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Using a trademark in a domain for comparative advertising

Two mattress makers square off over a domain name.

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National Arbitration Forum published a UDRP decision today that is worth reading. It deals with a competitor using another company’s brand name in a domain name.

Bed and mattress company Hästens Sängar AB filed the dispute against Organic Mattresses, Inc. over the domain name

When you see this domain name, do you think it’s a website created by the brand included in the domain? Probably not. It’s like seeing a domain that says a company sucks or stinks; your first inclination is that someone else owns the domain name.

In this case, Organize Mattresses, Inc. says it registered the domain (along with others mentioning other brands) to create websites comparing its products to the competition. It registered the instant domain in February but hasn’t built it yet. (It blames Covid-19 for the delay in creating the website.)

Panelist David Bernstein wrote a nuanced position on whether the domain was registered and used in bad faith. Because the Respondent hasn’t created the site yet, its domain registrar put up pay-per-click links to the Complainant’s competitors. Bernstein noted that this was bad faith use. But this is not a case of bad faith registration:

Whether Respondent engaged in bad faith registration requires consideration of Respondent’s intent. Respondent asserts that it registered the domain name in order to establish a comparison website, which, as noted above, could be a permissible use of the disputed domain name. Although Respondent did not come forward with affirmative evidence to establish demonstrable preparations to create such a website (which is a specific requirement under the policy for establishing rights or legitimate interests in a domain name), a finding a (sic) bad faith requires more. It is not enough that Complainant show that Respondent failed to come forward with evidence of its demonstrable preparations; rather, Complainant must come forward with evidence the establishes, by a preponderance of the evidence, that Respondent in fact registered the disputed domain name with a bad faith intention to cybersquat on the domain name. Such evidence might include evidence of an intent to sell the disputed domain name to Complainant for a profit, to prevent Complainant from reflecting its own trademark in a corresponding domain name, to disrupt Complainant’s business, or to attract consumers to the website to which the domain name resolves by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website. See generally Policy ¶ 4(b).

Complainant has not submitted sufficient evidence to establish any of these examples of bad faith registration, or any other basis for a conclusion that the disputed domain name was registered in bad faith. To the contrary, Respondent has provided sworn declarations of its CEO, Jeff Bader, who attests that Respondent registered the disputed domain name in order to establish a comparison website. Although Mr. Bader’s testimonial evidence (which was not accompanied by any documentary support) was insufficient to meet the Policy’s requirement of showing “demonstrable preparations,” the Panel does find the statements credible with respect to Respondent’s intent at the time of registration.

It is true that such a comparison website, if launched, may attract consumers to it. But, if the website is properly designed, it likely would not cause confusion as to source, sponsorship or affiliation; rather, it should be clear that the website does not come from Complainant but rather from a competitor of Complainant. It also is true that such a comparison website might be designed to divert business from Complainant to Respondent, but that is not the kind of disruption of a competitor’s business contemplated by the Policy as evidence of bad faith registration and use.

Bernstein denied the complaint.

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Author: Andrew Allemann

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