Descriptive and Nominative Fair Use in Domain Name Cases: a Basis for Rights or Legitimate Interests
Professional Rodeo Cowboys Association , Inc. v. Alternative Advertising Concepts, Inc./ Kenneth Forman, NAF Case, Claim No. FA 1204001440736 (June 26, 2012).
The Complainant in this case had the trademarks NFR and NATIONAL FINALS RODEO and used them for conducting the National Finals Rodeo for which its was the premier sanctioning body.
The Respondent’s domain names nfr.com and nationalfinalsrodeo.net were held to be confusingly similar to the respective trademarks.
But on the issue of rights and legitimate interests, the Panel found in favour of the Respondent. The basis of this finding was that the Respondent had used the domain names for a bona fide offering of goods and services which of course was a right or legitimate interest. How was it bona fide when the Respondent used the domain names and its website for selling tickets to the National Finals Rodeo?
The answer was that the Respondent included the NFR mark in its domain name only for descriptive purposes. The websites included disclaimers stating no relationship with the Complainant, in the same way that NASCAR was included in the domain name nascartours.com in Nat’l Assoc. for Stock Car Auto Racing, Inc. v. Racing Connection, D2007-1524 (WIPO Jan. 28, 2008), where the domain name showed a bona fide offering of goods and services.
It was the same in the Professional Rodeo case and the selling of tickets to the National Finals Rodeo was a bona fide offering of goods or services. This was a descriptive and nominative fair use of the Complainant’s marks which, as the panel said, “are referenced for the purpose of indicating that tickets for the named events are available for resale on Respondent’s website.”
It is important that the Respondent was able to show that it had not cornered the market in relevant domain names. This could be shown by the evidence in the present case from the Complainant that it had registered many domain names to maintain its active website presence.
There was also a disclaimer on the Respondent’s site that accurately disclosed the registrant’s relationship with the trademark owner. The panel clearly regarded the disclaimer as an important factor.
The case is also significant in that laches was held to be “a defence” and to give further support to the legitimacy of the Respondent’s rights and interests in the domain names. That was so because the Complainant had stood by for 14 years, aware that others were selling tickets to its events and done nothing about it.
Laches, the panel said, was an equitable defence to the UDRP preceding which itself provided an equitable remedy. In any case it was a valid defence in trademark law in the US.
The panel relied on the significant New York Times case in reaching its decision.
NO BAD FAITH
There was no bad faith under the specified criteria of bad faith or any other demonstrated bad faith.
In any case, the issue of bad faith was moot as there had already been a finding that the Respondent has rights or legitimate interests in the domain names.