MOTIVATION AND INTENTION IN UDRP ACTIONS

IVAN HOFFMAN, B.A., J.D.


        Under the Uniform Domain Name Dispute Resolution Policy (UDRP), a Complainant has the burden of demonstrating, among other elements, that a domain is “confusingly similar” to a trademark in which the Complainant has rights.  Then the Complainant must further prove that the domain name registrant (Respondent) acted in “bad faith” in the registration and use of the domain. (Read “Burden of Proof in UDRP Actions.”)

        The standards for proof as to these 2 elements are different and how cases speak to these issues is often unclear.  Let me explore 1 recent case in this regard.  There are many others cases and like all good things in the law, the outcome often depends primarily on the facts in each instance.

Bunsandnoble.com

        The Complainant was the famous bookseller with rights in the registered trademark “Barnes & Noble.”  The Respondent was using the indicated domain for a site selling “hard core sexual content and merchandise”  (another phrase with somewhat unclear meaning…but that is another story.  Read “Dirty Pictures.”).  Such use by the Respondent predated any notice of the dispute.  The Complainant said that the domain was confusingly similar to their trademark and was being used in bad faith and in such a way that diluted their rights in their mark, among other claims.   The Respondent did not file a response to the complaint.

        Paragraph 4 a of the UDRP states in part as follows:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
        The Panel decided that the domain was confusingly similar to the trademark of the Complainant because it was “similar in sound.”  “Bunsandnoble” was confusingly similar to “Barnes & Noble.”  Maybe.  Maybe not.  Often what is or is not confusingly similar, both in offline trademark law as well as in regard to UDRP actions, is a matter of subjective judgment spoken about in objective terms.  It is often stated that the standard for determining “confusingly similar” in UDRP matters (which is somewhat different than in offline trademark cases) is whether or not the domain itself, standing alone when compared to the trademark, is confusingly similar, independent of any marketing or other use factors.  In making such a determination, the intention of the Respondent is not relevant.

        In another case, The Toronto-Dominion Bank v. Boris Karpachev, that Panel stated:

“In determining whether a Domain Name is confusingly similar to a trademark, the intention of the Domain Name registrant is irrelevant. It is the objective likelihood of confusion that must be assessed.”
        And indeed, nothing in the above cited UDRP section refers to any intention or purpose of the Respondent.  The motivation and intention of the Respondent is not relevant to the determination of confusion and similarity.  The motivation and intent of the Respondent is important in determining the bad faith elements of a UDRP action discussed below but not in determining that foundational element called “confusingly similar.”

        Under this objective test, can it be said that the domain and the mark are “confusingly similar?”  It is worthwhile remembering that the test is not merely “similar” but “confusingly similar.”  Clearly it was the intention of the Respondent to offer a word play on the trademark but it seems more of a pun than an attempt to confuse the visitor.  Similarity alone is not sufficient if there is not confusingly similar.  And exactly how similarity in sound is related to what a potential visitor types into a search engine is not clear.  Is a potential visitor to the Respondent’s site likely to have mistyped bunsandnoble instead of barnesandnoble even assuming similarity in sound?  There are cases that indicate that intentional misspelling of a trademark in a domain does not prevent a finding of confusingly similar.  They do not appear persuasive in this context.

        However, as indicated above, this is often a subjective judgment call upon which reasonable minds can differ.  You may differ with my call on this.  But my disagreement with the result of this case is not because the Panel came down in favor of finding such confusing similarity but because of the apparent reasoning that went into making that finding.

        The Panel seemed to include in its finding of “confusingly similar” issues related to the intent of the Respondent. The Panel stated in part:

Rather, given the prominence and fame of Complainant’s marks, it is more probable than not that Respondent, in registering the disputed domain name, was motivated by a desire to benefit from the widespread reputation of the BARNES & NOBLE marks. [emphasis added]
        The above language looks like it is taken from the “bad faith” standards of the UDRP, which relate to intention.  The standards set forth in paragraph 4 b. of the UDRP which relate to such bad faith speak primarily about the “purpose” or the “intention” of the registrant in registering and using the domain.  They state:
(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, provided that you have engaged in a pattern of such conduct; 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 web site 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 web site or location or of a product or service on your web site or location.

