In a case decided August 2nd by Sole Panelist, Christopher S. Gibson, in the case of Puget Sound Software, LLC v. A. Rahman, found at http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0944, it was decided that even though the Respondent was trading on the Complainant’s trademark, there could be no “bad faith” at the time of registration of the domain name which preceded the trademark.
“Complainant has provided the trademark registration document for its ASK LEO! mark registered in the United States. Registration for this mark postdates the Domain Name registration; however, Paragraph 4(a)(i) does not require that Complainant’s trademark be registered prior to the Domain Name, although this may be relevant to the assessment of bad faith.”
What is really interesting about this case is that Respondent is using common words and claims a right to do so.
“Respondent counters that it registered the Domain Name to describe the service that would be offered under it, namely, the “ask and answer” service for career development purposes. Respondent also asserts that it has made demonstrable preparations to operate a legitimate business that uses the “ask Leo” term. Respondent registered the Domain Name on August 7, 2001 without notice of Complainant’s trademark rights and without notice of Complainant’s domain name and website. Respondent thus has priority in right to use this generic phrase in the Domain Name. Respondent contends that it is using the term, “ask Leo,” consistent with its literal meaning. The simple fact that Respondent has not yet been able to devote the time and resources to develop its Domain Name and associated website does not imply that Respondent does not have rights or legitimate interests in it. Further, Respondent has displayed contextual advertisements on its website related to question and answer-related services, which should be sufficient in themselves to establish that Respondent has rights or legitimate interests in the Domain Name.”
In spite of all this, the Panelist finds “that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest to the Domain Name, which has not been answered by Respondent.”
However, he does a 360 on “Bad Faith” as follows:
“Here, the Panel considers that there is evidence of bad faith use of the Domain Name, as Respondent is using it for a parking page that diverts and profits from the traffic of web searchers intending to locate Complainant’s legitimate website. Moreover, the Panel considers Respondent’s counter-offer of USD 10,000 for selling the Domain Name to be exorbitant and far in excess of any out-of-pocket costs.”
But then he states: ” However, even if the evidence points toward a degree of bad faith use, there is insufficient evidence of bad faith registration of the Domain Name. The Panel finds that despite Respondent’s disingenuous explanations for how it has been planning to use the Domain Name, it is undisputed that Respondent registered the Domain Name in 2001 before Complainant registered its own <ask-leo.com> domain name in 2003 and before Complainant acquired any common law or registered trademark rights in its ASK LEO! mark. Complainant contends that the relevant time for considering bad faith registration should be the date of renewal of the Domain Name, which took place in June 2011 after Complainant had established its trademark rights. While the Panelist believes that a domain name’s date of renewal might, in an appropriate case, be relevant for purposes of assessing the bad faith registration element under the Policy, this is not that case.”
“Here, however, the Panelist has not been provided with sufficient evidence as to the strength of Complainant’s ASK LEO! trademark from which to determine that bad faith registration can be clearly attributed to Respondent as of the date of renewal of the Domain Name’s registration. If Complainant’s trademark rights were demonstrated to be well known, a finding of targeting intent, even at the time of renewal, might be proper. However in view of all of the facts and circumstances presented in this case, the Panel determines, on balance, that the Domain Name was not registered in bad faith, even if it has been used by Respondent in a bad faith manner.
So, it all boils down to a demonstration of how famous the Complainant’s trademark is.
Thanks for “listening”
Hioward
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