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Good Faith and Abusive Registration of Domain Names

Gerald M. Levine

Not all domain names identical or confusingly similar to trademarks are actionable. Exhibit 1 are complainants whose trademarks postdate domain name registration. The latest example of this is Insight Energy Ventures LLC v. Alois Muehlberger, L.M.Berger Co.Ltd., D2016-2010 (WIPO December 12, 2016) (<powerly.com>) but there are other, more esoteric examples such as loss by genericide, Shop Vac Corporation v. Md Oliul Alam / Quick Rank, FA1611001701026 (Forum December 10, 2016). Common words and phrases can convey sources of goods or services but within a community of speakers they can also convey other expressive communications unrelated to trademark value which the Panel in Shop Vac concluded was the case with <best shopvac.com>:

It is not clear whether or not Complainant has been or is likely to be successful in preventing use of the words "shop vac" to describe a type of vacuum cleaner. However, it appears on the material before the Panel that the word "vac" is commonly used in the industry as an abbreviation for "vacuum" and that the expressions "shop vac" and "best shop vac" are in common use with respect to vacuum cleaners other than those of Complainant.

The reference to the likelihood of success in preventing the use of the phrase "shop vac" from death by genericide is Complainant's so far unsuccessful attempt to suppress the mark's generic meaning. A factually similar situation to "shop vac" turns on legitimate trademark disputes between two fair users of a common phrase, a difference between genericide and lack of distinctiveness.

In NZ Manufacturing, Inc. v Eric Snell, FA1604001670641 (Forum June 3, 2016) the Panel held that there is "no doubt as to the generic nature of the words 'stretch cordz', even in view of the alternative spelling of the last letter in the word 'cords'. Neither Complainant nor Respondent is the 'authors of this alternative form of spelling' widely used in commerce." The difference between Insight Energy and NZ Manufacturing is the ongoing legal challenge to the mark in the USPTO, and this takes it outside the scope of the Policy.

Basically, the universe of abusive registration of domain names consists of adding generic words before or after the mark (cybersquatting) and subtracting letters from, reversing letters within, or adding letters to marks (typosquatting). The only qualification to marks as dominant is when they are composed of dictionary words to which are added other dictionary words that when combined create associations distinguishable from the marks alleged to have been infringed. An example is Food and Wine Travel Pty Ltd v. Michael Keriakos, Keriakos Media Ventures, D2016-1953 (WIPO November 21, 2016) (<foodandwinetravel.com>). Complainant unluckily lost the domain name by inadvertently failing to renew registration and the proof for cybersquatting did not support either lack of rights/legitimate interests or bad faith. As the Panel pointed out, there are many businesses that use those generic words and there was no evidence Respondent registered the domain name from the general pool on lapse of registration to capitalize on Complainant's mark.

Losing domain names for failing to renew registrations illustrates a not always well understood difference between trademarks and domains, namely that trademarks are owned and domain names (while they may be valuable assets when held) are not. Having a mark is not security for reclaiming a lapsed domain name.

In considering additions, marks are always the dominant part of the composition when arbitrary and fanciful or well-known or famous nationally and internationally and less so when they are on the lower end of the classification scale. For example, the "QQ" (or affixes of like kind) added to "Google" (an arbitrary word) is not (and cannot be) dominant in a composition with a well-known mark, Respondent's argument to the contrary notwithstanding in Google Inc. v. J Renz, FA160900 1694123 (Forum October 28, 2016) (<googleqq.com>) that "QQ" is dominant. Confusing similarity is not lessened however many extra words or (in the cases of letters) added or subtracted. The focus for confusing similarity is the mark.

Plain vanilla cybersquatting simply involves opportunistic registrations even if registrants are ignorant of the law. Squatters give themselves away by either offering domain names for sale, populating their websites with links to businesses competitive with complainants, or passively holding domain names that could have no conceivable non-infringing use if pointed to a resolving website.

