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Name By Which Respondent is Commonly Known

One of the three specified defenses to a claim of abusive registration is proof that “you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights” (Paragraph 4(c)(ii) of the Policy). In Sandra Andy v. Alessandro Balzarin, D2010-0348 (WIPO April 21, 2010) the Respondent presented evidence that he uses personally and in business his nickname “Sandro” and, thus, had a right and legitimate interest in <sandro.com>. That he does not actively use the website “beyond the showing of a picture of a sunflower [is] of no relevance … given that this is not a required condition under paragraph 4(c)(i) and (ii) of the Policy.” However, the Policy is construed to “require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail,” RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001).

A trademark holder only preempts a respondent who uses the domain name to extract value from the complainant or its trademark. To illustrate with contrasting examples. The Respondent in Harrods Limited v. Harrod Exclusive Realty Service, D2006-1061 (WIPO November 6, 2006), Lisa Harrod offers a range of real estate services for Florida based properties and registered <harrodsproperties.com>, but she is not “Harrods.” “There is” said the Complainant “a distinction between the name of a proprietor of the Respondent ‘Lisa Harrod’ and use of a domain name featuring the plural ‘Harrods’.” More damagingly, Respondent diverted traffic to another website. In contrast, another Harrod, Brenda L. Harrod, one of the Respondent principals in Harrods Limited v. HDU Inc., D2004-0093(WIPO April 27, 2004) operated a beauty salon business registered in Ohio known as “Harrod’s Designs Unlimited, Inc.” The domain name <harrodssalon.com> represented the Respondent’s presence and offered its own services.

A complainant’s argument that a domain identical to its trademark is not a proper surname is not proof that it “was likely adopted by Respondent for the purpose of asserting rights in the domain name,” Mattel, Inc. v. Gopi Mattel, FA0411000372847 (Nat. Arb. Forum February 15, 2005) (<mattel.org>). The Panel held that it was not for “Complainant to deem what is a ‘proper’ surname simply because it owns a trademark on the same name in conjunction with the sale of certain wares.” A similar conclusion was reached in Ken’s Foods Inc. v. kens.com, D2005-0721 (WIPO September 11, 2005) (<kens.com>):

Notwithstanding the Complainant’s contention that the KEN’S mark is distinctive in relation to the particular category of goods and services for which the mark is used, it is nonetheless a personal name – “Ken” – which is also the Respondent’s given name.

So it goes with the Complainant in Sandra Andy. The “Respondent had a legitimate reason for choosing that term as his domain name in 1997 given that it corresponded to the nickname of his first name.” The evidentiary problem is that the Complainant failed to offer evidence of its international or national activities when the Respondent registered the domain name. This supported an inference that “the Complainant has probably assessed too generously the brand recognition of the Trademark in other countries, particularly in Germany … in 1997.” Not all nicknames, however, get a pass. The Respondent in RedBull GmbH v. Gutch, D2000-0766 (WIPO September 21, 2000) claimed that he registered <redbull.org> because he had been known as “Red Bull” since childhood. Bull, indeed!

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
Email:gmlevine@researchtheworld.com

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