Recent Case Notes & Commentary

Proving or Not Proving Bad Faith

TV Sundram Iyengar and Sons Limited v. P.A. Gordon, WIPO Case No.D2014-0814.

It is undoubtedly true that domain name cases are won or lost on the basis of the evidence brought forward by the parties. Evidence is more important than assertion. One of the areas where this principle has a very real effect is in the proof of bad faith. It is no use simply asserting that the Respondent has engaged in bad faith registration and use; evidence must be produced to that effect. As it is unlikely that there will be a convenient admission by the respondent that it engaged in bad faith registration and use, the complainant has to produce evidence from which the Panel is able to draw the inference that the respondent was motivated by bad faith. The role of the complainant’s legal representatives, therefore, has to be to produce as much by way of evidence that it can to encourage the Panel to say, yes, on the balance of probabilities it looks as if the respondent was motivated by bad faith. The role of the Respondent’s lawyers has to be to argue, no, that evidence can be explained and is not strong enough to enable that conclusion to be drawn and also that there are other facts tending to suggest that the respondent was not motivated by bad faith. The fine balanced in that exercise was recently illustrated in the case of TV Sundram Iyengar and Sons Limited v. P.A. Gordon, WIPO Case No.D2014-0814[1]. In that case, the trademark TVS was registered in India in1945 and in the UK in 2012 and 2013 and the domain name in 1997. By the time of the UDRP proceeding, the domain name had been registered for 17 years, so questions of delay and laches naturally arose. But keeping to the issue of the time that had elapsed between when the domain name was registered and when the Complainant asserted its rights, the Panel said that “it is a fact that the Panel cannot ignore.”

The Panel concluded that the Respondent did not seem to be in the habit of registering domain names to prevent trademark owners from registering corresponding domain names. That was an interesting piece of information that tilted the scales in favour of the Respondent.

Also tilting the scales in the direction of the Respondent was the fact that it had registered a number of other 3 letter domain names; that tended to suggest that this was the Respondent’s modus operandi, which was of course quite legitimate. All that the Respondent seemed to want was to acquire domain names “for the inherent value in the short domain names.”

Also tending in the same direction was the fact that the parties were not competitors, so there was no evidence that the Respondent was trying to disrupt “the business of a competitor.”

Moreover, there was no evidence that the Respondent had attempted to sell the domain name to the Complainant “(as opposed to a general offer to sell the Domain Name)”. “An offer to sell a Domain Name, by itself, is not evidence of bad faith…”.

The facts also showed that the Complainant was not so well known and that its reputation was not so great outside India that the Respondent must have been aware of it when it registered the domain name. The Respondent had also given a good reason for registering this particular domain name, namely that it was an abbreviation of the word “televisions”.

It will be seen therefore that although there was not one determining feature on bad faith, one way or the other, these individual pieces of evidence were able to be strung together so that in combination they tended to lead in one direction, namely that the Respondent probably had not registered or used the domain name in bad faith.

In part, of course, the delay in the exercise of its rights by the Complainant made it more difficult with the passage of time to reach a firm conclusion on the Respondent’s motives so long ago and consequently, the individual pieces of evidence referred to above were particularly important.

Again, it must be emphasised, evidence is important.

[1] The editor of this website was a member of the Panel in this case