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Trademarks vs Domain Names: Dictionary Words, Common, Combinations, and Arbitrary Letters

Gerald M. Levine

The typical daily accounting of decisions filed in disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) may include an award or two dismissing complaints (three is particularly noteworthy: <weddingfleamarket.com>, <dme.com>, and <scheduleflow.com> from the Forum for January 20, 2018), but overwhelmingly complaints are granted not dismissed. Let us imagine a trademark or service mark that is neither a dictionary word nor composed of common combinations, would anyone be surprised when the Panel rules in Complainant's favor? (Unless there is an exception, marks must predate registrations of corresponding domain names). Examples of pending cases of non-dictionary, dominant terms (in bold): <legolepin.com>, <dyson-global.com>, <ukcisco.com>, <sanofi.online>, <aetna.health>.

Unless registrations of coined, iconic, or eponymous marks as domain names are justified under fair use (paragraph 4(c)(iii) of the Policy) they will be canceled or transferred, even if, in any of these disputes, registrants have held these domain names decades (and argue laches). Claims of cybersquatting are less certain and more unlikely where domain names are composed of dictionary words, common phrases, stock expressions ("ad salutem" in a recent dispute), or strings of letters (claimed by complainants as acronyms and respondents as arbitrary strings). The pending <ysl.link> will most likely be canceled or transferred but for <dme.com> complaint dismissed (discussed below).

Complaints of one-word marks composed of dictionary words are sparse (they come up from time to time, no current examples in pending proceedings as far as I know, but just decided (discussed below, complaint dismissed). Combinations of dictionary words are more common (all pending and picked at random from other examples of two-word disputes). These are clearly in a different category than the disputes in the first paragraph. While one- or two-word marks may be distinctive in a trademark sense, their distinctiveness may yet not be sufficient to prevent common uses by others. There are two questions, namely 1) whether the words as combined are commonly used or unusual in combination; and 2) website content. This is illustrated by a number of recent disputes, e.g., in which complaints were denied. The less common the combination the greater respondent needs to explain why it registered those particular domain names: digipower.com> and in which complaints were granted based on website content.

For one-word marks, one recent decision stands out, Glory Ltd. V. MicroStrategy Inc., D-2017-1900 (WIPO January 3, 2018) (<glory.com>) and two earlier decisions that exemplify the current state of the jurisprudence and Panel views, Air Serbia a.d. Beograd Jurija v. Domains By Proxy, LLC / Meijun Lu, D2017-1986 (WIPO December 18, 2017) (<jat.com>), Intocable, Ltd. v. Paytotake LLC, D2016-1048 (WIPO July 29, 2016) (<intocable.com>).

In Air Serbia, Respondent argued, and the Panel accepted that "Jat" is "capable of being put to multiple different uses, whether as a pronounceable acronym or as a mark relative to unrelated goods or services which would not necessarily reference or target the Complainant's mark." The Panel held also that Jat was a common idiom in Respondent's linguistic community:

What is more, the Panel notes that the word "Jat" has a dictionary meaning referring to an ethnic group of Indo-European people from North India and Pakistan.

"Weighting this factor in the balance,"

the Panel considers that the Complainant's trademark does not exhibit any notable distinctiveness outside the relatively narrow confines of it use as an identifier of air transport services. Greater emphasis has to be given to the fact that there are likely to be multiple alternative meanings or uses of that term which do not necessarily reference the Complainant's trademark. It is of some significance that while the Complainant has been able to produce considerable evidence as to how it has used the JAT mark over the years, it has not provided any evidence showing or tending to show that the term "jat" is more likely than not to be seen by the public as referencing that trademark as distinct from other possible uses or meanings.

In Intocable, the Panel held that the "word is not merely an acronym or fanciful term that could refer reasonably only to Complainant and its musical group; it is also a common Spanish language word." This case is "therefore distinguishable from other UDRP cases" that reference distinctive personal names, marks, and acronyms. "Intocable" carries a "common language meaning or plausible use." That cannot be said of "Dyson" in <dyson.global> or the other pending distinctive marks that are not idioms in any language, other than trademark.

