Infringers are unlikely to make an appearance against counterfeiting claims in either forum but only noun claims are actionable under the UDRP and URS. Proof of adjectival infringement only goes to establish respondents’ lack of rights and legitimate interests. Once the evidence is laid out for adjectival infringement there’s no defense on the issue of rights or legitimate interests (Paragraph 4(a)(ii) of the UDRP); noun counterfeiting is conclusive against respondents on the bad faith element (Paragraph 4(a)(iii) of the UDRP).
The consensus view of Panels in both UDRP and URS is that respondents’ use of domains to sell counterfeit versions of a complainants’ products do not constitute bona fide offerings of goods or services or a legitimate noncommercial or fair use. SCG Power Rangers, LLC v. hongyan yao, FA1612001705455 (Forum January 6, 2017) (<power.ranger.us>) citing eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum November 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
For a more recent URS see Zeltiq Aesthetics, Inc. v. WhoisGuard, Inc., FA1611001703695 (Forum December 8, 2016) involving a plain vanilla noun infringement in two senses (infringing name and mimicking complainant’s website): “Respondent has registered and is using CoolSculpting.fit to display a counterfeit website designed to resemble an authentic provider of CoolSculpting services … and encourages visitors to input personal information in order to ‘Enter to Win Free Coolsculpting.’”
A recent UDRP case featured both noun and adjectival infringements: “Complainant has submitted reliable evidence showing [domain name resolving to] a website that sells (seemingly counterfeit) shoes in competition with Complainant.” Costco Wholesale Membership, Inc. v. Songyuan Songyuan,FA1610001697262 (Forum October 27, 2016) (<costco-eshop.top>). The adjectival infringement establishes both lack of rights and legitimate interests, and when the Panel moves on to its Paragraph 4(a)(iii) analysis, bad faith use, from which bad faith registration is inferred.
To round out recent cases for noun infringement resting on offering counterfeit goods there is Bayerische Motoren Werke AG v. MIKE LEE / WHOISGUARD PROTECTED, WHOISGUARD, INC., Yang Xiao, Xiao Yang, Ning Li, Li Ning, MIKE LEE, D2016-2268 (WIPO January 6, 2017) (<bmw-icom.com> and several others). The domain names resolved to websites selling or linking counterfeit BMW proprietary diagnostic software products. This establishes respondent lacked rights or legitimate interests and by inference from its use that the registrations of the domain name were abusive. (The Respondents did not formally reply to the Complainant's contentions but complained about being singled out. One of the Respondents sent an email “protesting why the proceeding has been brought against them when there are other examples of misuse, e.g., <bmw-icom.org>.”
Respondent in Fifty Shades Limited v. Domain Admin / Whois Privacy Corp., FA161100 1704616 (Forum January 17, 2017) (<fiftyshades2.com>) attempted to hide infringing, adjectival infringement by removing content from the website but it was captured by the “Wayback Machine” (https://archive.org/web). When active the website sold counterfeit copies of the copyright works, in whole and part, without Complainant’s authority
The important point to note is that while adjectival infringements are factors supporting bad faith use they are not themselves actionable claims under the UDRP and URS. There must be a noun infringement otherwise complainant will have no standing to complain. Adjectival claims must be litigated as trademark and counterfeiting infringements in courts of competent jurisdiction.
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement and Update here. Supplement and Update through August 2016 was published in e-book format on November 1, 2016; the print format will be published on February 15, 2017. The Supplement and Update is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement.
