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Addition of a Dictionary Word to a Dictionary Word Trademark

It is not surprising that holders of trademarks on the lower end of the classification scale insist that their compositions are suggestive; something more than merely generic or descriptive which may be denied registration. They want to push their symbols up the scale; to claim for them more than their worth; to give them added value. They do this protectively, of course, because, after all, as dictionary words their trademarks are also common currency, available for use by others without permission for commercial purposes having nothing to do with the trademark holder. Marriott International Inc. and Marriott Worldwide Corporation v. Avalon Resorts Pvt. Ltd., D2010-0172 (WIPO March 22, 2010) (COURTYARD and <Avalon-courtyard.com>). The prefatory comment holds true unless there is evidence to support the conclusion that the respondent chose the disputed domain name for its association with and intending to exploit the complainant’s trademark, as in Oneworld Alliance v. Thomas Ruane, D2010-0043 (WIPO March 11, 2010) (ONEWORLD EXPLORER and <oneworldexplorer.com>).

The Complainant in Marriott International argued that “[t]he addition of a dictionary term to a trademark does not make the disputed domain name substantially different to the mark.” This is true as a general proposition, and sufficient for jurisdiction, but combining dictionary terms does not foreclose rights or legitimate interests in a domain name and is not a per se violation of the holder’s trademark rights. “Courtyard” is not removed from the public domain because it may be distinctive when applied to hotel accommodations, but that does not prevent the mark from having “any number of associations not connected with the Complainant.” A domain name comprised of a common dictionary term violates a trademark holder’s rights if the protected term alone or in combination is used in such a manner as to suggest an association reserved to the holder, but it cannot preclude other uses that create different associations.

Although there is only one COURTYARD there are many “courtyards.” The Respondent operates 52 luxury services apartments in New Delhi” under the name “Avalon Courtyard – Residences & Suites”. “Courtyard” associated with “Avalon” is not “Courtyard” associated with Marriott operated hotels. A “party seeking to establish exclusive rights carries a heavy burden of proof for removing the term from the public domain,” Lodging Kit Company Inc. v. Natalie Soffer, FA0909001283398 (Nat. Arb. Forum November 5, 2009) (the Complainant was unable to persuade the USPTO that the term LODGING KIT was anything other than “merely descriptive’ and had to settle for the Supplemental Register).

Where Marriott’s “Courtyard” aspires to the suggestive Avalon’s is purely generic. Courtyard is defined as “an unroofed area that is completely or mostly enclosed by the walls of the large building” which Respondent stated is “descriptive of its properties.” In any event, the Respondent owned the name “Avalon” and conducted a legitimate business which supported its defense under paragraph 4(c)(i) of the Policy. Rather than close the proceedings at this point, the Panel continued its analysis into the bad faith element to reject two other contentions as being without merit. First, the Complainant alleged that the Respondent was taking “unfair advantage” of its “rights in some way” (emphasis added); second, that the domain name was being held passively to redirect the Internet user to another website (<avalonhospitality.com).

The argument that “it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain featuring the Complainant’s COURTYARD mark” is dangerous because it invites the Respondent to establish its credentials. Where a respondent offers evidence legitimizing use of a word which another uses as a trademark it is “possible to conceive a plausible circumstance” different from that imagined by a complainant. The second argument is equally unpersuasive in “the circumstances of this case [because] … the disputed domain name … cannot be properly characterized as being ‘inactive’ merely because it reverted to another web address.” In Marriott International the Respondent’s domain name reverted to its home website.

Levine Samuel, LLP. <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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