UDRP panel says no use does not constitute bad-faith use
In Ingram Micro Inc v Ingredients Among Modern Microwaves - a typosquatting case involving the misspelling of the complainant's corporate name - Ingram Micro commenced a Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding against Ingredients Among Modern Microwave over the registration of two domain names: 'ingrammmicro.org' and 'ingrammmicro.net'. Both of the domain names were registered after the complainant had commenced proceeding against Kalron Inc over the domain name 'ingrammmicro.com'. Kalron and the respondent in this case had the same administrative contact, but there was no evidence of a business connection between them.
The respondent did not respond to or participate in the proceeding. The panel found that:
"[b]y registering the identical domain name in two other [generic top-level domains] after receiving notice of the UDRP complaint against the '.com' registration, the respondent acted in bad faith."
The respondent's failure to respond to the complaint in this action was found to be further evidence of this.
However, the complainant failed to introduce any evidence of bad-faith use by the respondent, as required under Section 4(b) of the UDRP. The panel noted that there was no evidence of the respondent's attempt to sell the domain names, nor any attempt to attract users to the sites. The panel noted further that the actions complained of did not prevent the complainant from registering a '.com' domain name using the same trademark.
In addition, the complainant was unable to introduce evidence establishing a connection between the respondent in the Kalron Case and the respondent in this case, and therefore could not rely on evidence introduced in the Kalron Case to show such bad faith.
Accordingly, the action was dismissed without prejudice to the complainant's right to bring a proceeding in future should the respondent engage in any active bad-faith behavior.
This case may be seen as a response to the decision in Telstra Corporation Limited v Nuclear Marshmallows, in which the panel found that no use of a domain name amounted to bad-faith use.
Jerry Spiegel, Frankfurt Garbus Kurnit Klein & Selz, New York
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