Recent Case Notes & Commentary

EVIDENCE OF BAD FAITH - IT MUST BE PRECISE

We often say evidence is crucial in these cases. And it is. But be careful that the evidence submitted is not just “general”, or “ indirect”, or evidence that clouds the field, raising more questions than it answers. The evidence needed, as we have seen in a recent case, is to prove exactly the point at issue. For example, as the Policy requires proof of bad faith, this must be evidence that the Respondent/ registrant of the domain name really was, or must be taken to have been actuated by bad faith towards the Complainant. The Complainant must therefore adduce evidence that “respondent seeks to take unfair advantage of, abuse or otherwise engage in behaviour detrimental to complainant’s trademark.”


These important points arose in a recent case:

Bolloré v. H. Tobé, Stichting Nederlands Centrum voor Handelsbevordering, WIPO Case No. D2017-1155 (August 21, 2017).


Complainant had two trademarks, BLUE CITY and BLUE SOLUTIONS used in car sharing and electricity storage. Respondent registered two domain names, <bluecity.solutions> and <bluesolutions.city> and used them for its website to promote services in several fields including zero-emission cities, traffic management, energy, cyber-security and electric mobility. You would have to say they were perilously close to the Complainant’s business and were therefore a bit suspicious.


The Panel, however, was diffident on how suspicious the Respondent’s conduct was and it left open a finding on Rights and Legitimate Interests due to the lack of clear evidence one way or the other, although one of the domain names was identical to the name of an organisation for which the Respondent said he was registering the domain name.


The evidence was strong enough, however, for the Panel to find in favour of the Respondent on the third element, as the Complainant had not proved bad faith registration and use.


On bad faith, the Panel found that it was not enough to show the domain name was confusingly similar to the Complainant’s trademarks.


The problem was that “Complainant has not submitted any evidence that Respondent is engaged as such in any of the aforementioned business activities called upon by Complainant.” In other words, the suspicious or “indirect” overlap between the industry sectors of both parties mentioned above was not enough. Evidence of what was on the Respondent’s website (a frequent way of proving bad faith) was, according to the panel, not enough. It seems the Panel really wanted hard evidence of what work the Respondent actually did and this had not been forthcoming. So the Complainant had not made out its case on bad faith and the Respondent won.


Take home message: make sure your evidence is up to scratch.