A three member UDRP panel had held in favor of the domain holder on the domain name Masai.com which was represented by John Berryhill.
The complaint was brought by Masai Clothing Company of Copenhagen, Denmark which holds several community trademarks from “several European countries” on the term Masai.
Masai is also a dictionary word for the name of an African Tribe.
Here are the relevant facts and findings by the panel:
The domain name was originally registered on May 15, 2000. It currently routes to a website posting directory links to sites related to Africa and travel.
“According to archives available at “www.archive.org”, the website in 2000 advertised a Chicago-based software services company named “Masai Management.” From 2001 to 2005 the website displayed instead text-generated directory links referring to a number of categories (often travel related).”
“In September 2005, the website displayed an African animal scene banner, then later in 2005, the site displayed numerous links relating to African travel destinations. Near the end of 2005, there are no available archives.”
“Screen captures of the website on September 15, 2008 show a photo of what appears to be African tribes-people, with a search box, an appearance that is consistent until September 2009”
“Respondent contends that the links were generated by a third-party search result service provider. Respondent also appears to make the debatable assertion that a Respondent absolves itself of responsibility for the appearance of its website if a third party actually generates the content. Although Complaint Annexes 8 and 9 are ambiguously presented, the Response nonetheless concedes that “[a] recent change in service providers by the Respondent caused a brief and incidental display of subject matter relating to clothing.”
Based upon this concession, Complainant’s evidence, and other evidence bearing upon the appearance of the website during years prior to the time of Complainant’s Annexes 8 and 9, the Panel finds that there was a brief display of links on Respondent’s website that directed users to Complainant’s competitors in the recent past. ”
Those links are no longer present.”
“Whether or not that recent display of links to competitors was a deliberate act for which Respondent has responsibility does not, in the Panel’s view, shed light on the question of bad faith registration nearly six and one-half years ago. ”
“The Panel appreciates that it can be difficult for a complainant to prove a respondent’s intention at the time of registration.”
“The only allegations touching on the element of bad faith registration are limited to the following: “It is held that the Respondent has registered and used the domain name to disrupt the Complainant’s business. The website is disruptive to the Complainant’s business since it results in potential customers being confused or misled into believing that the website is somehow affiliated with, or sponsored by, the Complainant.”
“The Panel rules that the Complaint fails to establish bad faith registration directly, since it does not provide any evidence relating to bad faith registration. ”
“Likewise, although the Complaint alleges customer confusion and disruption to Complainant’s business, there is no evidence submitted to support these allegations. Further, the Complaint provides no evidence of the scope of public recognition for Complainant’s mark or any other circumstances that could potentially support the Panel making an inference of bad faith registration.”
“Unlike the case with a less descriptive trademark, it cannot be said in this case that there is little chance that Respondent was not aware of the trademark when registering, since “masai” is a dictionary word and, even allowing the possibility that the trademark was known to Respondent at the time of registration, the registration could have been in good faith and for a legitimate purpose if Respondent’s use of a common word was intended to be descriptive, as explained above.”
The Panel concludes that the Complaint fails for lack of evidence that the disputed domain name was registered in bad faith. The Complaint does not fulfill Complainant’s burden under Policy paragraph 4(a)(iii)
Looks like a good decision.. congrats to the owner!
AncestryUK.com just ended at $852 today on Snapnames. Ancestry.com owns TMs for “Ancestry”, “Ancestry.com” and “Ancestry.co.uk”. Is this a UDRP in waiting?
that would depend on what ancestryuk.com shows on their landing page, wouldn’t it?
The decision is fair. However, the respondent noted that changing over to a new domain platform briefly resulted in third party links with clothing.
Maybe domain companies should be liable for these mistakes. If a domain holder alerts a domain parking company to address conflicting third party links, then they are making a valid effort to avoid future problems.
One bad link can jeopardize a domain. It seems the domain owner never made any bad decisions to cross the TM line.
IMO, the previous case of stage dot com models cybersquatting with trying to profit off the TM. The decision to offer the domain to the TM holder is evidence of bad faith.
This case is a fair ruling in favor of the domain owner. It is a good decision. Don’t get too relaxed with think all dictionary words are protected. Use the domain wrong, and you will likely lose it. IMO, you can’t trust domain parking companies to serve up good links. Be careful.
Congrats Dude, Masai people now start playing Cricket you can broadcast their community news on your website.
Complainants in future UDRPs will surely not be able to use links on parked pages as proof of bad faith use, as Google (largely) show ads relating topics the searcher has recently Googled rather than anything which relates to the domains topic.
Today when I’ve checked out a couple of my parked pages all the adverts were related to smoothie makers because I’ve recently done a search for them – the domains related to train tickets and awnings. I have no control over those links and nor does the parking company (I assume) as the keywords are set correcctly.
These over reaching tm holders are simply going too far. You mean to say you can only show Infringing links temporarily now? No wonder domainers can’t make any money on ppc!
“Google (largely) show ads relating topics the searcher has recently Googled”
That is getting to be a problem. Geo-targeting has also raised similar issues in the past. Sometimes you see a print-out of a parking lander, and can’t for the life of you figure out why that person saw the things on the page in question.
And both of those are on top of the situations in which the complainant spikes the results by making odd keyword-buys in order to show up, trademark-infringing competitors of the complainant who make buys in order to have their stuff show up, and intentional manipulation of lander page search bars in order to claim that is the normal condition of the page.
The one way to address several of those issues at the same time is to refer to archive.org or screenshots.com as an unbiased representation of what was typically displayed, as discussed in the decision above.
I’ve wondering for a long time “what on earth was happening…?”
In particular Sedo parked pages showing completely irrelevant ads…
Thanks for the insight.
Domo
Parking systems either need to develop a meaningful opt-out protocol so domainers can avoid streaming TM’s on their generic domains, or domainers need to accept the fact that automated parking a generic name leaves them vulnerable to potentially infringing.
If Uzi Nissan parked Nissan.com tomorrow, there’s essentially nothing he could do to avoid infringing on the ‘obvious’ mark, unless he developed his own ad stream. He would lose either the UDRP or the court case.
Wait until mark holders with sophisticated eMarketing departments start targeting parked, generic domains that overlap with their mark by using strategically targeted ad-buys that serve no purpose but to ensure their ads are streamed on that particular domain in certain geographic locations.
Hmmm…. I smell a consulting gig. I wonder if Marksmen is hiring.
Bang on, Anon.
This is a longtime problem and parking companies have not responded to it because they do not have enough (or even any) pressure on them to do so.
It may come down to something like you describe to create the evolutionary pressure to begin filtering the ad streams.
Undetected infringement is a revenue stream for many domainers, and they are not going to exercise more care on the use of others’ trademarks unless the cost-benefit analysis supports it.
A more positive perspective is that domainers need their own source of ad streams. Reliance on search engines like Yahoo and Google has placed limits on what domainers can accomplish. Some domainers have done quite well in spite of this, so again the evolutionary pressure to spur real change is not quite there.