In Telstra Corporation Limited v. Graeme Riordan, D2016-2022 (WIPO December 6, 2016) (<telstra.website>) Respondent argues he has a legitimate interest in collecting domain names because he purchases them (currently 3,000 strong) for his "personal satisfaction as ... collectable item[s]." Extensions such as dot website are no different than legacy top level domains in being functional elements to be disregarded in determining confusing similarity. In any event, registrants cannot impermissibly own infringing domain names as collectible items; they have no intrinsic value as collectibles because unlike heirlooms that can be owned domain names composed of appropriated marks (however long they are held) cannot be sold without infringing owners' trademark rights.

Moreover, arguing that identity and confusing similarity refers only to the string to the left of the dot has been soundly rejected although in Telstra the string to the left of the dot is identical to the mark and forfeit regardless of the extension. Respondent in Raincat Online Services v. fluder, CAC 101125 (ADReu February 1, 2016) (AD6.MEDIA) argued that "[t]he disputed domain name is neither identical nor confusingly similar to the protected mark ... [because] [t]he ICANN rules only apply to what's left of the dot [, and that any other reading would be] an abuse of the administrative proceeding. Panel disagreed and domain name transferred."

Not so, however, because when second and top level domains read together yield identical or confusing similarity to a mark claimed to be infringed no amount of argument will make it not so; typical in addition to <ad6.media> are <canyon.bike> and <grab.taxi> where the second level domains by themselves could conceivably be used without infringing complainants' marks but the extensions seal the infringements.

Typosquatting differs from cybersquatting in this respect, that it is easier to support the inference of actual knowledge and closer to a per se violation of the Policy. For example, in TTT Moneycorp Limited v. Guiying Huang, D2016-2030 (WIPO December 1, 2016) (<moneycorp cards.com>) Complainant is a financial institution that issues (among other services) credit cards. The accused domain name mimics complainant's <moneycorpcard.com> by the addition of a single letter "s." There are of course situations where the addition of a single letter (or omission of one) can be lawful but not where the resolving website is found to be "a typical parking website, providing links to websites of the Complainant's competitors and generating revenues by means of a PPC mechanism."

It's useful in understanding evidentiary demands of the UDRP to have a firm theory for forfeiture or retention of accused domain names. As I recently explained registrants called out as cybersquatters generally don't bother to respond to complaints where infringement is obvious from the record, but where the record undercuts complainant's claims as it did in Insight Energy the default is not and cannot be a determinative factor in the award.

By Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP Information about the firm can be found on the Firm’s website at iplegalcorner.com. Mr. Levine has a litigation and counseling practice representing clients in Intellectual Property rights and management, Internet and Cyberspace issues, domain names and cybersquatting, as well as a diverse range of legal and business matters from working with client to resolve commercial disputes, to copyright and trademark counseling and registrations. Visit Page
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Telstra V Graeme Riordan Graeme Riordan  –  Oct 31, 2018 9:23 PM PST

Gerald, I don’t understand your thinking on Telstra V Graeme Riordan your comments are way off the mark, fist of all the administration decision made in this case found no issue with my concept of having a collection of domain names. That case was lost because the registrar used the domain without my knowledge by advertising their services on the landing page.
Items including domain names do not have to have any intrinsic value to be a collectable furthermore if a domain is sold that doesn’t mean there is any infringement on any trademarks, have another try, Graeme

Telstra v. Graime Riordan Gerald M. Levine  –  Nov 01, 2018 5:20 AM PST

Thank you, Graime. You are correct that has no intrinsic value, and therein lies the reason (ironically, perhaps) for its being found an abusive registration. It falls foul of a principle enunciated in another Telstra case, Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), namely that a domain name is infringing where "it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of complainant’s rights under trademark law." The fact that the Panel "found no issue with [your] concept of having a collection of domain names" is not surprising since the fact that you do was irrelevant to the outcome of the case.

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