        Since there was clearly no evidence to support sections (i), (ii) or (iii), the focus appeared to be on bringing into the otherwise objective determination of “confusingly similar” the intention and motivation of the Respondent under section (iv).  Let me then repeat the citation from the case:
Rather, given the prominence and fame of Complainant’s marks, it is more probable than not that Respondent, in registering the disputed domain name, was motivated by a desire to benefit from the widespread reputation of the BARNES & NOBLE marks. [emphasis added]
        How and in what manner would the Respondent be trying to benefit from the widespread reputation of the Complainant’s marks? There were manifestly no competing goods involved.  There was no evidence of any attempt to divert traffic from the Complainant’s site.  Can it be said that a visitor would be confused by logging onto the domain that somehow they were visiting the site of the bookseller or that somehow the bookseller endorsed the site?  There is a line of cases dealing with what is called “initial confusion” (i.e. if a visitor is initially confused about source and sponsorship of a given site but is later on the page “unconfused” by disclaimers or otherwise, that does not absolve the site owner of responsibility for creating that confusion) but that line of case is also not persuasive to me in this instance.  Would any visitor be even “initially confused” by these 2 sites?  And how would that visitor even have arrived at the Respondent’s site in the first place?  I repeat: is a potential visitor to the Respondent’s site likely to have mistyped bunsandnoble instead of barnesandnoble?

        Thus, it is my sense that the Panel used its determination of the perceived motivation of the Respondent, however unlikely that motivation might have been, to objectify a determination of “confusingly similar.”

        Then the Panel proceeded to bootstrap itself into a finding that while there was a preexisting use in regard to the offering of goods for sale, it did not find a “bona fide” use.  And the reason the Panel reached this conclusion?  Because the Respondent sought to capitalize on the “prominence and fame” of the Complainant’s marks (i.e. the intention and purpose of the Respondent), this then created a lack of bona fides.  Thus, in the judgment of the Panel, the confusingly similar domain to the mark also supported a finding of lack of bona fide use.  One proof satisfied both requirements.  Again, the operative quote is important enough to repeat.  The Panel stated:

In this case, while the evidence supports a finding of a bona fide offering, it does not support a determination of a bona fide use. Rather, given the prominence and fame of Complainant’s marks, it is more probable than not that Respondent, in registering the disputed domain name, was motivated by a desire to benefit from the widespread reputation of the BARNES & NOBLE marks. That being the case, Respondent can not be found to have used the domain name in connection with a “bona fide” offering of goods or services.
        The mere proclamation that somehow the Respondent sought to “benefit” from the reputation of the mark does not make it so.  How and in what manner would the Respondent have benefited from that reputation given the manifest lack of competing goods and on a site that could not possibly be confused with the mark of the Complainants?

        But wait…there’s more.

        Under the UDRP standards, the Panel had to then find “bad faith” in the registration and use and stated, in this regard:

With respect to the issue of “bad faith” registration and use, the Panel concludes that while none of the enumerated circumstances set forth in para. 4b. of the Policy is applicable, the requisite “bad faith” exists. As noted by the majority in the First American Funds case, supra, “Although the Policy draws a clear distinction between the requirement of showing absence of legitimate right or interest in paragraph 4(a)(ii), and the showing of bad faith registration and use in paragraph 4(a)(iii), in reality it is difficult to separate the consideration of the one from the other. Absence of any right or interest on the part of Respondent may be of assistance in determining bad faith registration and use, and bad faith registration and use may be of assistance in determining the legitimacy of the claimed right or interest.” In this case, it is clear to the Panel that Respondent adopted and registered the <bunsandnoble.com> domain name in an effort to take advantage of the goodwill Complainant had built up in its BARNES & NOBLE marks. Under such circumstances, it may be determined that Respondent registered and is using the domain name in “bad faith.” [Emphasis added].
        Again, the question is how was the Respondent seeking to take advantage of Complainant’s marks?

        The meaning of the above citation?  Because there was “confusing similarity” there was also bad faith.  One proof satisfied three standards.

        Thus, what the Panel appeard to decide was that because there was “confusion” there was “bad faith” and no “bona fides” and because there was “bad faith” and no “bona fides” there was “confusion.”

Conclusion

        I am a very strong advocate of protecting and expanding upon intellectual property rights.  They are today’s means of production and as a result, a source of considerable economic power in the global economy.  I am also an equally strong advocate of free market capitalism.

        The line where the 2 principles meet continues to grow fuzzy.

© 2002 Ivan Hoffman.  All Rights Reserved.

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This article is not intended as legal advice.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  You should consult with an attorney familiar with the issues and the laws.  This article does not create any attorney client relationship.

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