Each case was lodged under the Uniform Domain Name Dispute Resolution Policy (UDRP), which sets forth a three-prong test to adjudicate domain name disputes and which all .biz, .com, .info, .name, .net, and .org registrars are obligated to abide by. Under the UDRP, a domain name challenger must prove: (i) that the domain name at issue is identical or confusingly similar to the challenger’s trademark, (ii) that the registrant has no right to or legitimate interest in the domain name, and (iii) that the registrant has registered and is using the domain name in bad faith. Upon proving all three factors, the challenger is entitled to have the domain name registration transferred to it or canceled.

Persuasive evidence of bad faith, as required by the third prong of the UDRP, may include that the registrant registered the domain name: (i) primarily to convey it to the challenger or the challenger’s competitor for an excessive amount of money; (ii) to prevent the challenger from using it in a domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) to disrupt the business of the registrant’s competitor. Evidence of bad faith also may include that the registrant deliberately used the domain name for the purpose of attracting consumers to the website associated with the domain name and, for commercial gain, causing those consumers to misperceive a sponsorship, endorsement or other relationship between the challenger and the website and/or goods or services offered on that website.

A domain name registrant may refute an allegation that it has no right to or legitimate interest in a challenged domain name, and thus defeat the second prong of the UDRP and retain ownership of the domain name, by proving, in part: (i) that before it was aware of the domain name challenge, it used or began preparing to use the domain name or a corresponding trademark in connection with a good-faith offering of goods or services; (ii) that it commonly has been known by the domain name; or (iii) that it is making legitimate non-commercial or fair use of the domain name, without any intent to misleadingly divert consumers or tarnish the challenger’s trademark for commercial gain.

In the Miller case, the Miller Brewing Company, owner of a federal registration and several pending applications for the trademark MILLER TIME, challenged the registration by a family with the surname “Miller” of the domain name MILLERTIME.COM. Miller Brewing claimed to have used the trademark MILLER TIME extensively since at least 1972 in connection with beer and to have spent several million dollars promoting the trademark over the past three decades. Miller asserted that because of the fame of the MILLER TIME trademark, the Miller family undoubtedly was aware of that trademark and of Miller Brewing’s rights therein when the family registered the domain name MILLERTIME.COM in 1995.

Miller Brewing further alleged, and the Miller family appears not to have refuted, that the Millers launched the MILLERTIME.COM website in 1997 or earlier. According to Miller Brewing, initially the site promoted various family members’ professional accomplishments, including a website consulting business, a children’s software company, and computer and technology proficiencies. Thereafter, in October 2001 or earlier, the site changed and began promoting the Miller Institute for Learning and Technology and its various consulting services, seminars and employment opportunities. The Miller family confirmed that in November 2001 or earlier, they listed the MILLERTIME.COM domain name for sale with an online auction site, but explained they did so solely to test the auction site and not because they were genuinely interested in selling the domain name.

Upon consideration of these facts, the arbitrator found that the Miller family’s early use of the MILLERTIME.COM domain name was not in good faith because at that time (and continuing through the present) the Millers implicitly knew of Miller Brewing’s famous MILLER TIME trademark and intentionally used the fame of the mark to attract consumers to the goods and services offered on their website. The arbitrator further found that the MILLERTIME.COM website offerings, including computer software, educational technology services and ancillary business services, were decidedly commercial. As a result, the arbitrator rejected the defenses offered by the Millers and concluded that Miller Brewing satisfied the second “no right or legitimate interest” prong of the UDRP.

Similarly, the arbitrator held that because the Millers had used the MILLERTIME.COM domain name to confuse consumers into misperceiving an association between Miller Brewing and the MILLERTIME.COM commercial website, Miller Brewing also satisfied the third “bad faith” prong of the UDRP. Based the above findings and the additional finding that Miller Brewing’s MILLER TIME trademark was identical to the Miller family’s MILLERTIME.COM domain name, the arbitrator ordered transfer of the domain name to Miller Brewing. The Miller family has challenged this decision in federal district court, and their motion for injunctive relief presently is pending.

