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Domaining with Descriptive Names

However similar domain names are to trademarks, even confusingly similar does not diminish a respondent’s legitimate interest based on its making a bona fide offering of goods or services before notice of the dispute. Advertising and search portals deriving pay-per-click revenue are not proscribed unless there is evidence that the domain name was intentionally registered to take advantage of the complainant’s trademark. Trademarks on the descriptive end of the classification scale have a greater burden, must offer more proof than those on the arbitrary and fanciful. “Knowledge of Complainant’s rights is an essential part of the bad faith analysis,” Russell Frey d/b/a edHelper v. International Services Company SA c/o Administration Dom, FA0910001288396 (Nat. Arb. Forum December 8, 2009). There is not much distance between EDHELPER and <eduhelper.com>, but enough for one of the Panel to find similarity but not confusion because of the “u”. As an extension .edu denotes an educational institution. However, both are descriptive of the services each offers. Nothing in the record persuaded the Panel en banc to deny the complaint. It held

Taking account of the inherently descriptive character of both the trademark and the disputed domain name, the degree to which either very similar domain names or identical domain names with different extensions have been registered/used by others, the lack of evidence that Respondent has habitually abused third party trademark rights, and all of the circumstances, the Panel finds that Policy ¶ 4(b)(iv) is not made out.

In part the denial is not unexpected, but it is useful to point out the tools of research available in defense of a descriptive name. Some form of “ed” or “edu” and “helper” are popular combinations on the Internet as well as domain names. The Respondent pointed out that a “Google search for the ‘edu’ + ‘Helper’ and excluding ‘edhelper.com’, shows over 3.8 MILLION results. A Google search for ‘eduhelper’ as a single term shows 8,320 results. Excluding Complainant from this search shows 8,140.” There are “over 122,225 domain that have been registered that start with the term ‘EDU’.” And so on. Such numbers are persuasive evidence that a complainant with a trademark indistinguishable from countless others using similar combinations of common abbreviations cannot monopolize them.

Internet tools that help a respondent establish the commonness of combinations can also instruct complainants about the limitations of their trademarks. The Complainant in Russell Frey registered EDHELPER and EDHELPER.COM in 2005 and 2006. At that ancient time the combinations may have appeared more fanciful than they do now. Reputations grow in time, but when marks are examined for public awareness at an earlier date a defense of lack of knowledge is plausible, particularly for parties geographically distanced as are the parties in Russell Frey, Virginia, USA and Luxembourg. Under these circumstances, “the Panel [was] not prepared to fetter Respondent with constructive knowledge of Complainant’s trademark rights.”

Gerald M. Levine, <udrpcommentaries.com>

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