National Arbitration panelist gives nuanced discussion of using a trademark term in a domain name that could be used for criticism.
Banking giant Capital One has lost a cybersquatting complaint brought against the owner of CapitalOneReviews.com, a domain name registered in October last year.
It’s a well-reasoned case that examines the use of trademarks in domain names intended to be used as gripe or review sites.
Panelist Charles A. Kuechenmeister closely examined all three prongs of the UDRP and the varying viewpoints on how it applies to sites like CapitalOneReviews.com.
Identical and/or Confusingly Similar
There are two schools of thought that apply to domain names that include derogatory terms or terms that suggest a domain name is not owned by the trademark holder.
One school is that a domain name isn’t confusingly similar if it includes a term that tells internet users that they shouldn’t expect the site to be owned by the trademark holder. So if the domain is CompanyNameSucks.com, a typical internet user will not be confused into visiting the site thinking it’s operated by the company.
The other school is that all that matters is that the domain name contains the trademark or something similar.
Kuechenmeister opted for the second school of thought, and he gave a fairly good rationale:
Finally, because the Policy requires a complainant to prove all three elements set forth in Policy ¶ 4(a) in order to prevail, a respondent could avoid transfer of its domain name in cases involving manifest bad faith and patently deceptive practices simply by crafting a domain name that clearly implies independence and separation from the trademark owner and its business, while the resolving website fails to deliver on the services represented or implied by the domain name, or is a simple bait-and-switch or other fraudulent type of operation. To use the example of the term “reviews” present in this case, a respondent could register a domain titled
for a website that offered sham reviews of that bank and then directed consumers to the services of another bank, perhaps one owned by or affiliated with the respondent itself. If a panel, applying the expanded, more restrictive standard, found that the domain name was not identical or confusingly similar to the complainant’s mark in such a case, it would not have an opportunity to address the fraudulent and deceptive practices occurring in the website under either of the other two elements articulated in subparagraphs (ii) and (iii) of Policy ¶ 4(a). The respondent would have prevailed on the Policy ¶ 4(a)(i) element, and the case would be over. This would result in manifest injustice and frustrate the purposes for which the Policy was developed.
Note that Kuechenmeister did consider this issue in the third prong.
Rights or Legitimate Interests
The respondent in this case primarily argued rights or legitimate interests based on nominative fair use. Here, he had a Catch-22.
On the one hand, he argued that the case was brought only a couple of months after he registered the domain name so he hasn’t had time to develop it yet. On the other hand, since he hasn’t had time to develop it yet and show how he will use the domain, it’s difficult to show rights or legitimate interests. Kuechenmeister explained the issue and decided in Capital One’s favor on the second prong:
In this case, the Respondent presently has no active website associated with the Domain Name. He points out that he registered the Domain Name only a couple of months before Complainant filed this proceeding, and the WHOIS information contained on Exhibit B to the Complaint corroborates this, showing a creation date of October 2, 2016. This probably is not sufficient time within which to develop his planned reviews website. He may have made demonstrable preparations to use the Domain Name for this purpose but as Complainant points out he failed to submit any real evidence of this, and all the Panel has at this point is his unsupported statement that he plans to use the Domain Name for a website on which reviews of Complainant’s products and services may be posted and read. He offers no details about how or even whether he intends to use the website to generate revenues. This shortcoming is problematic but not material, however, because without an actual website in place it is impossible for the Panel to determine whether the requirements articulated in [Nominative Fair Use case examples] are (or will be) met. He certainly is not presently offering the services promised by the Domain Name, and there is no way to determine whether the site will offer genuine reviews of Complainant’s products and services or something altogether different, such as a bait-and-switch program whose primary purpose is to direct consumers to other providers of banking and/or financial services. Respondent’s temporary website has a prominent disclaimer and link to the Complainant’s website, and Respondent has registered only the Domain Name at issue in this case, so there is no evidence that he would attempt to “corner the market” as described in Oki Data. Nevertheless, without an actual website in operation, it is impossible for him to demonstrate that his website, when completed, will meet the requirements for a successful nominative fair use defense.
Registration and Use in Bad Faith
OK, so the respondent can’t show rights in the domain name yet because he hasn’t launched the site. But how can Capital One show registration in bad faith after just a couple months with the site not being launched yet?
As to Complainant’s first argument, that the resolving website is not currently active, Respondent registered the Domain Name on October 2, 2016, less than 60 days before Complainant initiated this proceeding…Respondent explains that although the Domain Name resolved to a page that stated “Under Development” when the Complaint was filed, he has since caused it to point to his new easywayreviews.com website, which he says is still under construction and “progress is being made.” He furnished a screenshot of that website which corroborates his statement that work is being done…He further explains his decision to register the Domain Name before the website would be operational as motivated by his desire to avoid investing the time and expense to develop the website only to discover when it was finished that the name was no longer available. Complainant cited a number of cases in which the panels have held that simply registering and keeping a domain without an active website is evidence of bad faith, but in this case the period of inactivity is very short. Respondent has made credible representations and has furnished documentary evidence in the form of his Exhibit A screenshot that he not only intends to create a functioning website but is actively working on it. The Panel understands and agrees that a respondent who registers and holds a domain name for an extended period of time without making any use of it can be guilty of bad faith but two months is not long enough for the inactivity to evidence bad faith registration and use. The facts of this case do not support a finding of bad faith registration and use based upon the mere absence of an active website at this time.
Kuechenmeister also noted:
The term “review” by its very nature implies independence and distance from the object of the review. Moreover, the services offered on a reviews website are wholly distinct from those offered by the vendor being reviewed. Internet users seeking to contact Complainant would not be attracted to Respondent’s reviews website because it would not be expected to be owned or operated by Complainant and would not normally enable the user to contact Complainant. While the Domain Name clearly indicates that the resolving website would be about Complainant, it also indicates that it is not owned, sponsored or endorsed by Complainant. There is no evidence of any intent on Respondent’s part to lure consumers to his website under the impression that it is Complainant’s site.
Capital One also pointed to the respondent’s registration using whois privacy, and Kuechenmeister shot down the idea that this is evidence of bad faith.
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