PPC Links in UDRP Cases: an Overview of Recent Cases

July 31, 2024

As discussed in previous posts, the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) is a swift method for the solving of disputes concerning abusive registration of Internet domain names (cybersquatting). In order to succeed, a complainant must essentially prove that the respondent has targeted its trademark when registering the domain name.

Domain names sometime resolve to parking pages with pay-per-click (PPC) links that direct Internet users to other online locations. In such cases, according to the general practice of UDRP Panels at WIPO:

the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” section 2.9 of the WIPO Overview 3.0

General principles

Panels have applied this principle in numerous cases solved under the Policy, including in recent cases (I gave few examples in my earlier post), where panels have held that situations where the domain name resolves to a parked page consisting of PPC links to third party websites offering products or services that directly compete with the complainant’s business do not represent legitimate non-commercial or fair use, given the risk of misleading the Internet users and compete with or capitalise on the reputation and good will of the complainant’s trademark.

Recent examples include the case concerning the domain name <lanvinfragrance.com>, where the PPC links were referring to perfumes for woman and men and directed to third party websites selling competing products with those sold by the complainant under its trademark LANVIN, or the case concerning the domain name <axaseg-esp.com>, where the links pretended to lead Internet users to insurance services which were also offered by the complainant under its trademark AXA, or the case concerning the domain name <soclexo> targeting the SODEXO trademark.

The above principle was applied by panels not only in cases where the PPC links directly compete with the complainant’s business, but also in cases where the PPC links on the respondent’s website have no obvious connection with the complainant, under the circumstances of the case, especially where the complainant’s trademark is reputed.

Examples of recent cases with WIPO include the case concerning the domain name <hashkey.group>, where the panel found that the links did not appear “to be genuinely related to the dictionary meaning of “hash key””, or the case concerning the domain name <onamichelin.com>, where the panel took into account also the well-known character of the MICHELIN trademark of the complainant.

PPC links cases where complaints were denied

There are, however, situations where a complaint is denied.

(i) dictionary meaning

I discussed in an earlier post the situation where the PPC links relate to the dictionary meaning of the words comprising the disputed domain name (in that case “Smart Robotics”).

Another situation where the domain name was comprised of two dictionary terms is the recent case concerning the domain name <smartcatch.com>. The panel took into account the dictionary meaning, the fact that a simple Google search produces results in various industries, but also the fact that the domain name acquisition by the respondent predated the complainant’s first trademark application for SMARTCATCH and the creation of the complainant.

(ii) demonstrable preparations

Other situations in the recent practice of WIPO panels include cases where the respondent claims to have made demonstrable preparations to use a name corresponding to the domain name in connection with a bona fide offering of services.

As such, in the case concerning the domain name <lunaazulmx.com> the respondent claimed to have registered the domain name to create a web presence for the rental of a property called “Casa de la Luna Azul”, and not to take advantage of the trademark LUNAZUL of the complainant which it uses in the field of distillation and selling of tequila alcoholic beverages in Mexico.

The panel found that the respondent “used or made demonstrable preparations to use a name corresponding to the disputed domain name in connection with a bona fide offering of hospitality services”, and that found it “more likely that the Respondent selected the disputed domain name for its dictionary meaning, which was relevant for the Respondent’s intended purpose, than for suggesting its association with a beverage trademark”.

As regards the third element, the panel also noted that the “PPC parking was brief and did not steer users to the Complainant’s competitors nor had any references to the Complainant or its business. In these circumstances, the Panel does not find it indicative of bad faith.”

(iii) commonly known by the domain name

Another situation is where the respondent was able to prove it is commonly known by the domain name in dispute.

In a recent WIPO case, the respondent submitted that the disputed domain name <johnrizvi.com> corresponded to his personal name. The parking page at the domain name in dispute included PPC links for charities and educational courses, whereas the trademark of the complainant was registered for patent professor.

The panel found that the respondent “provided credible evidence that his legal name is “John Rizvi”. The Panel conducted additional searches and reviewed the Respondent’s Facebook page to confirm this evidence”, and under the third element the panel has held that there is no evidence of bad faith with respect to the registration and use of the domain name in dispute, noting that “[t]he disputed domain name resolves to a Registrar-generated parking page with PPC links for charities and educational courses”.

(iv) domain name investors

Other cases where panels did not conclude that the respondent’s aim when registering the domain name in dispute was to profit from or exploit the complainant’s trademark was when the evidence in the case file showed that the domain name in dispute was part of a domain name portfolio, because it followed the same naming pattern as other domain names of the respondent, which was a domain name investor (the case involving the domain name <babista.com>).

(v) combination of factors

A combination of factors was found in the case concerning the domain name <rocketship.com>. In the mentioned case, the disputed domain name resolved to a landing page that included at some point in time hyperlinks under heading such as “app development”, as well as “accounting courses” or “finance jobs”, the complainant operating in the field of web development, app development, and managing hosting services industry.

The panel took into account various factors, including the fact that the respondent has been operating a business through the disputed domain name at a date when the complainant neither “existed nor was even about to become existing”, and that the respondent “registered the disputed domain name based on its meaning as a common English dictionary word and not to target a specific trademark.”

Moreover, the panel took into account that “the disputed domain name forms part of Respondent’s consumer email business which includes hundreds of mail-related domain names, many of which are descriptive terms composed of common words combined with the terms “mail” or “post””.

The panel analysed the issue of the PPC links in depth and determined that the above finding was not, in the circumstances of the case, in contrast with the fact that the disputed domain name resolved temporarily to competing services.

Final remarks

It should be noted, however that, even if there are cases where PPC links do not necessarily prove lack of rights or legitimate interests on the respondent’s part, or registration and use in bad faith, the respondent cannot deny all responsibility for registrar default PPC landing pages.

As one panel has correctly pointed out in one of the above cases:

“[w]hile this is a common practice of many registrars, registrants remain responsible under the registration agreement to ensure that the domain name is not used in a manner that harms others, such as exploiting a trademark for third-party advertising while the registrant is merely holding onto an undeveloped domain name. See WIPO Overview 3.0, section 3.5. Registrants can avoid this risk simply by directing the domain name to a landing page with a “Coming Soon” or similar message.

The specific circumstances of the case will determine the outcome in each case.

About Me

Mihaela Maravela is an experienced international arbitration counsel, commercial arbitrator and domain name panelist. She also acts as a transactional lawyer.

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