WIPO panel questions Oversee.net defense of “automated systems” for registering domain names.
A UDRP panel has found against Oversee.net in a UDRP dispute over CarrollHouse.com and has posed significant questions about the company’s domain name registration practices.
Complainant Carol House Furniture has used its name since 1965 and it incorporated in 1970.
The dispute says that Oversee.net registered the domain on September 4, 2010. But the domain was actually owned by Oversee.net affiliate Portfolio Brains, LLC since 2009.
Oversee.net’s defense to registering the domain name was that an automated system identified the domain name and it registered it because it included two common words. The company told the panel that neither its automated system or three human reviewers raised any red flags about the term being a trademark. It also defended the use of some pay-per-click links on CarrollHouse.com being related to furniture, noting that the act of the complainant accessing the page and clicking on furniture keywords to take screenshots would have increased the prominence of these keywords on the parked page.
The panel found the domain was registered in bad faith and asked two pertinent questions:
1. Why did Respondent choose this particular word string from the universe of words available?
…The Panel did not learn anything from Respondent about the criteria that it programs into its automated system for identifying potential domain names. For example, the criteria in its system might search for word strings that bear similarity to trademarks. The Panel just does not know. Thus, explaining that it uses an automated system does not enlighten the Panel nor relieve Respondent of its responsibility to avoid registering words that infringe on the rights of third parties. That Respondent appears to be relatively savvy when it comes to registering domain names and that it acknowledges its intent to use them for PPC links only heightens the concern in this case.
Respondent claims it had no knowledge of Complainant prior to this dispute, and that during the registration process, neither Respondent’s automated filtering system nor Respondent’s human reviewers identified carrollhouse.com as confusingly similar to a trademark. Respondent does not state whether its filtering system uncovered Complainant’s mark, whether Complainant’s mark came to the attention of the three human reviewers, or whether the reviewers, if confronted with Complainant’s mark, considered the Domain Name unlikely to cause confusion, an assessment that would be different from this Panel’s determination. Does Respondent aggressively choose word strings that risk crossing the line? Again, the Panel is not told anything about the process used by Respondent’s human reviewers. While Respondent denies that it was targeting Complainant, the issue remains open as to whether it was aware of Complainant’s trademark. Is it too much to expect that Respondent should prove that it was unaware of Complainant’s mark, when this evidence is only within the zone of Respondent’s own operations? Given that Complainant’s mark had been used for 45 years, that Complainant had its own well-established website selling furniture, that both parties are located in the United States, and that Respondent is in the business of registering domain names, a finding of constructive notice may not go too far in this case…
2. Why did Respondent’s PPC site feature prominent PPC links for furniture?
…There are at least two plausible alternative explanations for why the website Complainant received when it accessed the Domain Name included furniture-related PPCs as the top links: (i) these terms did not change from the way they first appeared when Respondent uploaded the web page; or (ii) Internet users other than Complainant clicked on furniture-related PPC links on the Domain Name’s web page, placing these links at the top. The Panel does not know the actual reason why Complainant received the web page it did, but the Panel does know that it did receive that page; that it was possible the page included furniture-related PPC links from the day it was uploaded, and that it was possible third parties, not Complainant, searched for furniture or clicked furniture-related PPCs links before Complainant ever did…
Indeed, DomainTools shows that the site has hosted everything from porn links to real estate links. Even after Portfolio Brains bought it there was a parked page with no furniture links on it.