming its trademark rights and asserting, without rebuttal, that Respondent is not commonly known by the domain name in dispute, Complainant clears easily its prima facie case hurdle, and shifts the burden to go forward to Respondent in this case.
Policy paragraph 4(c) sets forth three discrete ways in which Respondent might counter Complainant’s prima facie case. As noted above, Respondent has declined to invoke the criterion cited in paragraph 4(c)(ii), i.e., that it is commonly known as the disputed domain name. Moreover, since Respondent admits that the name is used for its website that directs Internet users to other third party commercial websites, Respondent cannot claim that its activities fall within the ambit of “noncommercial or fair use” per paragraph 4(c)(iii). Instead, Respondent contends that, through its website as connected with the disputed domain name, it is making a “bona fide offering of goods and services” in compliance with paragraph 4(c)(i).
In support of its argument, Respondent highlights the generic nature of Complainant’s trademark. The Panel agrees that “deep” and “throat” are common descriptive English words. The Panel will concede also that Respondent is persuasive in asserting that the word combination “deep throat” has developed a second meaning in that it connotes a specific sexual act involving the human throat. Moreover, prior Policy panels have found that a respondent can have rights or legitimate interests in domain names that are composed of common descriptive or generic words, even if those names correspond to a valid trademark or service mark. See for example HSBC Finance Corp. v. Clear Blue Sky Inc. & Domain Manager, D2007-0062 (WIPO June 4, 2007); National Trust for Historic Preservation v. Preston, D2005-0424 (WIPO Aug. 10, 2005); and Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., D2004-0843 (WIPO Dec. 14, 2004).
However, what legitimizes rights or interests in such domain names is that they be used for the purposes described by the common term. As stated by the learned panel in HSBC Finance, supra: “Where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest.”
In this case, Respondent uses the disputed domain name to direct Internet users to goods or services that relate neither “deeply to the throat” (i.e., per the simple definition of the words) nor to the specific sexual act that Respondent asserts is the common connotation given to the words “deep throat.” Instead, Respondent’s website offers Internet users links to websites offering general pornographic materials – materials that compete directly with those marketed by Complainant. Ergo, Respondent fails the test suggested in HSBC Finance, supra.
As such, in line with many prior UDRP rulings, the Panel does not find Respondent’s use of the disputed domain name to be a bona fide offering of goods or services. See Option One Mortgage Corp. v. Option One Lending, D2004-1052 (WIPO Feb. 27, 2005) (“Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy.”) and Reed Elsevier Inc. & Reed Elsevier Properties Inc. v. Alvarez, FA 98249 (Nat. Arb. Forum Aug. 20, 2001).
Therefore, Respondent has failed to rebut Complainant’s prima facie case.
In view of the foregoing, the Panel rules that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires that Complainant show that the disputed domain was registered and is being used in bad faith. Both parties agree that the name was originally registered by a third party in 1997, and that Complainant did not obtain its USPTO trademark registration for DEEP TROAT until September 2005. As a result, the Panel is not persuaded that said third party was necessarily aware of Complainant’s rights in the mark – if they existed at all – at the time of domain name registration.
The Panel accepts Complainant’s contention that the motion picture title, “Deep Throat,” has been well known, even famous (or infamous), throughout the world for approximately 35 years. However, motion picture titles are seldom connected in the public mind with the producers or even directors of those movies. This seems to be particularly true of pornographic motion pictures. Certainly, the public may associate some general audience movies with their creators: “Snow White and the Seven Dwarfs,” “Bambi” and “Fantasia” are associated with The Walt Disney Company; and “Star Wars” with George Lucas. But, it is the opinion of the Panel, that throughout its long and infamous history, “Deep Throat,” like virtually every other pornographic motion picture, has never been associated exclusively with any particular production entity, including Complainant or Complainant’s predecessor-in-interest.
Given that the Panel finds that there was no exclusive association between “Deep Throat,” as a movie title or trademark and Complainant in 1997, the Panel is convinced that Respondent’s predecessor-in-interest most likely registered the name in good faith.
Some prior UDRP rulings conclude that once a domain is registered in good faith, its renewal necessarily remains in good faith. See GOL TV, Inc. v. Onyx Domain Solutions, FA 944251 (Nat. Arb. Forum May 14, 2007); Sonic-Calabasas V, Inc. v. Jerry, FA 587435 (Nat. Arb. Forum Dec. 15, 2005); and Substance Abuse Mgmt., Inc. v. Screen Actors Modesl [sic] Int’l, Inc. (SAMI), D2001-0782 (WIPO Aug. 14, 2001) (“If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith.”).
However, other panels have opined that a transfer of a domain name, initially registered in good faith, to a third party may constitute another registration per the Policy, and that registration might be found to be in bad faith depending on the conduct of the transferee. See HSBC Finance, supra (“…the benefit of an original good faith registration does not cloak a subsequent purchaser of a domain name…”); and Food Express, Inc. v. Nashville Boot Co., FA 852588 (Nat. Arb. Forum Jan. 29, 2007) (“If, however, the renewal of the registration were effected by a new party, it is appropriate to look at the actual state of knowledge of that party to determine if it was taking on the role of domain name holder in good or bad faith.”)
