6. As has already been stated, in order to reach a conclusion on the issue of bad faith it is necessary for the Panel to answer the questions (a) whether the Respondent register the Domain Name with the Complainant’s mark in mind and (b) whether he has then deliberately used the Domain Name to take unfair advantage of the reputation of that mark?
7. The answers to these questions are not straight forward. “Amatéři” is an ordinary Czech world that might be registered for a number of purposes. Often the way in which a domain name has been actually used after registration will provide the best insight as to the motives of the registrant. Unhelpfully, the Complainant has failed to evidence its claim that the Domain Name was used for a series of erotic links. Nevertheless, the Panel is prepared to accept the Complainant’s assertions in the Complaint to this effect. Such assertions can constitute evidence for the purposes of the policy (see for example, First SBF Holding, Inc. v. XC2 WIPO Case D2008-0409) and despite the general denials contained in the Response, they do not appear to be directed to this aspect of the Complainant’s case.
8. It does not follow from this that the Domain Name was registered with the Complainant in mind. The word Amatéři is not one that inherently must have been chosen for use in relation to erotic content because of its association with the Complainant (particularly if the links displayed were automatically chosen – see for example, Dr Angela Stevens v Azera LLC WIPO Case No. D2008-0844). Nevertheless, the Panel has reached the conclusion that it was with the Complainant in mind that the Domain Name was registered in this case.
9. First, there is the fact that the word “Amatéři“ is a Czech one, the Respondent appears to be based in the California and there is no obvious reason for the Respondent to be this word that has no obvious meaning in English. There is, for example, no claim by the Respondent that this is just one of a series of Czech words that the Respondent has decided to register for some disclosed generic purpose.
10. Second, there is the fact that the Complainant’s business under the “Amatéři” name appears to be reasonable large and to have developed some degree of reputation.
11. Third, there is the fact that the Respondent appears to have been subject to injunctions in proceedings in the United States. The Complainant argues that the Respondent should not have registered the Domain Name without the consent of the other party in those proceedings. This is unpersuasive. The reason is that even if this assertion is true, the Panel is unconvinced that any obligation that the Respondent may or may not have had to a third party is relation to the assessment of bad faith between the Respondent and Complainant (see Do The Hustle, LLC v. Monkey Media LLC, WIPO Case No. D2000-0625). Nevertheless, these injunctions are still significant. What they show that the Respondent has some familiarity with the business of the promotion of sexually explicit material on the internet, which in turn makes it more likely that the Respondent was aware of the Complainant’s business under the “Amateri” name.
12. Last, but not least, there is the Respondent’s Response itself. It is in a format which is not uncommon for responses. It involves a series of denials combined with legal argument but no real explanation of why the Domain Name was registered. There are claims by the Respondent of activity in a different business field, but the field is not identified. There is an assertion that the domain name was not registered because of its association or connection with the Complainant, but the reason for registration is not disclosed.
13. The rationale for this form of response appears to be that as it is for a complainant to prove his case, therefore it is legitimate simply to point out where he has failed to do so and raise points of law. In fact, such an approach more often than not is entirely counter-productive. Key to the assessment of bad faith is the respondent’s motives and why the respondent registered the domain name. Where a respondent puts in a response, it should be relatively easy to give that basic explanation. Any sensible respondent who considers his activities to be legitimate is likely to explain what those activities are. When a respondent does not do so, but simply denies claims and puts forward points of law, then, in the absence of any good explanation for taking that approach, the natural inference is that the respondent has something to hide. In other words, a response that takes this form is likely to end up adding to a complainant’s case on bad faith, rather than undermining it (See, for example, Credit Industriel et Commercial S.A. v. Demand Domains, Inc. WIPO Case No. D2009-1184).
14. To treat a response in this manner, does not involve any reversal of the burden of proof. It is simply a common sense assessment of the respondent’s actions, which together with all the other facts are relevant to the assessment whether on the balance of probabilities the complainant has made out his case.
