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Interaction of Timing, Market Penetration and Classification of Trademark

More explanation is required from the respondent when the disputed domain name mimics a well known trademark. The closer the parties are geographically the greater the likelihood and less convincing in denial that the respondent was aware of the trademark when it registered the domain name. Timing comes into the equation when the complainant’s commercial activities and proof of market penetration predate the registration of the domain name. In Kucukbay Yag Ve Deterjan Sanayii A.S. v. Nokta Internet Technologies, D2009-1275 (WIPO December 11, 2009) the evidence indicates that the Complainant’s marketplace presence grew exponentially after 2003.

In Turkey the Complainant “has been ranked among … [the] top 500 companies for the last 10 years” rising from 236 in2007 to 122 in 2008. It registered ORKIDE in Turkey in 1979; obtained an International Registration for a stylized version in 2004; and in the United States in 2005. The Turkish Patent Institute registered the Complainant’s trademark as a well-known mark in 2008. The disputed domain name, <orkide.com> was registered in 2003; the registrant is of Turkish origin but located in the U.S. The Panel noted that “[i]f the Respondent were located in Turkey, this evidence would raise a very strong inference that the Respondent must have known about the Complainant’s trade mark when it registered the disputed domain name.” However….

The word “orkide” is an ordinary word in the Turkish language. It translates to “orchid” in English. There are many businesses in Turkey established and operating before 2003 that incorporate “orkide”. Besides, the website is dedicated to advertising the generic nature of the word, flowers and florist related activities. Although the Complainant has a U.S. subsidiary based on the East Coast, the evidence shows no substantial sales of its products under its trademark in the United States until 2007 and 2008, demonstrating “a dramatic increase in quantities particularly in 2008.”

The question turns on knowledge or awareness. Geographic distance supports the respondent, but being a domainer increases the burden on the respondent for investigation. The Respondent in Kucukbay is a domainer. It is in the business of acquiring domain names which “are plain or ordinary Turkish words for flowers or florists.” The prevailing view is that where a domain name has both a dictionary and trademark related meaning a respondent “must come forward with credible evidence that the disputed domain name was registered because of its attraction as a generic or descriptive term, and not because of its value corresponding to a trademark, and credible evidence that there has been no use of the domain name inconsistent therewith,” citing Media General Communications, Inc. V. Rarenames, WebReg, D2006-0964 (WIPO September 26, 2006) in which the Panel held that in “reselling domain names or using them for advertising links can in certain circumstances represent legitimate interests for purposes of paragraph 4(c) of the Policy, but not in all instances. These practices are most likely to be deemed legitimate under the Policy when:

– the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
– the respondent 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.”

See, also Note for December 21, 2009, assembling other cases that hold domainers to a higher investigatory standard. The dissent in Kucukbay found that denial was implausible given the ethnic background of the Respondent.

Gerald M. Levine, <udrpcommentaries.com>

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