In the Frampton case, the musician Peter Frampton challenged the registration by a company named Frampton Enterprises, Inc. of the domain name PETERFRAMPTON.COM. Peter Frampton owned a federal registration for the trademark PETER FRAMPTON, for use in connection with live musical performances, audio recordings, and audio production and recording studio services, and claimed to have used the mark in connection with musical equipment, videos, CD-ROMs, DVDs, concert tickets, clothing and related merchandise as well. Peter Frampton also owned the domain name FRAMPTON.COM. The arbitrator observed that Peter Frampton was one of the most internationally famous and acclaimed names in pop music for the past thirty years and was likely to be recognized by a “significant proportion of the world’s population” as a source for music and other entertainment services.

In response, the president of Frampton Enterprises, Lyle Peter Frampton, asserted that he also was commonly known as “Peter Frampton” and that his business, a sales and marketing development company, used the domain name PETERFRAMPTON.COM solely to identify him as the company president and not to sell merchandise related to the challenger Peter Frampton.

Peter Frampton further stated, and Lyle Peter Frampton appears not to have disputed, that the PETERFRAMPTON.COM website home page, in part, offered “Entertainment!” and contained two stylized logos reading “Peter Frampton” copied from Peter Frampton’s FRAMPTON.COM website. This home page also instructed site visitors to phone “Mr. Frampton” for further details regarding the site. Additionally, a banner advertisement on the website offered “Frampton On-Line Shopping” and linked to a portion of the FRAMPTON.COM website that offered merchandise for sale. Elsewhere on the PETERFRAMPTON.COM website, text reading “Peter Frampton Music/Videos!” appeared alongside another set of links to the FRAMPTON.COM site where Peter Frampton’s music and videos could be purchased. According to Peter Frampton, all of this website content was intended to strengthen consumers’ mistaken impression that Peter Frampton sponsored, endorsed, or otherwise was associated with the PETERFRAMPTON.COM website and its offerings.

Peter Frampton stated in his domain name challenge that before filing the challenge, he had approached Lyle Peter Frampton informally and demanded transfer of the PETERFRAMPTON.COM domain name. Lyle Peter Frampton agreed so long as Peter Frampton agreed to participate with him in a “joint business proposition,” and/or if Peter Frampton agreed to transfer to him the FRAMPTON.COM domain name, plus “reasonable consideration.” Peter Frampton had refused the offer and instead filed this challenge with WIPO.

As in the Miller decision, the arbitrator ordered transfer of the challenged domain name based on his review of the facts alleged by both parties and his conclusion that Lyle Peter Frampton had no rights in or legitimate interest to the domain name and had registered and used the domain name in bad faith. To begin with, the arbitrator was altogether skeptical of Lyle Peter Frampton’s claim that Frampton Enterprises previously had used the PETERFRAMPTON.COM domain name and/or the PETER FRAMPTON trademark in good faith, noting that any such use would have breached Peter Frampton’s exclusive and longstanding federal and common law trademark rights.

The arbitrator was equally dubious of Lyle Peter Frampton’s assertion that he was commonly known as “Peter Frampton.” Moreover, the arbitrator noted that the UDRP legal standard for the “commonly known” defense required Lyle Peter Frampton to prove that his use of the name “Peter Frampton” was so extensive that visitors to the PETERFRAMPTON.COM website would be more likely to associate the domain name and site with him than with Peter Frampton. According to the arbitrator, because of the overwhelming strength of the PETER FRAMPTON trademark it would be “exceedingly difficult, if not impossible” for Lyle Peter Frampton to make this requisite showing and establish his right to the challenged domain name.

Lastly, the arbitrator concluded that Frampton Enterprises’ registration of the PETERFRAMPTON.COM domain name at a time when its president Lyle Peter Frampton undeniably was aware of the musician Peter Frampton, and Lyle Peter Frampton’s subsequent use of the PETERFRAMPTON.COM website to sell music-related materials plainly was intended to divert consumers to Frampton Enterprises’ own commercial offerings by misleading consumers as to the lack of any association between Peter Frampton and the website. Accordingly, the arbitrator found that Frampton Enterprises’ professed interest in the PETERFRAMPTON.COM domain name was not legitimate, and that the company’s registration and use of the domain name was in bad faith.