Accepting that latter line of reasoning, the Panel will examine the evidence in this case as to the actual knowledge of Respondent when it acquired the disputed domain name. The record is clear that Respondent obtained the name as part of a large sale of domain names that culminated about December 2005. All of the other more than 150 domain names so acquired are composed of generic or descriptive words that describe or suggest explicit adult entertainment, including, in some instances, specific sexual acts. The Panel believes that Respondent’s motivation in buying the names was to link them to third-party adult entertainment websites. The disputed domain name does not stand out in the list of domain names. Certainly, Respondent knew of the famous movie by that name, but, as noted above, probably would not have associated it exclusively with any owner.
Complainant’s registration of its DEEP TROAT trademark was completed in September 2005. While this was before consummation of Respondent’s deal for the domain names, the Panel cannot determine from the record the length of negotiations preceding execution of the agreement. However, given the magnitude of the arrangement (the sale price was approximately $5 Million), it is not unreasonable to believe that Respondent might have researched the domain names for possible trademark infringement before September 2005. At this point, it is germane to recall that the burden of proof on this issue lies with Complainant. Therefore, given the short time between Complainant’s USPTO registration of it mark and the formal date of Respondent’s acquisition of the disputed domain name, the Panel cannot conclude that the Respondent knew, or should have known, of the USPTO registration and thus registered the name in bad faith.
In accusing Respondent of bad faith, Complainant has invoked the bad faith circumstances set forth in paragraph 4(b), by asserting that: Respondent attempted to rent (surreptitiously) the disputed domain name to Complainant for far more than normal registration costs (paragraph 4(b)(i); Respondent has prevented Complainant from reflecting its mark in a corresponding domain name (paragraph 4(b)(ii); and Respondent intentionally attempted to attract, for commercial gain, internet users to its website through the likelihood of confusion with Complainant’s mark as to affiliation with that website (paragraph 4(b)(iv)). Even assuming arguendo that Complainant makes out a compelling case of bad faith use of the disputed domain name on these grounds, this does not overcome the weakness, as noted above, in its case that the name was registered in bad faith.
For all the reasons stated above, the majority of the Panel finds that Complainant has not sustained its burden to show that the disputed domain name was registered and is being used in bad faith.
DISSENTING DISCUSSION
Mr. Lyons dissented from his fellow Panelists and finds for Complainant for the following reasons.
The Panelist is in
accord with the Paragraph 4(a)(i) analysis above however Panelist would on the
facts also find Complainant to have well established common law rights in the
trademark DEEP THROAT from at least as early as 1997 when the domain name was
first registered. The Panelist
additionally finds those common law rights to be undisturbed at the later time
when Respondent acquired the disputed domain name. See
McCarthy
on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common law trademark or service
mark rights will suffice” to support a domain name complaint under the Policy);
see also SeekAmerica Networks Inc.
v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also Zee TV
USA, Inc. v. Siddiqi, FA
721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant
need not own a valid trademark registration for the ZEE CINEMA mark in order to
demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC
v. calcuttawebdevelopers.com,
FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does
not require a trademark registration if a complainant can establish common law
rights in its mark).
Respondent challenged the claim to common law rights on the bases that (i) the words “deep throat” had passed into the public vernacular, and (ii) the title of a motion-picture film, no matter how well known, did not equate with trademark rights. More will be said of those arguments in connection with the “bad faith” aspect of the Policy.
No dissent.
As stated above, Complainant must establish that Respondent both registered and used the disputed domain name in bad faith. The Panelist wishes to make explicit here his finding that use of the domain name has been in bad faith and to express open dissent from his fellow Panelists in relation to their finding that the domain name was not registered in bad faith.
The Panel majority made the following findings:
(a) whilst Respondent knew of the famous movie by that name, it probably would not have associated it exclusively with any owner;
(b) given the short time between Complainant’s USPTO registration of its mark and the formal date of Respondent’s acquisition of the disputed domain name, the Panel cannot conclude that the Respondent knew, or should have known, of the USPTO registration.
With respect, this Panelist does not regard either of those matters as critical.
Respondent’s assertions are that:
(i) the issue of bad faith under the Policy is one of intent;
(ii) Respondent did not intend to violate Complainant’s rights when Respondent registered the disputed domain name (Respondent bought the domain name, along with many other generic domain names relating to explicit adult entertainment in the same sale, to provide links to such entertainment products);
(iii) Respondent had no knowledge of Complainant or its rights when it registered the domain name
This Panelist is not persuaded by any of those claims.