In Glory, the disputed domain name is made up of a common dictionary word in the English language. "Complainant's GLORY trademark, in turn, is made up of this very term alone and Complainant has not demonstrated that its GLORY trademark is famous or well known (particularly not in the United States where Respondent is located)." If the parties were competitors that would have been a factor in Complainant's favor, but they are "not competitors in the same business, and [Respondent] is not engaged in the distribution of consumer products." Therefore,

This Panel… is willing to accept that Respondent purchased the disputed domain name in February 2003 without any knowledge of Complainant's trademark rights in the term "glory", as it has been laid out in the affidavit of Respondent's Senior Executive Vice President & General Counsel of October 24, 2017.

Further,

This Panel's finding is also supported by the fact that Respondent undisputedly never attempted itself to contact Complainant with the offer to sell the disputed domain name, but that Respondent quietly held the disputed domain name for 13 years. Upon being contacted by Complainant, Respondent at first ignored Complainant's letter of October 24, 2016, and Complainant's following emails of January 11, 2017, and March 1, 2017, and only finally responded with an unreasonably high demand on March 3, 2017, asking for a sales price greater than USD 10 million, which Respondent says it could not believe the Complainant would accept.

This view, incidentally — recognizing investors' right to put a value on a domain name even if it is ridiculously high — is squarely the consensus assuming there is no evidence the domain name was registered for proscribed purposes.

Common dictionary words combined as marks are difficult to protect unless there is solid evidence of bad faith registration or respondents fail to curate their websites. (This is likely to become a more contested factor as original registrants dispose of their portfolios to new investors). But what of PLANTFUSION, NUDELIVE, or the other pending two-word disputes? Are these combinations idioms owned by the first to register or uncommon noun or adjectival phrases? They are certainly common words. Some insight into Panel views is found in a couple of recent decisions.

In UAB "BIOK laboratorija" v. Jinsoo Yoon, CAC 101743 (ADR.eu October 26, 2017) the word (or phrase, if divided) "Ecodenta" does not appear in "dictionaries, whether in English, Lithuanian, or Korean." "Indeed" [the Panel continues] "the word appears to be used by the Complainant for its range of products. There is, of course, the possibility that the word could be used for other purposes, given its simple construction (eco for ecological and denta for matters related to teeth), but the Panel cannot attribute such an approach to the Respondent." There are two reasons for this: 1) "the presence of pay per click links not associated with (for instance) a genuine meaning such as a dictionary word points mitigates against the possibility of legitimate interests being found through such commercial uses", and 2) "[t]he deliberate registration of a name for which there appears to be no current meaning other than the products made and exported by the Complainant is relevant."

Panels are looking to determine whether the words carry any "current meaning other than the products made [or services offered]" by complainants. Thus, for <plantfusion.com> or <nudelive.com> and the other pending two-word domain names, for example, the answer will rest in large measure on Respondents' explanations for their choices and the contents of the resolving websites. In 2017 there were "pink sheet" and "print factory" in respondents' favor and "digi power" and "equip trader" in complainant's favor.

In Duoserve, Inc. d/b/a ScheduFlow v. Paul Tyrrell / ScheduleFlow Pty Ltd., FA171100 1759845 (Forum January 17, 2018) (SCHEDUFLOW and ) the mark is a coined word and for this reason the three-member Panel held the domain name was not identical or confusingly similar to the domain name. (This highlights a problem with coined words!) Complainant failed to make "first base" although the Panel went on to analyze the second and third requirements just to round off the assessment and found reverse domain name hijacking.

That leaves, the latest three letter string, "dme." In DME Company LLC v. unknown unknown / DME Online Services, Ltd., FA171100 1759818 (Forum January 19, 2018) (<dme.com>) the majority ruled against rights or legitimate interests but unanimous in finding no bad faith:

As Respondent points out, Complainant's mark is just three letters, susceptible of many meanings and interpretations.... Evidence of actual knowledge typically takes the form of (1) a respondent's web site being almost identical to the complainant's web site, (2) a history of close association, e.g., previous employment or other personal or business relationship, between complainant and respondent, or (3) a trademark that is indisputably famous world-wide, such that a denial of actual knowledge is rendered manifestly implausible. Nothing of that sort exists in the case.

There should be no ambiguity about the views expressed in these decisions. Complainants must have concrete evidence of cybersquatting. It is not enough to argue respondents have no right or legitimate interest because they are only using their websites to sell domain names, or not using the domain names at all (non-resolving to websites or carrying "for sale" banners). These are lazy arguments!

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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