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Concurrent Use of Lexical Elements for Domain Name and Trademark

Concurrent uses of lexical elements that also happen to be trademarks are not necessarily the result of abusive registration and are not improbable where the parties 1) operate in different markets and offer goods or services in different classes, 2) there is no evidence that the respondent had prior knowledge of the complainant or its trademark, and 3) the lexical elements form a common word or descriptive phrase. The parties in G DATA Software AG v. Geologic Data Systems, D2010-0389 (WIPO May 10, 2010) offer completely different services but the Respondent uses <gdata.com> as a domain name and e-mail address while the Complainant is the registered trademark owner of G DATA.

The UDRP recognizes that two parties can equally be entitled to the use of lexical elements where the respondent’s use of the domain name is unrelated to goods or services offered by the trademark holder, Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) (<autocar.com). On the other hand, a respondent who is also a competitor has a heavier burden than one offering different goods or services and its conduct is more likely to be found opportunistic, Life Extension Foundation, Inc. v. PHD Prime Health Direct Limited, FA0910001289603 (Nat. Arb. Forum November 25, 2009) (<lifeextensionfoundation.com>).

The Complainant in Forex Club International Limited v. INO.com, Inc., FA1003001316362 (Nat. Arb. Forum May 17, 2010) argued that the Respondent was a competitor because both offered services in the financial area. The dispositive issue, however, concerned the Respondent’s purchase of <forexclub.com> when it came onto the secondary market in 2005. The domain name had apparently been owned by the Complainant or an earlier incarnation of it between 2002 and 2005, but its U.S. trademark was not issued until 2008 with a disclosed first use in commerce date in 2005. It apparently had an earlier market presence in Europe. However, it offered no explanation whether its loss of the domain name was due to inadvertence or abandonment. In 2009 it made contact with the Respondent in an attempt to purchase the domain name, was unsuccessful and commenced the UDRP proceedings.

Good faith registration is reinforced where a respondent establishes that it operates a genuine business contemporaneously with the complainant and has a history preceding a notice of dispute and commencement of the proceeding [paragraph 4(c)(i) of the Policy]. Respondents in G Data and Forex Club made offers of proof that they had both rights and legitimate interests in the disputed domain names. This is sufficient to withstand forfeiture.

Gerald M. Levine <udrpcommentaries.com>
E-Mail:  gmlevine@researchtheworld.com

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