As a general rule,
panelists have insisted on proof of actual knowledge of a complainant’s trademark
rights. There are cases under the Policy
involving very well‑known marks where panelists have seemingly imputed a
respondent with knowledge of the mark but the better understanding of those
cases is that the panels have in fact applied a test of actual knowledge which,
based on the balance of probability, so overwhelming favoured the complainant
that it merely appears as if their decisions rest on constructive knowledge of
the complainant’s rights. The Policy does not require physical proof of
registration in bad faith. If it did,
the Policy would be largely unworkable.
Instead, a Panel must make a decision based on the civil standard of the
balance of probabilities, taking into account all the evidence.
Respondent maintains that there is no
evidence that Respondent had knowledge of Complainant when the disputed domain
name was registered and that for this reason alone the Compliant must fail. Complainant claims that “Respondent would
have to have been in a coma since 1972 to not be aware of the notoriety and
controversies surrounding products associated with the DEEP THROAT trademark.”
Note that it is not knowledge of a specific complainant or trademark owner that is required; it is knowledge of the trademark rights. Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark at the time Respondent registered the disputed domain name in its name. On the weight of the evidence, this Panelist agrees. Putting aside all other facts, it is unrealistic for Respondent to argue that a movie which by all accounts has over the years generated between $100 Million and $600 Million in revenue worldwide does not carry with it underlying trademark rights.
Moreover, this Panelist has little trouble with the notion that a motion picture title can also perform a trademark function. Complainant’s registered marks show that neither does the USPTO in this instance. It has clearly been used in a trademark sense for a very long time and if there had been serious ambivalence surrounding ownership of the trademark or its ability to perform as a trademark, the USPTO would have been unlikely to accept it for registration.
This Panelist has no hesitation in finding that the disputed domain name was registered in bad faith. Were the Panelist to have erred in reaching that conclusion for the reasons given, the Panelist finds it instructive to turn to the wording of the Policy.
Paragraph 4(b) of the Policy sets out
the circumstances which shall be evidence of the registration or use of
a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have
acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of your documented out‑of‑pocket
costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner
of the trademark or service mark from reflecting the mark in a corresponding
domain name; or
(iii) you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet users to your website or other on‑line location, by creating a
likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation, or endorsement of your website or location or of a
product or service on your website or location.
What is noteworthy about Paragraph 4(b) is that all four bad faith examples there described are cases of both registration and use in bad faith. Paragraph 4(b)(iv) stands alone from its three companion examples in its focus on bad faith use, as contrasted with bad faith registration. This Panelist finds that Respondent’s conduct falls squarely with paragraph 4(b)(iv) for the following reasons. First, bad faith use is already found. Secondly, use for commercial gain is common ground. Thirdly, in Paule Ka v. Korenek, D2003‑0453 (WIPO July 24, 2003) the panel held that the reference to the registrant’s intention in paragraph 4(b)(iv) of the Policy should be regarded as importing an objective, rather than a subjective, test:
… how is the ‘intentional’ element required under paragraph 4(b)(iv)
to be defined? The Panel is guided in
its consideration of the issue by the fact that a subjective test of intent
(thus considered more or less as a mens rea element) would be difficult
if not impossible to apply given that credibility must be assessed only on the
basis of documentary evidence. It is
difficult to enter the minds of the parties to determine their subjective
intent.
The proper test in this Panel’s view is whether the objective
consequence or effect of the Respondent’s conduct is to free ride on the
Complainant’s goodwill, whether or not that was the primary (subjective) intent
of the Respondent.
Further, it was said in the case of Admiral Insurance Services Ltd. v. Dicker,
D2005‑0241 (WIPO June 4, 2005):
The Panel’s finding that the Respondent was unaware of the Complainant
or its mark when he acquired the domain name is fatal to any finding of bad
faith under any of sub‑paragraphs 4(b)(i)‑(iii) of the Policy.
A finding of bad faith registration may nevertheless be made where bad
faith use within 4(b)(iv) is the only evidence tending to show the purpose for
which a domain name was registered. …
See Passion Group Inc. v.Usearch, Inc., eResolution Case No. AF‑0250;
Viz Communications, Inc., v. Redsun dba
www.animerica.com and David Penava, WIPO Case No. D2000‑0905, and
Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004‑1085.
That interpretation of
paragraph 4(b)(iv) of the Policy has been supported in a number of later
decisions : See FabJob Inc. v. Compana LLC, D2006‑0610 (WIPO Aug. 16, 2006); Sanofi-Aventis, Aventis Pharma SA &
Aventis Pharma Deutchland GmbH v. 1N4 Web Services, D2005-0938 (WIPO Nov.
24, 2005).
This Panelist therefore finds, not only
evidence of bad faith registration on the facts, but an inevitable conclusion
of bad faith use and registration based
on this reading of the Policy. This Panelist accordingly finds that Complainant has established the third and final
element required to be shown.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the majority of the Panel concludes that relief shall be DENIED.
Dennis A. Foster, Chair
James A. Carmody, Panelist Debrett
Lyons, Panelist
Dated: September 4, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum