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Common Word Trademarks Defensible By What Respondent is Offering

Respondents registering common words that spell the name of a business or charitable entity state a good defense only if they use the domain names in the generic sense of the words and are not competitors. We saw this in Fashion Career Center, LLC v. Resume Pro Writers Guild c/o Michael Hunt and Mercado, FA0912001296574 (Nat. Arb. Forum January 20, 2010), RESUME PRO (registered trademark) and <resumeprowriters>, competitors and abusive registration; and, Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010), AUSTIN AREA BIRTHING CENTER (unregistered trademark) and <austinbirthcenter.com>, competitors but not abusive registration. While both domain names are confusingly similar to the Complainants’ trademarks the first incorporates the precise wording of the trademark, while the second is descriptive of the services offered by the Respondent.

In The Law Society v. S.H. INC, D2009-1520 (WIPO January 22, 2010) the Respondent registered <lawsociety.com>; the trademark registration is THE LAW SOCIETY. Taking advantage of the recognition that a complainant has created for its mark is not a bona fide offering of goods or services, but there has to be proof of targeting not simply an allegation, Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum May 25, 2004) (<target.org>, the links “relate to target practice, hunting, archery, and other sports equipment.”). Pay-per-click domain names are not prohibited under the Policy and can support a legitimate interest. But while good faith registration is not inconceivable no legitimate interest is established for a pay-per-click website offering links to information that an Internet user may expect to find on the complainant’s website. Such use violates paragraph 4(b)(iv) of the Policy and by inference was registered in bad faith.

The Respondent’s claim that it is only using generic terms – how can anyone in his right mind claim a monopoly on “law” and “society”? – is measured against the “critical question of whether the Respondent registered (and has been using) the domain name in order to profit from the claimed generic value of the expression, or whether its intention was to take advantage of the Complainant’s rights in the expression.” The Panel noted that the Respondent is “clearly not a law society…. Why else would an entity which is not a law society, and has no apparent connection with any law society, choose the disputed domain name” if it were not to attract Internet users looking for the Complainant’s website?

The decision in The Law Society also touches on an issue that respondents should pay attention to, namely that the Respondent “has elected not to provide information which was within its exclusive control, relating to the date and circumstances of its acquisition of the disputed domain name, and the circumstances in which the United Kingdom links came to be placed on the Respondent’s website.” In the absence of explanation “the Panel can only sensibly infer that the relevant intention must have been to create confusion with the Complainant’s mark, with a view to commercial gain (in the form of increased ‘pay-per-click’ or other advertising revenue).” While inferences in favor of a respondent can be drawn where there is evidence to support it, inferences against it will be drawn where it fails to make the necessary offering.

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

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