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Identical or Confusingly Similar to Trademarks but Noninfringing Domain Names

Domain names may be confusingly similar to trademarks or even identical or but not infringing. This is particularly true of trademarks acquired later than the allegedly infringing domain names ArcBest Corporation v. Domains By Proxy, LLC, Registration Private / Vernon Troupe, D2016-2381 (WIPO January 13, 2017) (<arcbest.com>, in which “ark” is a contraction of “Arkansas”), but it can also apply to marks composed of common element that predate domain name registration, most recently World Future Society v. S.F.P. Koopmans, BCG eBrpojects B.V., D2016-2347 (WIPO January 13, 2017) (<worldfuturesociety.com>, Complainant U.S. and Respondent the Netherlands) in which the Panel examined the Respondent’s use of the domain name and concluded that “since the registration of the Domain Name over 13 years ago the Domain Name has been used to operate a website for the Respondent to occasionally blog about matters of personal interest, including the Respondent’s own politics.” Geographic location of the parties is also a factor in terms of proving knowledge of the mark.

In the first class of cases, trademark owners have no actionable claim in a UDRP proceeding, although they continue to initiate proceedings, sometimes sanctioned with reverse domain name hijacking as in Georg Mez AG v. Mez Kalra, D2016-1932 (WIPO January 6, 2017) (<mez.com>) and Easton Corp Pty Ltd v. Privacydotlink Customer 951873 / DNS Admin, Best Web Limited, D2016-1975 (WIPO November 12, 2016( (<hottie.com>), and sometimes (surprisingly) avoiding sanction as in MAS S.A.S. v. Joseph Kattampally, D2016-2408 (WIPO January 12, 2017) (<maaji.com>); Quintaz B.V. and Hoooked B.V. v. Whoisguard Protected, Whoisguard, Inc. / Terry Lee, D2016-2470 (WIPO January 9, 2016) (<hooked.com>);  and The Lincoln Electric Company v. Assistant Mailroom Clerk Trainee / EXISTech Corporation, FA1611001704079 (Forum January 8, 2017) (<weartech.com>).

In the second class of cases, complainants’ difficulties of proof rest in part on their linguistic choices for distinguishing themselves from others; and in other part in establishing proof respondents acted intentionally with knowledge of their marks. CIA. Industrial H. Carlos Schneider v. WHOIS Privacy Service Pty Ltd. / Domain Admin, Ashantiplc Limited, D2016-2167 (WIPO January 26, 2017) (<ciser.com>). While the Panel majority recognized that “the term ‘-ciser’ is sometimes used as a suffix in words such as ‘x-ciser’ or ‘shoulder-ciser’ it found “no evidence that the suffix ‘ciser’ has any generic meaning if used individually.” (The third member of the Panel was more cautious in declaring “ciser” lacked generic meaning). Nevertheless, the Panel held that “[i]n the circumstances of the case, and absent evidence to the contrary, it seems that Complainant acquiesced in Respondent’s registration of the disputed domain name.” Also, Complainant failed to provide any “explanation as to why it abandoned the registration of the disputed domain name [in 2006] and waited for more than a decade to file a complaint.”

ICANN Panels tend to agree with respondents that domain names composed of short strings of characters (acronymic or otherwise) and common words can be non-infringing where they are capable of having multiple associations unrelated to complainant’s goods or services, thus attractive to many businesses and for that reason, valuable. In Georg Mez, the three-member Panel held that Respondent

has established that, as one might expect, the term ‘MEZ’ is in widespread use, particularly as an acronym and that the disputed domain name is part of a pattern of similar three-letter domain names owned by it.” The Panel noted in its sanctions discussion that “Complainant … failed by a large margin.” It sanctioned Complainant for commencing a “Plan B” proceeding primarily because of its lack of candor and for failure to offer any evidence of bad faith.

Unless complainants marshal proof respondents intended to take advantage of their trademarks, registrations will not be disturbed. This affirms the law that monopoly on words, names, symbols, or devices extends only so far. The Panel adjudicating rights to <camilla.com>, for example, got it wrong in awarding the domain name to Complainant on the theory that a later mark can have superior rights. We can infer “getting it wrong” from the result in a subsequent action under the ACPA in which the trademark owner (appearing as defendant) consented to a judgment ordering the UDRP award vacated in its entirety. Mrs. Jello, LLC v. Camilla Australia Pty Ltd. 15-cv-08753 (D. NJ 8/1/2016).

