Gathering evidence of the conduct of recidivist cybersquatters: NZ Directories IP Limited v Domforce Ltd

Many UDRP complaints are filed either with the World Intellectual Property Organisation (WIPO) in Geneva, or the National Arbitration Forum (NAF). For .nz domain names, however, complaints are filed through the .nz Domain Name Commission (DNC) in Wellington. But many the principles which domain name lawyers will be familiar with from WIPO and NAF UDRP disputes are also in play in the DNC.

In this matter, on 1 September 2016, NZ Directories IP Limited (the Complainant) filed at complaint at the DNC in respect of the domain name wisesmaps.co.nz, which has been registered by Domforce Ltd (the Respondent) on 1 March 2015.

The Complainant, which is in the business of selling maps, street directories and guidebooks under the brand “Wises”, asserted that it had rights to the mark “WISES” and associated brands, and that the domain name wisesmaps.co.nz is similar to its mark.

It was alleged by the Complainant that the Respondent registered the domain name so as to park it and have the domain redirect to a list of related or contextual links, which tended to lead to advertisements for online maps offered at websites that are in competition with the Complainant. This is hardly unusual behaviour for cybersquatters. The business model, facilitated by Google’s Adsense program, is for a cybersquatter to passively collect click-through revenue generated solely from a combination of a trade mark owner’s goodwill and reputation in the brand which has been cybersquatted, coupled with internet users’ inaccurate guessing of or typographical errors relating to the correct domain name associated with the trade mark owner’s services and inputted into a browser (called “direct navigation”, contrasted with seeking the website using a search engine). Exploitation of the reputation of a trade mark so as to procure click-through commissions from “lost” internet users is a common example of use in bad faith and identified in many previous decisions (see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623).

The Complainant further contended that the Respondent’s use of its trade mark as contained in the domain name was likely to confuse, mislead, or deceive, and that the Respondent was very likely aware of the Complainant’s interest and reputation in the WISES brand before registering the domain name.

The Respondent did not file any response to the complaint, raising new or esoteric issues, and so the matter went directly to assessing whether the Complainant satisfied the three requisite elements necessary to order transfer of the domain name:

1. Rights in Respect of a Name or Mark: The Complainant successfully established that it has rights in the name WISES, with regard to its association with maps, as its trade mark registration for the brand covers “maps”.

2. Identity or Similarity Between the Domain Name and the Mark or Name: This element was also easily established due to the Respondent registering a domain that combines the Complainant’s trade mark and a reference to the goods or services for which the mark is being used.

3. Unfair Registration in the Hands of the Respondent: This goes towards bad faith use by the Respondent. There are a number of factors present in this case that helped the Complainant’s arguments. First, the Complainant’s reputation with regard to the WISES brand would have been easy to ascertain with a simple Google search. Second, the Respondent has parked the domain name with a PPC landing page leading to the Complainant’s competitors, and so it is possible to infer from this that the registration may be for the purpose of selling the domain name back to the complainant (with linking to its competitors being done to force the complainant’s hand into buying the domain), or to unfairly disrupt the Complainant’s business.

With all three of the elements established, the complaint was upheld and the disputed domain name “wisesmaps.co.nz” was ordered to be transferred to the Complainant or its representative.

Bad faith can sometimes be hard to prove. Importantly, the Respondent in this matter has a history of registering other domain names based on popular brands and trade marks, usually by taking advantage of misspellings, such as “hearld.co.nz” (for nzherald.co.nz), quontas.co.nz (for Qantas.co.nz), and warehousestationary.co.nz (for warehousestationery.co.nz). This established a pattern of repeated registration of domain names that correspond to popular names or trade marks to which the Respondent has no rights, and assisted the bad faith argument.

Recidivist cybersquatters are easy to spot using tools such as udrpsearch.com or DomainTool.com’s registrant monitor. Type in the name of the Respondent into udrpsearch.com and the free site will spill out a list of a Respondent’s track record of behaviour (see, for example, the remarkable history of Cameron Jackson / Cameron David Jackson). Some brand owners take the position of never settling with cybersquatters, so as to enable companies which are cybersquatted by the same person or business entity going forward to rely upon previous UDRP decisions to assist in and as evidence of bad faith.