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Higher Standard of Proof for Trademarks Composed of Surnames and Geographic Terms

Trademarks composed of a founder’s name, Bloomberg for example, that have significant market recognition internationally have a high level of protection regardless of the respondent’s residence, but if by coincidence the surname is also a geographic indicator the complainant’s proof of targeting – a sine qua non under the UDRP – must be concrete and persuasive. The Respondent in Leyton & Associés (SAS), Thésée (SAS), Leyton Consulting UK and Ireland Limited, Leyton Maroc, Leyton Belgium, Leyton UK Limited v. Drela Mateusz, Elephant Orchestra, D2009-1589 (WIPO January 20, 2010) registered <leyton.com>, the name of a place in the northern part of Greater London. The Complainant has offices in a number of countries but does not do business – or at least presented no evidence of business – in the Czech Republic, the Respondent’s residence.

Lack of evidence of targeting, of course, is a significant lacuna. In these circumstances, if there is to be benefit of the doubt it favors the respondent. “To sum up, there are no facts or compelling evidence in this proceeding indicating why the public should identify the term Leyton with the Complainant.” The Respondent alleged that he “acquired the domain name … with the intention of building a website related to the Leyton area.” Though his intention is contemplated rather than actual – he presented no evidence of demonstrable preparations for a defense under paragraph 4(c)(i) – nevertheless it could not be said that the registration of the domain name was in bad faith. “It seems to this Panel at least as likely as not that the Respondent, who is doing online business in the United Kingdom, acquired the disputed domain name because of its generic meaning and not with a view to the Complainant’s possible rights, and in that sense, the benefit of the doubt on the present record must be afforded to the Respondent.”

The Panel in Leyton Consulting draws a distinction between domainers who register generic terms that are coincidentally used by third parties as trademarks and those who register terms that call into question the respondent’s good faith. The higher standard for domainers was introduced in Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO February 24, 2006). The Panel proposed a test for the high volume registrants in the form of a set of questions. For registrants who regularly engage in the business of registering and reselling domain names, and/or using them to display advertising links, they must show that

– It makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
– The domain name in question is a dictionary word or a generic or descriptive phrase;
– The domain name is not identical or confusingly similar to a famous or distinctive trademark; and
– There is no evidence that the Respondent had actual knowledge of the Complainant’s mark.

However, being a “professional domainer does not automatically lead to the assumption that the disputed domain name was registered in bad faith …; some evidence is required, and the standard tends to be somewhat higher in cases involving geographical identifiers and marks that are less distinctive.” It is true that in Mobile Communication the Respondent failed to explain its registration of <mobilcom.com>, but the principle is sound, that willful blindness to a third party’s rights in a distinctive trademark is evidence of bad faith. That is less pronounced with domain names composed of generic terms used by many businesses and monopolized by none. “After all, the registration of domain names because of their attraction as generic terms is a business model permitted under the Policy, and there is no general obligation under the Policy to conduct searches in order to find out whether a domain name might infringe third parties’ rights.”

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