HOW TO DISPROVE BAD FAITH- THE VALUE OF A PLAUSIBLE EXPLANATION

One of the most difficult tasks for the domain name panelist is to reach a decision on the issue of bad faith in the face of conflicting arguments and evidence, i.e. in those cases that are defended and where the Respondent flatly denies that it either registered or used the domain name in bad faith.

Often the conflict will be resolved by the conclusion the panelist comes to on whether the explanation given by the Respondent for registering and using the domain name is plausible.

One case I have just been re-reading where the panel accepted the explanation given by the Respondent as plausible is the 2007 decision in Referral Experts LLC v. Adaptive Marketing, WIPO Case D2007-0436 decided on May 22, 2007.

In that case, the Respondent registered the domain name lookmybest.com and used it to refer potential customers to plastic surgeons.

The Complainant’s trademark was LOOKINGYOURBEST.COM and it used the trademark in its business which was also to refer customers to plastic surgeons.

The Complainant said the Respondent had registered and was using the domain name in this way deliberately to confuse people and in bad faith.This was denied by the Respondent which said it was not trying to engender confusion with the Complainant, but used domain names such as the present disputed one, that were evocative of its business that related to plastic surgery.

Although this might look suspicious to some people, the panel decided that there was no bad faith because:

1. the parties were competitors;

2. the domain name was made up of common English words that are descriptive or suggestive in the context of plastic surgery;

3. the Complainant’s mark was not famous and thus not ‘a compelling target for imitation’.

Thus the Respondent had presented ‘plausible reasons for using common, appropriate English words in the domain name’ and as the burden of proof is on the Complainant it had not proved this element.

Again , this case shows the importance of parties putting detailed evidence and argument forward to enable the most favourable inference to be drawn.