In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the Arbitration and Mediation Center of the World Intellectual Property Organisation (WIPO), a panel has declined the request of the complainant for the transfer of a domain name that was used to host a website that linked advertisements to websites that offered competing and/or similar products as those of the complainant. It held that the links were related to the dictionary meaning of the words comprising the disputed domain name, “smart robotics”.
Background
The complaint was filed by Smart Robotics B.V., a company engaged in the field of robotics and automation since 2015. The respondent was Mary Anne Wehland, from the United States of America.
The domain name in dispute <smart-robotics.com> was registered in 2009. It was connected to a parking page featuring advertising links (PPC) labelled “Robot Kits”, “Robotic Process Automation Microsoft”, “I Robot Vacuums”, “Robotics”, and “Robotics Engineering”, all of which appeared to lead to sites matching those labels.
The complainant argued that the domain name in dispute was confusingly similar to its figurative trademark SMART ROBOTICS MASTERS IN FLEXIBLE AUTOMATION, and that the respondent had registered the domain name with knowledge of the complainant’s trademark and with intent to derive commercial benefit on the back of the complainant’s reputation and goodwill as the website at the domain name in dispute only contains sponsored links.
The respondent submitted no reply in this case.
Decision
The panel denied the complainant’s request for the transfer of the domain name in dispute. It ruled that the complainant failed to satisfy the panel (i) that the respondent has no rights or legitimate interests in respect of the domain name and (ii) that the domain name has been registered and is being used in bad faith. The complainant failed under the second and the third element of the UDRP Policy.
With respect to the second element of the Policy, the panel has held that in this case the use of the disputed domain name to host a page comprising PPC links is legitimate as (i) the complainant’s trademark has a meaning and the predominant element of that trademark, the expression “Smart Robotics”, has been in use since at least 2009 when the domain name in dispute was registered, (ii) the domain name in dispute is not substantially identical to the complainant’s trademark, and the complainant has not attempted to prove unregistered rights over “Smart Robotics”, (iii) the sponsored links all appear to lead to websites concerned with smart robotics.
As regards the third element of the Policy, the panel has held inter alia that the complainant has failed to prove that the respondent was targeting the complainant, as even if the PPC links on the respondent’s parking page are directed to businesses engaged in “smart robotics”, “unless the complainant has a monopoly over that expression, as to which there is no evidence, the respondent’s behaviour is in this context unobjectionable.”
Comment
The decision is in line with Policy precedent in cases involving PPC links both in what concerns the second and the third element.
The Second Element
Regarding the second element of the Policy, it requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name in dispute.
In cases where the domain name in dispute resolves to parking pages with PPC links that direct Internet users to other online locations, section 2.9 of the WIPO Overview 3.0 holds that:
“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.”
Panels have applied this principle in numerous cases solved under the Policy, in recent cases as well. Panels have held that cases 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. The reason is the risk of misleading the Internet users and compete with or capitalise on the reputation and good will of the complainant’s trademark (e.g. the decisions in the WIPO cases no. D2021-1996 concerning the domain name <zalopay.com>, no. D2021-2275 concerning the domain name <whatsappbusiness.com>, no. D2021-1923 concerning the domain name <medstarpatientkeeper.com>, no, D2021-2121 concerning the domain name <marlboromhq.com>).
Panels consider the above conclusion applicable irrespective of whether the PPC links operate for the commercial gain of the respondent (if he is paid to direct traffic to the linked websites), or the commercial gain of the operators of those linked websites, or both. Neither situation was considered to represent a legitimate noncommercial or fair use of the domain names (e.g. the decision in the WIPO case no. D2021-2026 concerning the domain names <geicor.com> and <mygeico.co>).
This remains true even if the content is automatically created, as the respondent is ultimately responsible for the content displayed on its domain name. In the absence of steps to suppress the content, the use of the disputed domain name to direct to PPC links parking page which directly target the complainant’s line of business could not confer rights or legitimate interests upon the respondent.
