Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent lacks rights or legitimate interests in the disputed domain name. The terms “rights” and “legitimate interests” are not interchangeable. The “words have to be given some work to do or they serve no purpose,” International E-Z UP, Inc. v. PNH Enterprises, Inc., FA0609000808341 (Nat. Arb. Forum November 15, 2006). “Rights” means a legal right to a name which is the dominant feature of the disputed domain name. In contrast a legitimate interest is an interest acquired over time that trumps the right of a complaining trademark holder. Disputing over <ainet.com> for example, the parties in American Information Corporation d/b/a American Information Network v. American Infometrics, Inc., FA0105000097339 (Nat. Arb. Forum July 19, 2001) both had a right to AINET or AiNET as trademarks. The Respondent proved that it was the senior, albeit unregistered trademark holder. In Kelly v. Qsoft Consulting Ltd., D2003-0221 (WIPO April 30, 2003) both parties had “homonymous trademark rights to the GAYDAR mark.”
As it is irrelevant in considering the jurisdiction of a complainant’s rights in relation to the location of the respondent so it is of a respondent’s rights. A trademark granted to a respondent in a different country can only be disregarded if there is evidence that the registration was fabricated to circumvent the Policy. For example, the Respondent in Madonna. In Ciccone, p/k/a Madonna v. Parisi and “Madonna.com,” D2000-0847 (WIPO Oct. 12, 2000) had the same nationality as the complainant, he was not located in Tunisia (the country where he obtained the trademark registration), and he admitted that he had obtained the trademark registration to protect his interests in the domain name.
However, the registration cannot be disregarded if the evidence favors the respondent, as in ZPower, Inc. (formerly known as Zinc Matrix Power, Inc.) v. Kissan Battery House c/o Mr. Sachin, FA0903001254829 (Nat. Arb. Forum June 1, 2009). No abuse can be found where the respondent has registered its “own trademark, duly registered in one county, in a domain name, even if doing so results in a domain name that is identical or confusingly similar to another entity’s trademark that has also been duly registered, but in an other country.” Similarly, in Angels Baseball, L.P. v. Lee Dongyeon, FA 925418 (Nat. Arb. Forum May 14, 2007) (<angels.com>) the Panel found that the “Respondent obtained the [trademark] registration before he received any notice of the dispute ... [and] without any opposition from Complainant [who had trademark registrations in South Korea]”.
The Complainant in ZPower argued that the disputed domain name created a likelihood of confusion as to sponsorship and affiliation and that the website was dormant for a period of time. However, a finding that the respondent has rights or legitimate interests in the domain name moots these arguments. “Once this threshold is traversed, it does not matter whether Respondent parked the Disputed Domain Name or began using the Disputed Domain Name only after Complainant began a worldwide marketing campaign.”
