"LEGITIMATE INTERESTS" IN DOMAIN NAME DISPUTES
IVAN HOFFMAN, B.A., J.D.
For all purposes in the UDRP, the complainant must demonstrate that it has either a registered trademark or has rights of trademark. For an explanation of the latter legal precept, read “Julia, Jimi and Cybersquatting: An Update.”
How the Issue is Joined
As part of the complaint, the complainant must allege, among other allegations, that the registrant has no legitimate interest or rights in and to the domain because the domain infringes on the trademark rights of the complainant. In response, the registrant may produce evidence refuting these allegations and the UDRP gives some specific, if non-exclusive guidelines for such refuting evidence. The UDRP provides, in part that a registrant can demonstrate such legitimate interests by showing that:
(i) before any notice to you [registrant] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; orWhat this refers to is that the registrant was using the domain in either the real world or as part of a web site in which the registrant was in a bona fide business to which the name was attached.
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;
This provision is designed to protect the rights of the registrant who has been using the name that is the subject of the domain prior to the dispute for legitimate reasons. For example, if someone is using their own or a business name that happens to be the same as the trademark owner’s mark, this would be a factor in determining legitimate rights of the registrant. On the other hand, in the Julia Roberts case mentioned above, the registrant was not using the domain juliaroberts.com because it was his or her name and this was one of the factors going against the registrant. Again, the registrant was not using the domain as the name of its business but had merely reserved and was using it as an adjunct to its business and such was found not to be a legitimate use.
This last category seems pretty straight forward. For a fuller explanation of “fair use” including as it applies to trademark claims, read the article entitled “Fair Use.” Some of the factors that the UDRP looks at in determining whether or not the registrant is trying to “divert consumers or tarnish the trademark or service mark” are the scope of the registrant’s use of the mark in keywords and meta tags. Since search engines often use these codes to index sites, if the registrant is not acting in good faith and is using the mark in this fashion, it also is strong evidence of an intent to divert traffic to the registrant’s site.or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
This entire area of domain name disputes is a hotly contested one and, with the growing number of top level domains coming into use in the next few months is likely to become even more contentious. It is up to all parties, registrants and trademark owners (including those with rights of trademark whether or not registered) to become aware of their respective rights and obligations.
© 2001 Ivan Hoffman