AM General LLC v. ten Velde / HMMWV
Claim Number: FA1909001863663
October 22, 2019
There are sometimes cases before the UDRP in which the Respondent genuinely believes they are not profiting off a Complainant’s trademark in bad faith yet are ultimately found to be doing so. Such cases often involve an in-depth discussion of what can be considered legitimate non-commercial or fair use; the limits of which are not exactly clear cut. In the following case, a self-represented Respondent was defeated, as the Panel found that despite its asserted non-commercial intent, the Respondent’s website ultimately sought to profit off the goodwill of the Complainant’s trademark. Had the Respondent had appropriate legal counsel, the case may have not been so straightforward. In the following note, we will analyse the shortcomings of the Respondent’s defence, and examine how the UDRP deals with instances that push the boundaries of fair use.
In this case, the Complainant, an American automotive manufacturer who produces Humvees and other military vehicles, commenced proceedings under the UDRP. It alleged that the respondent was falsely holding itself out as the designer and manufacturer of the Humvee vehicle, and was profiting off the reputation of their long-held HUMVEE trademark.
The disputed domain name, <homeofthehumvee.com>, resolved to a website listing the sale of second-hand Humvee vehicles, as well as servicing, repair and upgrading services. In the Respondent’s defence, which clearly lacked the nuance, and polish that one submitted by counsel might have had, the Respondent argued that it held a right and legitimate interest in the domain name and was acting in good faith because he operated a non-commercial organization for repairing, selling and buying second-hand Humvees within Europe. The respondent alluded its use of the domain name was connected to non-commercial networking and information sharing for Humvee owners and fans. It also pointed to the low levels of activity on his website to suggest that any use was not harming the Complainant’s business. All of this seemed very reasonable from the Respondent’s point of view.
In making its decision, the Panel had to determine whether the Complainant was able to prove all three elements of the UDRP. While it was obvious that the domain name had incorporated the Complainant’s trademark and was confusingly similar under the first element of the policy, the discussion of the next two elements was somewhat more complex.
Paragraph 4(c)(iii) of the UDRP states a Respondent may demonstrate rights or legitimate interests in a domain name by providing evidence of “legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the [complainant’s] trademark or service mark.”
With the Complainant making out a prima facie case that the Respondent had no right or legitimate interest in the domain, for the Respondent to prevail under the second element, it had to convince the panel that it was both engaged in non-commercial use of the domain name, and had no intent to mislead or divert customers from the Complainant’s business. While the Respondent asserted it had no commercial intentions, the Panel concluded that the Respondent appeared to have received funds from its website, derived from repairing and servicing Humvee vehicles. So the weight of the evidence did not get the Respondent home.
While Past panels have viewed incidental commercial activities to not detract from the non-commercial nature of a website, the Panel ultimately determined that the Respondent’s use of the disputed domain name had a primarily commercial purpose. It ultimately found therefore that the respondent unfairly benefited from an unauthorised association with the Complainant’s trademark, and that an implied false association with the Complainant constituted both a lack of right and legitimate interest in the domain name and bad faith use and behaviour. As a result, the Complainant prevailed on all three elements of the UDRP and the Domain was transferred.
In this case, the respondent was severely hampered by an inadequately weak defence. Had he engaged legal counsel, there may been the possibility to mount a stronger argument claiming the primary use of the disputed domain was non-commercial or fair, or that he was operating a legitimate resale, repair and serving business. At least counsel may have been able to tilt the scales in favour of the Respondent/ registrant. In the second instance, counsel may even have persuaded the panel to the Panel to apply the Oki Data Test, whereby Panels determine, if the evidence is there, that repairers or resellers are operating a legitimate business in connection with the domain name. However, a key criterion of the Oki Data Test is that the relationship between the Respondent and trademark holder be clearly described. Given that there was no such disclaimer on the Respondent’s site, it may have had little chance, even if it had had a stronger case presented on its behalf by counsel.
Again, the case shows that getting that tilt to one side or another with the evidence will usually carry the day.
Nevertheless, from this result, we can see that those whose conduct suggests that they have been incorporating others’ trademarks in their domain names have to tread a fine line, and generally make clear the relationship between them and the respondent, in order to avoid running afoul of liability fixed by the UDRP. While the UDRP remains a quick and effective remedy for trademark holders to enforce their rights on the internet, any activities which fall within the murky area of non-commercial/fair use are sometimes not so clear cut.
Also see the decision in the case we have often cited, Nintendo of America Inc. v. Alex Jones,
WIPO Case No. D2000-0998, November 17, 2000. Undoubtedly, part of the reason why the panel decided in favour of the Respondent was, as it said in the decision, that “The evidence is clear that the Respondent has not sought commercial gain. Although his website contains links to commercial outlets, he states that he derives no personal gain.” For a respondent, it would therefore be helpful to have evidence that would enable a similar conclusion to be drawn.