Recent Case Notes & Commentary

BAD FAITH UNLIKELY IF PARTIES ARE IN DIFFERENT BUSINESSES

TrueKare, LLC v. Carlos Manuel dos Santos Azevedo

FORUM Case, Claim Number: FA1403001546541

May 05, 2014


Although it was delivered a few years ago, this decision is worth noting today because it is a good practical illustration of how the facts alone can show a right or legitimate interests and also how in some fact situations there could be no bad faith.


The Complainant had a trademark for TRUEKARE which it used in connection with its breast prostheses medical products. It was registered on July 1, 2008. Respondent’s registered its <true-kare.com> domain name on October 21, 2010 and used it in his business of providing services for the care of elderly individuals. Respondent also had two valid trademarks for the TRUE-KARE mark with the OHIM (e.g., Reg. No. 9,577,446 registered June 3, 2011).


The panel found that the Respondent had a right or legitimate interest in the domain name under Policy 4(c) (i) because it was using the domain name in a bona fide offering of goods or services. It was bona fide because the Respondent had actually filed for its trademark, which must have shown that it was running a serious business. Respondent also argued that its business was bona fide because its elder care services were not remotely competitive to Complainant’s breast prostheses goods. The panel agreed. So on both grounds the business was bona fide and the Respondent had therefore shown a right or legitimate interest in the domain name.


The Respondent also won on the bad faith issue. It had not fallen foul of any of the specific criteria for bad faith under Policy 4(b) or engaged in any other general conduct that would constitute bad faith registration and use. 

There could also not be any disruption of the Complainant’s business under Policy 4(b) (iii)) because the two fields were so different, being “independent and unrelated”. For the same reason, there could be no confusion for potential internet customers.


Thus, the decision is saying that the real world of commercial activity often turns up an actual situation where it would be unreal to say that the registrant of a domain name had no right to register it  or that the domain name had been registered and used in bad faith.