The UDRP decision by a National Arbitration Forum panel concerning the domain www.umichregents.com is an interesting case-in-point for how bad faith can be found in many different forms. The complaint was filed by the University of Michigan which asserted that it owned the trademark for UMICH via its long-standing use of the mark dating back to as early as 1985. The Respondent, VistaPrint Tech. Ltd. of Bermuda, registered the domain and apparently did not do much with the site – at least nothing which came up in the text of the decision that stands out as evidence of “bad faith” or an attempt to commercially profit from the site.
Even so, the Respondent apparently tried to pass itself off as being associated with the University of Michigan and asked some of the university’s vendors for price discounts on materials like research documents, and sent e-mails back and forth with the vendors which eventually made their way into the hands of the folks at the University of Michigan:
“… [c]omplainant has supplied the Panel with e-mail evidence to show that Respondent has attempted to pass itself off as one of Complainant’s purchasing agents to request price quotes on research materials from Complainant’s vendors. The Panel finds that Respondent’s fraudulent attempts to pass itself off as Complainant constitute evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).”
Noting that, in addition to the fact that the Respondent had essentially tried to impersonate employees at the University of Michigan, it had a history of registering domains which included famous trademarks, this was more than enough evidence to support the panel’s decision to transfer the domain name to the University of Michigan.
The case is also instructive because it shows how a domain registration can be used by cyber-squatters not just to deprive the trademark owner of the domain property, but also to create a false association with the trademark owner that can be used in illicit ways. Thus, for trademark owners, making sure that you are aware of third party domain registrations not only has the benefit of helping stop cyber-squatters from creating confusion online, it can also have the added benefit of cluing you in on other types of illegal activities, such as where a third party tries to use your mark to tie itself to your vendors and/or business contacts, or impersonate one of your employees...