Recent Case Notes & Commentary

Demonstrable Preparations: The Importance of Probative Evidence

Navigant Consulting, Inc. v. Bradley Shive / Navigant Technologies

Claim Number: FA1410001587953


Disputed Domain Names: <Naviganttechnologies.com> & <Naviganttech.com>


Paragraph 4(c) of the Policy provides Respondents with a non-exhaustive list of circumstances in which they may rely to show they have a right or legitimate interest in a disputed website, with one of the listed indicia being ‘demonstrable preparations’ to use the domain name for a bona fide offering of goods or services. This recent case provides a good example on what kind of hard, actual events that will amount to demonstrable preparations.


If successful in proving it has engaged in demonstrable preparations, a Respondent will establish the existence of a right or legitimate interest in the dispute domain name, thereby thwarting a Complainant’s attempts to have the domain name transferred.


As usual, providing appropriate evidence in proceedings is very important. Mere assertions are of no value under the UDRP.


The Parties:

Complainant specialised in business consulting and related services in a number of industries. The Complainant has been using the NAVIGANT mark since 1996. In 1999, the Complainant registered the domain <navigantconsulting.com>. In 2008, the Complainant registered the mark, NAVIGANT with the USPTO.


Respondent has provided a number of professional services related to IT since 2006.


Disputed Domain Names

The disputed domain names, <Naviganttechnologies.com> & <Naviganttech.com>, were registered by the Respondent in 2003 and 2007 respectively.


Identical or Confusingly Similar

The Panel ruled that the Complainant had shown its use of the Navigant mark had acquired the secondary meaning necessary for a common law trademark, and that the addition of generic terms by the Respondent was insufficient to distinguish the disputed domain names.


Accordingly, the Complainant was successful in proving the first element. But this was not going to get the Complainant to home base.


Rights or Legitimate Interest

Although still using the <naviganttechnologies.com> and <naviganttech.com> as a gateway to attract customers, when visiting the disputed domain names users are now informed the organisation now operates under the rebranded name of “IT Cottage”.


Despite this name change, the Panel nonetheless held the Respondent still held a right or legitimate interest in the Navigant domain name because although it had changed the name, the domain  name was still being used for IT services, which was legitimate. After all, Navigant was the Respondent’s own name and the domain  name reflected that fact. In that regard, the Whois record revealed that although now operating as “IT Cottage”, the contended websites were still registered under the original company name of Navigant Technologies. This was sufficient for the Panel to find the Respondent possessed a right or legitimate interest in the disputes domain names.


In other words, the use of the Respondent’s original company name to register the respective domain names, combined with the fact there was no evidence indicating it had renounced its rights or legitimate interest in the disputed domain names, was a game-changer.


As a result, the Complainant had failed to prove that the Respondent lacked any rights or legitimate interests in the disputed domain names.


Bad faith

As the Complainant failed to prove the second element as required under paragraph 4 of the UDRP, the Panel did not consider the element of bad faith.


The Respondent’s ‘Demonstrable Preparations’

It was clear to the Panel that the Respondent had been using the Navigant mark prior to receiving notice of the dispute, as well as using the name “Navigant Technologies” to refer to itself. Further evidence was provided in the form of a “White Paper” that had been posted on the website under the title of “Navigant Technologies”. In this report, the Respondent stated that it provided services under the names “Navigant Technologies” and “Navigant”.


The Panel also utilised the Wayback Machine at <archive.org> for evidence that the Respondent continued to refer to itself as Navigant Technologies, even after it changed its name.


What will Prove Demonstrable Preparations?

In summary, only hard, credible evidence will assist a Respondent in proving it engaged in demonstrable preparations. Substantiating a claim that you have engaged in demonstrable preparations to offer bonafide services will turn on the facts. Intention to use in the future will not suffice, nor will mere assertion of previous use. Panels will only be interested in concrete evidence.


In this case, the use of Internet databases, archives, and reports all assisted to prove that the Respondent had made demonstrable preparations to use the disputed domain name in connection with the bonafide offering of goods or services; there was tangible proof in the form of dates, names and records.


Conclusion

The Respondent was successful in this case as its use of the Navigant name was in connection with a bona fide offering of IT services. Essentially, it was were able to show legitimate use of the mark through ‘demonstrable preparations’, thereby refuting the Complainant’s assertion it lacked rights and legitimate interests in the domain name.


This decision reinforces the importance of delivering actual evidence to prove ‘demonstrable preparations’, and provides guidance as to how one may go about proving this. It also shows probative evidence can be drawn from a variety of sources to assist in proving your claim.