Excluding iconic short strings with international reputations, the fewer the number of characters the larger the possibility for non-infringing associations. Short strings of random letters can as easily be associated with one party as with another—“SSX,” “TRTI,” “NVRT,” “QLP,” and “KGP” have featured in earlier proceedings. The same also applies in using dictionary words and common expressions. Complainants may have established niches in their markets but their choices are weak even though qualifying as marks: “LUNCH MAIL,” “ROSEFIELD,” “SNOREFIX.”

There’s another reason for complainants’ disappointment, namely that respondents have learned their lessons well in choosing their acquisitions, populating their websites, and retaining experienced counsel. The argument in CIA, for example, that the decade old lapse supported acquiescence is particularly creative. Clients and counsel lacking an informed knowledge of the evidentiary demands of the UDRP will overlook supporting facts.

This can be seen in Advanced Analytical Technologies, Inc. v. Hare, Myles / URL Enterprises Ltd., FA161100 1701430 (Forum January 1, 2017) (<aati.com>) in which Complainant (same counsel as in Easton and CIA) built its argument around a claim that it had “used AATI as a brand name since the incorporation of its company in 1997” but Respondent countered this by offering evidence that Complainant only used the acronym “AATI” as a trade name which is not a protected right ; also that it “encountered failure—twice—in attempting to register the AATI mark with the United States Patent and Trademark Office (‘USPTO’).  The first attempt was abandoned after refusal by USPTO.  The second attempt was cancelled because registrant did not file an acceptable declaration under Section 8.”

Additionally, in Advanced Analytical Technologies the parties had competed for the domain name in an auction in which Respondent was winning bidder. The Panel pronounced that “Sale of domain names for profit is not proscribed by the Policy or the ACPA.”

This case and others illustrates an important point, namely that respondents have learned to play to their strengths. This includes establishing a proper counter-narrative. There’s no point in alleging actual or constructive knowledge because a respondent’s denial of knowledge is notoriously difficult to refute (unless respondent has failed to pay attention to its own evidentiary demands).

Shorts strings of random letters (random that is to respondents even though they may be acronyms to complainants) comprise one subset of weak marks. Another subset are dictionary word marks either alone or combined with other common words capable of standing alone with other associations distinctive from complainant’s mark or are making bona fide offers of goods or services.

ROSEFIELD is an interesting example. Rosefield Watches B.V. v. Bryan Wick, Cheapyellowpages.com, D2016-2187 (WIPO December 15, 2016) (<rosefield.com>). Pro se Respondent (making all the right arguments) indicated there are at least four possibilities for non-infringing use: 1) the geographic name of places located in the United States, such as Rosefield, Illinois, Rosefield, North Dakota, Rosefield, South Dakota and Rosefield, Louisiana; 2) a generic expression meaning “in roses” or a field of roses; 3) a generic term used in numerous unrelated trademarks worldwide; and 4) a surname.

It is not sufficient merely for complainants to rest on having registered marks in the absence of proof of targeting. This is so even where there may have been some evidence of infringing content. For example, upon being served with notice that its parking site was targeting Complainant’s area of business the Respondent in Rosefield “promptly gave instructions to adjust the algorithm being used in order to remove the offending links from its website.” The Panel concluded that “Respondent’s modification of the content displayed on the website at the disputed domain name after receipt of the Complainant’s cease and desist letter [did not] amount[ ] to bad faith as alleged by the Complainant.”

One further example for common expressions is “cut sheet labels.” In Sheet Labels, Inc. v. Harnett, Andy, FA161100 1701423 (Forum January 4, 2017) Respondent’s domain name incorporated the mark with the prefix “cut” but it demonstrated it had “operated its online business via the at-issue domain name <cutsheetlabels.com> well in advance of any notification to Respondent of the current dispute between the parties.” The addition of “cut” creates a distinctive name “descriptive of the products offered by Respondent.” In fact, “Respondent demonstrates that it used the <cutsheetlabels.com> in furtherance of an active cut sheet labels business.”

There are two factors critical to the outcomes in these disputes, namely complainants’ lack of any special identity to particular strings of random letters and words, and respondents’ prior or contemporaneous rights to register letters and words common in the public domain. Domain names composed of random letters are valuable precisely because of their desirability to many parties even though by happenstance complainants also desire them.  For domain names composed of common words parties in different (even though related) fields must live with the fact that “small differences matter.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002); Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Forum June 14, 2006) (“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.”)

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement and Update here.  Supplement and Update through August 2016 will be available in e-book format on October 1, 2016; the print format will be published on December 1, 2016. The Supplement and Update is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement.

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