The general rule is that where a respondent uses a parking service to populate its website with links that redirect Internet users to goods or services competitive with complainant it violates paragraph 4(b)(iv) of the Policy. The underlying principle is that a respondent cannot evade its representation and warranty under paragraph 2 of the Policy by denying responsibility for the content of its website. Even though the owner of a parked domain name may not control the content it is ultimately [the] respondent who is responsible for how its domain name is used, State Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum November 20, 2007).
This well trodden ground is discussed in Nokia Corporation v. Ara Guloglyan, D2009-1739 (WIPO February 4, 2010). It is persuasive for a respondent to argue that it contracted the content of the website to a third party. A case can be made in respondent’s favor for dictionary words where the domain name is used in its lexical meaning, but a finding of targeting is particularly difficult to overcome where the content of the website supports a likelihood of confusion [paragraph 4(b)(iv) of the Policy]. The Complainant's trademark in Nokia is VERTU, spelled in English as “virtue” but “vertu” can also be found in the dictionary as a variant. It has a specialized meaning in literary and artistic studies, denoting an excellence of taste and discernment.
The Respondent registered <vertuemail.com> and <vertumail.com>. He explained that “he purchased the disputed domain names in 2006 for the sole purpose of creating and maintaining virtual email websites for independent and amateur artists, the idea being to allow artists to be able to send emails, post and show to the world their creations, such as music videos, clips, paintings, sculptures and other art creations. The word “vertu” was chosen for its dictionary meaning of ‘Fine Arts & Visual Arts’, ‘The artistic way’.” A noble endeavor, but domain name rights and legitimate interests are locked into the present and in Nokia the Respondent’s explanation failed to meet reality. Virtual mail services of the kind the Respondent allegedly contemplated can be a bona fide offering of services, but the respondent has to establish its legitimate interest in rebutting the complainant’s prima facie case under paragraph 4(a)(ii) of the Policy.
The test is not what a respondent has in mind to do in the future but what he or she is doing in the present. Future oriented plans must be anchored by proof of “demonstrable preparations.” “It is by now well established that PPC parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii),” Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008).
In Nokia, the “Respondent provides not one piece of evidence to support his claimed plan to use the disputed domain names as a means to enable artists to show their works. The only evidence before the Panel shows that the domain names are being used to divert potential customers of the Complainant to its competitors, through sites designed to generate revenue in which the Respondent, as the owner of the disputed domain names, can be expected to share.” A respondent has two ways of escaping forfeiture, by either proving an affirmative defense or benefitting from the complainant’s inability to prove bad faith registration. Use in bad faith is generally evident from the content and also follows from a finding that the respondent lacks rights or legitimate interests in the domain name. But content also proves bad faith registration where a domain name incorporating a trademark piggybacks on complainant’s presence and reputation in the marketplace as explained in Ustream.
