Holding a trademark is not proof conclusive of a greater right than respondent’s legitimate interest or evidence of abusive registration under all circumstances. So, for example, holders of lesser known trademarks particularly those composed of common words or descriptive phrases must demonstrate their use and reputation in the relevant market to overcome a respondent’s denial that it had knowledge of the complainant or its trademark. The Complainant’s trademark in Intersections Inc. v. Jasper Developments Pty Ltd., D2009-0795 (WIPO July 20, 2009) is CREDIT COMPARE, registered in the Principal Register of the USPTO. The Complainant is in the U.S.; the Respondent in Australia. The Respondent contended that
it registered the Domain Name due to its natural association with the business of providing credit provider comparisons. It observes that the term “credit compare” is in common use referring to credit comparison services, but that it has found no use of the term by the Complainant itself.
The domain name that resolves to a website “comprising automatically generated links” is used for commercial gain. The automatically generated links forward Internet users to companies competitive with the Complainant. However, sponsored linking is not illegitimate and can be a bona fide offering of goods and services, paragraph 4(c)(i) of the Policy, but not where the website overlaps the goods or services offered by the Complainant. Some Panels defer decision on rights or legitimate interests if they conclude that there is insufficient proof on the third requirement, bad faith registration and use. In Intersections, the Panel stated that in its view – a view that is not (incidentally) universally shared –
the Respondent’s use of the Domain Name for a website comprising automatically generated sponsored links does not constitute a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the UDRP.
Even where the domain name “is a descriptive term and is being used in good faith” (that is, without knowledge of the complainant or its trademark) monetization of the domain name (according to this Panel) taints legitimacy – “the Panel considers that monetization through automatically generated links does not come within this provision.”
Registration and use in bad faith, however, requires more direct proof that the complainant is the respondent’s target. It is here where the descriptive term is turned against the complainant. In Intersections, the “Panel is not satisfied....” because, among other reasons, the Complainant has not “provided evidence of extensive us of the mark from which it might be inferred that the Respondent must have known of its interest in the mark.” Furthermore,
Examination of the Complainant’s website suggest that this lack of evidence is not due to inadvertence but rather reflects the fact that the Complainant is not actually using the mark.
If the trademark is not being used in the website it is plausible that it did not come to the Respondent’s attention and constructive notice is rejected to overcome alleged unawareness of its existence.