Recent applications of this principle can be found in the decisions in the WIPO cases no. D2021-2337 concerning inter alia the domain name <mademichelinstrong.co>, or no. D2021-2036, concerning the domain name <g4s.club>, where the panel also ruled on the role of a disclaimer on the website at the disputed domain name and held that:
“a respondent cannot rely on such a self-serving disclaimer to escape liability under the Policy in the absence of demonstrated possible steps to prevent the display of PPC links to competing services”.
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 case where the PPC links on the respondent’s website have no obvious connection with the complainant. This is more so where the complainant’s trademark is reputed.
In such cases the panels consider that the distinctive character and reputation of the complainant’s trademark is such that any use of the disputed domain name by the respondent capitalizes on such reputation and cannot amount to use in connection with a bona fide offering of goods or services. A recent example is in the decision in the WIPO case no. D2021-3102 concerning the domain name <spdexobrs.com>.
On the other hand, as in the Smart Robotics case discussed in this case note:
“the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.”
Such use is legitimate as it does not capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
The Third Element
In what concerns the third element of the Policy, it requires the complainant to prove that the domain name in dispute (i) was registered and (ii) is being used in bad faith.
Under the first limb of the third element (bad faith registration), where the PPC links at the disputed domain name relate to the trademark of the complainant or the services offered by the complainant, or both, panels consider that the respondent has registered the domain name in bad faith, with knowledge of the complainant’s trademark. Recent decisions in this respect include the decisions in the WIPO cases no. D2021-1824 concerning the domain name <kulul.com>, D2021-2135 concerning the domain name <icytower.com>, D2021-2026, discussed above.
Under the second limb of the third element (bad faith use), panels consider that where the PPC links at the disputed domain name relate to services offered by the complainant (competitors or services in direct competition with the complainant), the respondent is using the domain name to intentionally attract, for commercial gain, Internet users to its website(s) by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the respondent’s website. Recent decisions in this respect include those in cases D2021-1780 concerning the domain names <csbetway.app>, <csbetway.bet>, and <csbetway.com>, D2021-2275 concerning the domain name <whatsappbusiness.com>.
This hold true even if the content of the links is generated automatically, even if such links have been generated by a third party such as a registrar and notwithstanding that the respondent may not have directly profited from them, as per section 3.5 of the WIPO Overview 3.0, and recent decisions (e.g. the decisions in the WIPO cases no. D2021-2247 concerning the domain name <accorinvest-europe.com>, no. D2021-2182 concerning the domain name <aavacatioms.com>, no. D2021-2561 concerning the domain name <marcelrochas.com>).
The fact that the links on website at the disputed domain name do not have an obvious connection with the complainant’s business does not prevent, in the circumstances of each case, the respondent’s use from being in bad faith, as held for example in a recent decision in the WIPO case no. D2021-3102, mentioned above.
Various circumstances pertaining to each case are also considered by panels, in addition to the use of the domain name to point to a PPC links parking page, to reach a finding on bad faith registration and use under the third element of the Policy, such as:
- the presence of fraud (e.g. WIPO case no. D2021-2001),
- failure by the respondent to reply to the cease and desist letter of the complainant (e.g. WIPO case no. D2021-2275),
- use of a privacy service by the respondent or the use of a false identity impersonating the complainant (e.g. WIPO case no. D2021-2222),
- the fact that the respondent is engaged in a pattern of abusive domain name registration (e.g. D2021-2469).
Final remarks
As the Policy was designed to fight cybersquatting, a complainant would not succeed if there is no evidence that the respondent has targeted the complainant and its trademark (subject to particular circumstances of each case).
In Smart Robotics the textual element relied on by the complainant had a dictionary meaning and the panel considered there is nothing wrong with the PPC links on the respondent’s website directing to online locations of businesses engaged in “smart robotics”.
