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Dictionary Words, Compounds, Phrases and Acronyms

Trademark dictionary words, compounds, phrases and acronyms (or strings of arbitrary letters complainants claim as trademarks) are regularly contested in UDRP proceedings. The registry of trademarks includes numerous dictionary words used fancifully or arbitrarily –– “apple”, “blackberry,” and “orange” (just to name some in the fruit category) –– whose marketplace associations for particular sources of goods or services are fixed in the firmament. Complainants have been unsuccessful with INSTEAD, LANDMARKS, MALL, NOBLE and VERB, GLOBWAY and CLEARWATER (discussed in a recent blog). VOGUE and TIME are famous and have prevailed in UDRP disputes, but “Match”, “Nature” and “[The] Economist” that are equally well known publications, have lost to respondents using those words for their ordinary meanings. Compounds such SNOWBOARD, ROLLERBLADE and COUNTRYGIRL favor respondents if there is no evidence of targeting.

Two, three and four letter strings have often been claimed as acronymic trademarks, which respondents defend as simply arbitrary letters. There are iconic acronyms that are not mere random strings of letters such IBM, HP, NBC and VW, but LV (a trademark owned by Louis Vuitton Malletier S.A.) could stand for Los Vegas (<lv.com>) or Latvia (<lvmobile.com>). Letter strings are analyzed in General Nutrition Investment Company v. John Gates / The Web Group, D2014-0982 (WIPO September 8, 2014) in which Complainant argues that Respondent’s registration of GNC infringes its right to exclusivity of that string. The Panel was not persuaded:

Although it is apparent to the Panel that the GNC Trademark has a long history of use and is well-known in numerous countries, it is also apparent to the Panel that the acronym “GNC” also is used by numerous unrelated third parties for goods and services seemingly different than those offered by Complainant. Therefore, the Panel finds that mere registration and use of the Disputed Domain Name, without more, does not constitute bad faith under the circumstances of the facts in this proceeding.

The decision is in line with decisions on other strings. In OVB Vermögensberatung AG v. Michele Dinoia and SZK.com, D2009-0307 (WIPO May 6, 2009) for example Respondent used <ovb.com> as a “portal site containing advertising links for knives and cutlery.” Complainant was not the only claimant for the string. Ironically, the string was not random letters but an actual acronym unclaimed by a third party in the cutlery business. Also, TMG Technologie Management Gruppe Unternehmensberatung für Markt und Innovation GmbH v. Whois Privacy Protection Service, Inc., D2005-0161 (WIPO May 9, 2005) (denying transfer of the domain name <tmg.com>). In that case, the panel wrote:

The Complainant has not given any evidence of to what extent the TMG mark is known, and has not presented any evidence to support his assertion that the Respondent knew of the mark when registering the Domain Name.

The evidentiary hurdle is particularly high for strings used by many entities independent of the Complainant’s acronymic registration. See for example Fundación Santa María-Ediciones SM v. M.A. Stenzel, D2013-0818 (WIPO July 24, 2013) (SM and <sm.net>). As a general rule an offer to sell commercially valuable dictionary words and random strings of letters that could be claimed as acronyms is a legitimate business practice. Because the “gnc” could be widely claimed by many trademark owners as an acronym it is in effect stripped of any particular market association; in essence, it becomes no more than an arbitrary string of letters, although if ever used improperly it could still be vulnerable to forfeiture.

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