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Vulnerabilities of Weak Marks and Uncurated Websites

Gerald M. Levine

Dictionary words, alone, combined as phrases, modified by other parts of speech, and single letters that function as marks also retain in parallel their common associations that others may use without offending third-party rights. As a rule of thumb, generic terms are not registrable as marks until they perceivably cross a threshold to suggestive and higher classifications. Even then, if terms are capable of multiple associations (even though distinctive in a trademark sense) and there is no evidence of trespassing on complainant's rights, registrations of domain names identical or confusingly similar to marks will not violate the Uniform Domain Name Resolution Policy (UDRP). But where domain names attract visitors for their trademark association or the resolving pages contain links to competitive products or services then they are infringing even if actual knowledge of complainant or the mark is denied.

In all UDRP disputes, there are factors that weigh heavily in one direction or the other. That a domain name registrant may claim letters are random or word combinations innocently chosen does not foreclose proof they are infringing. This raises the interesting question of weak marks and uncurated content. In the interplay between marks, domain names, and content, weak marks, and uncurated content favor complainants. By curation, I mean pruning content to avoid suggesting any association with the complainant or its competitors. This puts a premium on curated content.

The ultimate test of abusive registration in a proceeding under the UDRP is not identity or confusing similarity (which is merely a first step in establishing standing) but bad faith registration and use where respondents are shown to lack rights or legitimate interest in the domain names. This is to say that marks on the lower end of the spectrum may be distinctive when they specifically relate to goods or services, but generic when the connection to the marketplace is weak.

The letters "k" and "p" and "i," "m" and "i" (discussed below, already decided) and multiple other two or three letter domain names ("ktg" and "ivi" pending adjudication), that to mark owners are their distinctive indicators but to others are simply random letters, can be both, or more one than the other,depending on respondents' business model and use. Similarly with word combinations such as "herb" and "farm" or "print" and "factory" both of which are composed of common language parts, yet "herb" when prefixed with an "i" (the dominant part of the mark) stands higher on the classification scale as more inventive, which is not to say that under the right factual circumstances even that combination cannot be used by someone else, lawfully, but the Panel held it was not in iHerb, Inc. v. nathan hatter / blackonomics global trust group, FA1710001754609 (Forum November 16, 2017). I will return to this case in a moment.

The issue of letter strings and curation is played out in a particularly intriguing dispute between the mark IMI and the domain name. Respondent in Irving Materials, Inc. v. Black, Jeff / PartnerVision Ventures, FA1710001753342 (Forum November 7, 2017) registered the domain name in 1994 (23 years ago, although the mark predated the registration by decades!). Respondent did not appear to defend itself and lost. Why? It was not (according to the Panel) because of the default but because of the contents of the website (disclosure, the Panel, Neil Anthony Brown, QC authored the Foreword to my treatise, Domain Name Arbitration). I put this down to a curation problem; if a valuable domain name is identical or confusingly similar to a weak mark, it is necessary to attend to its contents. The Panel noted that

Complainant's screenshot confirms [that] ... the domain name contains various IMI related links and descriptions of the content located at the linked webpage.

This decision has been criticized for two reasons, namely the letters are arguably random and the length of time between registration and complaint. See Matt Serlin, UDRPs Filed–j Brand Owners Take Note (I think a better fit the title would be "Investors Take Note!) The second reason raises again the issue of laches as a complete defense, except that the equitable bar is only dusted off when there is no infringing use. Marks that predate domain names have potentially actionable claims, but only realized with proof of abusive registration, and in this particular case the proof was provided by the uncurated page to which <imi.com> resolved.

If website contents are properly curated, domain names must remain with respondents. As I read the ICI decision, the content supported Complainant's contentions. Either Respondent decided not to appear and offer a counter-narrative, or it was unaware of the proceeding. However, the Panel acted on the record before him, and that record supported Complainant.

The record in PCO AG v. Register4Less Privacy Advocate, 3501256 Canada, Inc., D2017-1778 (WIPO October 30, 2017) was better. The domain name was originally registered in 2000, although not acquired by this Respondent until 2008, which postdated Complainant's first use of its mark in commerce. The Panel explained that

A number of UDRP cases relating to three-letter domain names reflect the fact that such terms are generally in widespread use as acronyms or otherwise and it is entirely conceivable that a respondent registered such a domain name for bona fide purposes.

Obviously, each case will rest on its own factual circumstances. So, is there any evidence here which suggests that the Respondent registered the disputed domain name with the Complainant in mind? According to the Panel, there is not:

The Complainant claims to be widely known by the name "PCO" and to have a strong reputation worldwide but it has supplied no evidence in support of this assertion. In any event, the Complainant appears to operate in a somewhat niche and specialist sector and, even if the Complainant does possess a strong reputation in its field, there is nothing to support the Complainant's claim that the Respondent was "obviously" aware of the Complainant on acquisition of the disputed domain name.

