Disclaimers, good faith, and legitimate use
A recent WIPO case covered the use and effect of a disclaimer on a web site. The domain name in question, cineredcr.com, was registered and being used by a company based in Missouri with operations in Costa Rica (hence the “cr” part of the domain name). The Complainant objected on the basis of its numerous RED CINE trademark registrations, and claimed that the Respondent was cybersquatting on the domain name and profiting from misdirected traffic and customer confusion.
But the Panel disagreed.
It is appears from the record that Respondent has used the disputed domain name in connection with a bona fide offering of services in Costa Rica. Respondent has continuously used CineRed and CineRed CR since 2007, which is now used as its domain name. Respondent claims the disputed domain name was registered to continue normal business and make its services known online. A copy of the web site included in the record shows that Respondent has continually conducted and solicited its services in Costa Rica.
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The record shows that CineRed was created in Costa Rica, July of 2007, several months before the first use of REDCINE by Complainant. Complainant has no registrations in Costa Rica. Even if Respondent knew of Complainant’s trademark rights in the U.S., it does not necessarily mean the domain name was registered in bad faith. See Drake Bliss v. Cyberline Enterprises, WIPO Case No. D2001-0718. It is possible to adopt a domain name that is similar to another’s name in good faith and with the belief that it would not be an infringement of another’s rights. See also UMB Financial Corporation v. Cynthia Galant, WIPO Case No. 2010-1855.
On the contrary, the record supports a finding of Respondent’s good faith registration and use. Respondent offers actual services that do not compete with Complainant’s business. Respondent attempted to register <cinered.com>, the actual name of its company, but found it was taken by another party; the disputed domain name <cineredcr.com> was the next closest domain name available. Moreover, Respondent never tried to sell the domain name for profit. Rather, Respondent agreed to make changes proposed by Complainant to differentiate the web sites, and include a disclaimer at Complainant’s demand. The only condition Respondent did not concede was to transfer the disputed domain name.
The record does not support the claim that Respondent attempted to attract commercial gain by creating confusion. The companies are not direct competitors. The fact that both companies exist in the broader film or cinema industry does not necessarily create a likelihood of confusion. See Checkpoint Systems Inc. v. Check Point Software Technologies Inc.,104 F. Supp. 2d 427, 467-68 (D. N.J. 2000) aff’d 269 F.3d 270 (3d Cir. 2001) (discussing similar names in the context of broader industry do not necessarily infringe). Complainant develops and manufactures high-end cinema cameras and accessories. Respondent, on the other hand, rents production equipment for film projects in Costa Rica; they do not offer RED cameras, but they will obtain them at the request of a client. Given Respondent’s use as a legitimate film production, logistics, and rental company in Costa Rica since 2007, Complainant has not shown Respondent operated in bad faith.
Further, and more interestingly, the Panel discussed the use of a disclaimer on Respondent’s web site.
It should be noted that the use of a disclaimer on a web site does not clear a respondent of bad faith. A disclaimer may be ignored or misunderstood by Internet users, and it does nothing to dispel initial interest confusion that is inevitable from a respondent’s actions. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com“, WIPO Case No. D2000-0847 (citing Brookfield Commons Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999)). Yet the disclaimer here was added at the request of Complainant, which indicates Respondent’s good faith in use.
Initial interest confusion is probably on the decline, at least in the 9th Circuit, See Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010). Plus, come on, you’re citing Brookfield, a 1999 case, and a 2000 UDRP decision? Most of the big players online nowadays didn’t even exist in 1999, and UDRP jurisprudence has developed a lot since that time. I’d argue that Internet users are a lot more savvy with regard to web sites that they visit now, than they were in 1999 (certainly judges are a lot more savvy!). At any rate, the ultimate decision seems correct, even if this language about “initial interest confusion” seems archaic and misplaced.
Tagged bad faith registration and use, denied, disclaimer, gtld, registered trademarks, rights or legitimate interests, WIPO