Our client, AbdulBasit Makrani, succeeded in defending his registration of PrintFactory.com. He had it parked after registering it late last year. Due to the generic use of the definitive words “Print” and “Factory”, the Panel was properly under the opinion that having links to the generic meaning of the words was sufficient to establish a legitimate business use, thereby defeating the claim. Here is the abridged opinion of case #D2017-1679 at WIPO.INT.
“B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that the respondent lacks rights or legitimate interests. If the complainant does establish a prima facie case, the burden of production shifts to the respondent. See, e.g., WIPO Overview 3.0, section 2.1.
The Complainant considers that the Respondent aims at selling the Disputed Domain Name and that the Respondent is only parking the Disputed Domain Name on a page comprising PPC links to websites that are in competition with the Complainant’s activities. In response, the Respondent submits that the Disputed Domain Name refers to PPC advertising relating to the dictionary meaning of the words “print factory” only. The Respondent considers such use a legitimate business use.
Under paragraph 4(c)(i) of the Policy, the Respondent will have rights to or legitimate interests in the Disputed Domain Name if, before any notice of the dispute, he had used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
Using a domain name to host a page comprising PPC links surely constitutes a very minimal use of the domain name. Nevertheless, panels have recognised that “the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.” (See WIPO Overview 3.0, section 2.9).
In the case at hand, there is no evidence that the Respondent is trying to trade off the Complainant’s (or any of its competitors’) trademarks. The PPC links on the website associated with the Disputed Domain Name appear to be genuinely related to the dictionary meaning of the words comprising the Disputed Domain Name. The PPC links are not related to the goods for which the Complainant has registered trademark rights.
The Panel therefore concludes that, on the basis of the evidentiary record in this proceeding, the Complainant has failed to prove the absence of rights or legitimate interests on the part of the Respondent.
Accordingly, the Complainant has not established the second requirement under the Policy and the Complaint must be dismissed.”
The Panel consisted of Flip Jan Claude Petillion, Presiding Panelist, Gregor Vos and Tony Willoughby.
Thank you AbdulBasit for allowing me to represent you in this matter.
Howard Neu, Esq.
The Neu Facebook