A respondent can have a legitimate interest in a domain name identical or confusingly similar to a trademark if “before any notice to you of the dispute [you have] made demonstrable preparations to use [it] ... in connection with a bona fide offering of goods or services,” paragraph 4(c)(i) of the Policy. The proof requires showing what the respondent has been and is doing to bring its plans to fruition. The burden is not satisfied by what a respondent plans to do, only what it has done; pie on the table, not in the sky.
The Respondent’s defense in Orange Personal Communications Services Limited v. Abdou Salam Drame, D2009-0649 (WIPO June 30, 2009) rests on three theories. First that the words “orange” coupled with “togo” are generic; second, it was the first to register; and third, the domain name <orangetogo.com> was registered with a specific business in mind, to traffic in oranges from Togo. The Complainant is a member of a multinational telecommunications group owned by France Telecom. Shortly before the registration of the domain name, it entered into exclusive contract negotiations with the Togolese government in connection with the delivery of telecommunication services in Togo. The agreement received significant media coverage in Africa including the neighboring Republic of Mali, the country in which the Respondent resides.
The use of generic terms is a factor in determining a respondent's legitimacy but it “does not automatically show that [the way in which the respondent is using the domain name] amounts to a bona fide offering of goods and services” Orange. The combination of trademark+country can be legitimate but it only trumps the Complainant if there is proof of “demonstrable preparations.” On the other hand, the Complainant in Orange submitted evidence that it customarily attaches the name of the country to its trademark ORANGE for each country in which it has contracts. For example, <orangepoland.com>, <orangemali.com>. The Respondent attempted to then shift the burden to the Complainant to explain why it had not registered <orangetogo.com> immediately following disclosure of its planned negotiations with the Togolese government. This unsuccessful strategy is the mirror image of a complainant attempting to shift to the respondent the burden of explaining why it has not used a domain name over an extended period, Success Bank v. ZootGraphics c/o Ira Zoot, FA0904001259918 (Nat. Arb. Forum June 29, 2009). A trademark owner no more has to explain why it has not yet registered a domain name than a respondent has to explain why it is holding its domain name inactive.
There is no equation between failing to register a domain name and failing to have a trademark. In other words, this is not the Martha Stewart problem of coining a phrase – “everyday food” – and failing to register it as domain name before filing an “intent to use” application for its use as a trademark, Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009). Intent to use applicants lose because they cannot pass the threshold test. Respondents alleging use or demonstrable preparation lose because
in the absence of any credible information or evidence provided by the Respondent legitimizing his contemplated use of the Disputed Domain Name, the Panel cannot conclude otherwise than by stating that the registration and use of the Disputed Domain Name was made in bad faith.
Prior to the initiation of the proceeding in Orange the parties corresponded. The Respondent’s side of the correspondence was, shall we say, “contradictory.” He had a business partner; he did not have a business partner; he had been approached by “orangecounty.com” to sell the domain name; he was going to use the domain name in connection with a business venture; all of which contradictions led the Panel to conclude that the Respondent’s true motive was commercial gain and most probably to sell the domain name to the Complainant, thus the domain name was registered in bad faith.
