See no evil, hear no evil: No trademark search? No defense

Co-Authored by Claudia B. Spielman

Originally published in Domain Names Quarterly, Summer 2002

We've all heard of the famous trio of monkeys, who by covering their eyes and ears, neither saw nor heard any evil. As the story goes, their active inattention was an ineffective shield against the sights and sounds they sought to ignore. A recent decision under the Uniform Dispute Resolution Policy ("UDRP" or the "Policy") confirms that in the trademark arena as well, ignorance is not always bliss.

To prevail under the UDRP, a complainant must establish not only that the challenged domain name is identical or confusingly similar to its trademark, and that the registrant has no rights or legitimate interest in that domain name, but further, that the registrant's registration and use of the domain name was in bad faith. Section 4(b) of the Policy enumerates a series of four scenarios that satisfy the bad faith requirement including:

evidence of an attempt by the registrant to resell the domain name to the trademark owner at a profit;

evidence of a pattern or practice of registering domain names that correspond to trademarks owned by third parties;

evidence that the domain name corresponds to the trademark of a competitor; and

evidence that the value of the domain name derives from the likelihood that it will cause confusion with the trademark and thereby drive traffic to the respondent's website.

Significantly, the express language of the Policy makes clear that these four scenarios are merely exemptive, and not exclusive.1 A recent decision in Kate Spade, LLC v. Darmstadter Designs, 9 ILR (P&F) 3079 (WIPO Jan. 3, 2002) (Kate Spade) suggests that a domain name registrant's failure to conduct a trademark search prior to registering a domain name may be an additional scenario to add to that "bad faith" list.

The dispute in Kate Spade centered around the related domain name JACKSPADE.COM. Complainant Kate Spade ("Spade") launched a new line of products under the JACK SPADE mark nearly six months prior to the challenged domain name's registration. The JACK SPADE mark was the subject of a U.S. trademark application filed by Spade with the U.S. Patent and Trademark Office nearly two years earlier. Following the domain name's registration, and for three years thereafter, respondent neither activated the domain name nor offered it to Spade for sale. When Spade's subsequent efforts to reach the domain name registrant by mail and phone were unavailing...