Two recent cases tell us a lot about how arbitrators go about reaching their decisions and the considerations that influence those decisions. What are they influenced by and what are they... not influenced by?
THE ARM CASE
In the first case, ARM, the Complainant had a trademark for ARM, in fact a lot of them, so it got off to a good start. Also, the trademark was well known, another good point for the Complainant. And there were a lot of the ARM trademarks on the books before the domain name was registered, so that pesky problem for complainants, that the domain name had been registered before its trademark had been established, did not arise. The domain name was also identical to the trademark; both of them were simply ARM. So, some observers would say this was a copy, that the domain name registrant had simply copied the trademark and was showing signs of wanting to sell it, in fact for a very high price. But that is not the end of the story. Those points were all in favour of the complainant trademark owner, and the respondent was not represented by a lawyer, and yet the complainant still lost. How come?
The complainant had won on the first element, because the domain name was identical to the trademark; they were both ARM.
The complainant/ trademark owner also won round 2, because the panel found that the respondent had not shown a right or legitimate interest in the domain name. “Arm” was a common, or dictionary word, of course but that was not good enough for the panel, because it held that it was not enough merely to have a dictionary or generic word as your domain name. The panel readily acknowledged that “arm” was a known word with a dictionary meaning. Not enough, said the panel. You also had to show that you had genuinely used it within its normal meaning. We often wonder where that rule is supposed to have come from, as it is not in the Policy, and it seems to get its validity from the fact that it is frequently repeated, but there it is. It is, therefore, the general approach of panellists that a generic word will give not rise to an RLI unless it has been used within its usual meaning. This one was not. It had not been used within its usual meaning but, rather, had been used for the purpose of putting it up for sale on Sedo, the auction site, at a high price. As the distinguished panellist said, “there is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.”
So, all of these points moved inexorably in favour of the complainant. From that point on, all it had to do was show that the respondent had registered and used the domain name in bad faith. It was destined to win. But it did not win. It lost. How? Well, because the Policy is clear that the complainant has to prove its case and one of the things it must prove is that the respondent registered the domain name in bad faith. It had not done so. You might ask: what else could it have proved? That is probably the clue to why the complainant lost, i.e., that it might be easier to say what was not proved. Here are some of the things that did NOT happen.
The domain name could NOT be said to stand only for the trademark. The word “arm” is so common as an English word, and it could be an abbreviation, so you cannot assume that the registrant was having a “go” at the ARM trademark or its owner.
There was NO bad faith tone about what the respondent was doing. There was NO targeting. All the respondent was doing was trying to sell the domain name.
There was NO evidence to suggest the Respondent knew of the Complainant and its ARM trademark.
There was NO evidence that the respondent was trying to sell goods and services of the sort the complainant sold.
Internet users were NOT being mislead.
It is not enough to show the respondent/ registrant had a domain name it was trying to sell which was the same word as the trademark, no matter how suspicious that might seem, if the word in the domain name had a wider use than as a duplicate of the trademark, which it did in this case. If the respondent has not actually done anything inimical to the rights of the complainant, it still has a good chance of winning, which it did in this case. The lesson is that, to win, the trademark owner must not be handicapped or compromised by not filling in any of the above gaps i.e., by not proving the essential elements that it must prove.
THE CORNING AND CORMING CASE