15. In this case when considering all these issues in the round, the Panel has reached the conclusion that it is more likely than not that the Respondent registered the domain name with the intention of taking advantage of the goodwill that the Complainant had built up in the “Amateri” name. In the circumstances, the Complainant has made out its case on bad faith registration and use.
16. In coming to these conclusions there are a number of arguments that although advocated by the Complainant have not influenced the Panel’s conclusions on the issue of bad faith.
17. The first is the Complainant’s claims of trade mark infringement. The Panel is unconvinced that these are of any relevance to the issues in this case. The Policy and local laws as to cybersquatting and trade mark infringement are different. They do not do, and are not intended to do, the same thing. They in large part overlap and frequently a complainant who might succeed in UDRP proceedings might well have succeeded under local trademark or anti-cybersquatting law. However, as the three person panel stated in Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule de Souza, WIPO Case No. D2003-0372, “trade mark infringement and abusive registration within the meaning of paragraph 4(a)(iii) of the Policy are two different things” and “the fact that a particular set of facts may constitute trade mark infringement has of itself no bearing on whether it is an abusive registration” (see also the three person panel in Intel Corporation v. Base ltd Tihame.net WIPO Case No. D2008-1820).
18. The second is the Complainant’s contention that the Respondent obtained the Domain Name through the use of automated software. Why if correct the Complainant thinks this assists rather than hams its case is not clear. However, the basis for this assertion seems simply to be that the Domain Name was re-registered shortly after it expired. The exact dates and facts that support this claim are far from clear. It is also unclear how this automated registration is said to have taken place. Ultimately, the Panel is unable to form a view on this issue and in the absence of further evidence from the Respondent as to exactly how he acquired the domain name, the Panel is not prepared to make assumptions in either party’ favour in this respect.
19. Similarly, the Panel is not persuaded by the Respondent’s legal arguments in this case. The Respondent has cited Goldberg & Osborne v. The Advisory Board Forum, Inc. as authority for the proposition that trade mark rights are not coextensive with the rights to a domain name ownership. The Panel agrees with this proposition, but trade mark rights being coextensive with the rights to a domain name is not the basis upon which bad faith has been found in this case.
20. As to the proposition that the cases of Milwauke Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D 2002-0774 and Weber Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0197 are said to limit the authority of a panel to cases of cybersquatting, it not clear where the Respondent is going with this argument. It begs the question what is “cybersquatting” and was recognised by the majority of the panel in Aspis Liv Försäkrings AB v. Neon Network LLC D2008-0387 the meaning of that term is “hotly disputed”. One person’s “cybersquatting” may be another’s “fair use”. Therefore, arguments as to whether something is ”cybersuatting” is unlikely to be productive. They do not assist the Respondent in this case.
21. Lastly, there is the Respondent’s claim that the case of Ultrafem, Inc. v. Warren Royal, NAF Case No. 97682 is authority for the proposition that:
”[a]bsent direct proof that the domain name was registered solely for the purpose of profiting from a complainant’s trademark rights, there can be no finding of bad faith registration and use”
22. The key words here appear to be “direct proof”. The Respondent seems to be contending that only if there is evidence before the Panel that satisfies some higher test of “direct proof” can there be a finding of bad faith. As an assertion this is simply wrong. Paragraph 10 (d) of the Rules makes it clear that the Panel has a broad discretion to determine the admissibility, relevance, materiality and weight of any evidence. Further, it has also long been clear that a complainant is simply required to show its case “on the preponderance of the evidence” or “on the balance of probabilities”.
23. Contrary to what the Respondent contends, the short decision in Ultrafem, Inc. v. Warren Royal, NAF Case No. 97682, does not provide any authority for the proposition that “direct proof” is required. Indeed, it is curious that although many respondents have sought to put forward this sort of argument in the past sometimes using identical phraselogy (see for example, Primedia Speciality Group Inc. v John Zuccarini WIPO Case No. D2002-1017) it has seldom met with any success. For example,in Yara International v. Undefined, Domain Admin, Mrs. Jello LLC WIPO Case No DTV2008-0015 the proposition was directly dismissed as “overly simplistic”.
24 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
|