Needless to say, the position would be different if the disputed domain name has been used for a website relating in some way to the Complainant's industry, but there is no evidence of any active website at the disputed domain name. The Panel continued:

[N]otwithstanding the Respondent's default, the Panel concludes that the Complainant has failed to establish bad faith. While the Panel takes account that, for whatever reason, the Respondent has not appeared in this proceeding to contest the Complainant's allegations, this is outweighed by the fact that the disputed domain name is [a] common three-letter acronym and there is no evidence whatever to link the Respondent's selection of the disputed domain name with the Complainant. The Complainant's key conclusions are unsupported and conclusory.

"Unsupported and conclusory." Those words are the kiss of death in a UDRP (as of course, it would also be in a litigation). The fact is, Complainant lost despite having a valid mark because it failed to support its contentions.

In Aurelon B.V. v. AbdulBasit Makrani, D2017-1679 (WIPO October 30, 2017) the Panel explained that although "use for PPC purposes of a domain name which is identical to a trademark, combined with an offer to sell the domain name for valuable consideration will [ordinarily] satisfy the requirements of the Policy ... [and those] precedents might have [mis]led the Complainant to believe that domaining is not admissible under any circumstances," that does not hold under all factual circumstances. What may be surprising to mark owners (although it should no longer be!) is that "speculative business models that are developed around the scarce resource that domain names are [are not unlawful]."

Two-letter strings are certainly a scarce resource. In John S. and James L. Knight Foundation, Inc. d/b/a Knight Foundation a/k/a KF v. Matthias Felger, FA1709001749586 (Forum November 6, 2017) involving a two-letter string <kf.org> the domain name was registered in 1997. The Panel rested its decision on several points, including lack of evidence that Respondent could have known about Complainant (the letters are not even random, but Respondent's initials):

Complainant in effect replies by pointing to the fame of the letters KF, and it adduces several pieces of evidence to support its contention. The Panel has taken considerable time to examine the specific searches relied on by Complainant and finds them singularly unpersuasive. It is not necessary to dissect them in detail, but one illustration to show the Panel's assessment of this evidence is the search result obtained from a Google search done by Complainant designed apparently to show how KF is widely understood to refer to the Knight Foundation, as the search produces results referring to Complainant and not to others. But it seems to the Panel to be of little use to search the expressions "knight foundation" "kf" ", which appears to have been done, as it will obviously produce the results obtained.

As the Panel explains

The test should be how the market sees KF itself, standing alone, as that is the trademark claimed by Complainant, and when the same search is done of those letters together, it produces results that make no mention of Complainant but many references to parties other than Complainant. The Panel is therefore not satisfied that any of the evidence adduced helps Complainant to prove its case for a common law trademark.

There are certainly cases in which generic terms that would ordinarily favor respondents are lost for puzzling reasons. I've pointed them out in earlier essays, and also noted that in ACPA actions UDRP awards have been vacated because of the weakness of mark and curating of the website. The point that must be emphasized is that UDRP jurisprudence favors established rights (whether of mark owner or domain name holder), but parties have to recognize the evidentiary demands that float or sink a case.

To return to the beginning, to the <iherbfarm.com> dispute. Respondent stated that it would have no problem with "allowing you to buy ... iHerbFarm.com from us but we will not be transferring over our product for free." It expected to be compensated for the website, which is fair enough if the evidence matches the contentions, but in this case the,

domain name resolves to a website that purports to sell cannabis products from which Respondent likely profits. See Compl. Ex G. As the Panel has observed already, the use of Complainant's trademark, creating a confusingly similar domain name and using it to promote sales of cannabis products, whether lawful or not, wrongly suggests to the internet user that the sale of such products as promoted on Respondent's website is a business activity of Complainant.

Where the UDRP jurisprudence now stands in its development is that strings of lexical characters (letters and words) that by happenstance are identical or confusingly similar to complainants' marks, but whose values are built on the semantic senses for which they are used or can be used, cannot be forfeited to complainants in a UDRP proceeding. But incorporating marks (even of the "imi" class) to sell products or services or populating websites with hyperlinks to competitive products will surely be found infringing. The burden of complainants with weak marks is to establish their reputation and respondents' knowledge of them; and for respondents with valuable domain names, to curate them to avoid forfeiture.

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.
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Promoted Post

Buying or Selling IPv4 Addresses?

Watch this video to discover how ACCELR/8, a transformative trading platform developed by industry veterans Marc Lindsey and Janine Goodman, enables organizations to buy or sell IPv4 blocks as small as /20s.