The Respondent’s cry of pain in AXA SA v. Whois Privacy Protection Service, Inc. / Ugurcan Bulut, axathemes, D2016-1483 (WIPO December 12, 2016) “[w]hat do you want from me people? I already removed all the files from that domain and it’s empty. What else do you want me to do???” raises some interesting questions. “A,” “x,” and “a” is an unusual string of letters but unlike other iconic strings such as “u,” “b” and “s” and “i”, “b” and “m” for example that started their lives as the first letters of three-word brands AXA is not an acronym. Whether invented strings or acronyms iconic strings are not just random letters. Combining them with dictionary words (whether or not suggesting an association with complainants’ businesses) is essentially conclusive of cybersquatting.
Adding “themes” to AXA particularly when AXA also owns AXA THEMA, “money” to UBS where UBS is in the money business, or “food” to IBM (even though food has no direct connection with IBM’s business) undercuts credibility to these respondents even if they appear and argue ignorance of intention; that they had entirely different project “in mind” without reference to the trademarks. Innocence is essentially Respondent’s position in AXA. He put on a show of indignation but had no explanation for incorporating the trademark in the domain name: “How can you know [he says] that [the domain name] refers [to] AXA THEMES, maybe it’s AXAT HEMES or AXATH EMES.”
Well, why not? Conceivably, a registrant could use made-up phrases to create a business using either of the two alternative possibilities but to do that he would have to offer demonstrable proof of such a business existing or in formation. In the absence of proof, Panels will infer cybersquatting. Complainants prevail when Respondents cannot explain what the trademark is doing in the domain name even if the added word has no association with the trademark; <ibmfood.com> for example.
What if random letters claimed as a trademark appear in a domain name that spells a dictionary word? How far does a trademark owner’s right extend with random letters. For example, could AXA SA have claims to <taxa.com> (plural of taxon) or <axe.com> on the theory of a one letter replacement, “e” for “a” and charge respondent with typosquatting, or even more preposterous <laxative.com>? None of these compositions suggest the business of insurance so making a claim would be a stretch best not taken.
The WIPO Overview gets into the act by suggesting “theatre” as an example in which a mark owner of HEAT commences a proceeding on the grounds of confusing similarity because the domain name includes the letters “h,” “e,” “a,” and “t.” The issues came up for real in Philipp Plein v. Kimberly Webb, D2014-0778 (WIPO July 30, 2014) in which Complainant saw its trademark embedded in <peopleincasinos.com>, that is “people in casinos” an unlikely phrase certainly, but intentionally targeting Complainant? The Panel observed:
[A] consequence of the Complainant’s argument is that any trademark appearing in a domain name would satisfy the confusing similarity test on the basis that it would be recognized within the domain name by search engines…. This result changes the current understanding of confusing similarity, and suggests that even if confusion by technological effect were accepted, visual or aural characteristics cannot be disregarded entirely…. It is not sufficient that the trademark is only visible when the viewer is told it is definitely there.
However, the “plein” case is exotic; so far one of a kind. As a general rule, to be confusingly similar the trademark must be visible to the objective observer. A string of letters within a larger string is confusingly similar only if it announces itself which it did in Zino Davidoff SA v. Guan Rang Guang, D2016-1027 (WIPO July 5, 2016) (<davidoffshore.date>). The Panel held that “the disputed domain name can also be read as a combination of the personal name ‘David’ followed by the word ‘offshore’ and the gTLD. However, the Complainant’s trademark remains recognizable in a visual comparison with the disputed domain name.”
Each of these disputes has in common respondents’ silence, either by default in appearance or arguing indefensible positions testing credulity; thus, where the record is silent about the reason for registering the domain name or the reason is unpersuasive, intention is inferred. This is why domain names incorporating trademarks coupled with other letters or words that suggest a connection, association, or sponsorship with complainant are generally found to be infringing. Where there’s no record other than complainant’s, or silence it’s natural to resort to inference which generally favors complainant.
In the abstract “m,” “s,” and “n” could pass as random letters safe from Mediterranean Shipping Company (in that the letters as an acronym could arguably be attractive to many businesses) except Respondent added “cargo,” “transport,” and “delivery” which are descriptive of Complainant’s business. MSC Mediterranean Shipping Company Holding S.A. v. Whoisguard Protected, Whoisguard, Inc. / HOSTER NODE, D2016-21059 (WIPO December 7, 2016). In the same vein, “m,” “w,” “e” also appears safe, particularly with the dot pub extension but the addition of “’.pub’ contributes to the likely confusion because Complainant offers a wide range of legal publications.” McDermott Will & Emery LLP v. wang wei, FA1610001699686 (Forum November 28, 2016) ((<mwe.pub>). There was no appearance in either case thus no explanation for the choices and that dooms Respondents.
On the positive side for respondents, in Advanced Analytical Technologies, Inc. v. Hare, Myles / URL Enterprises Ltd., FA1611001701430 (Forum January 1, 2017) Complainant referred to the claimed infringing string as a “non-distinctive four-letter domain name” which Respondent was very happy to acknowledge (in fact, turned cartwheels I think the expression is!) The 3-member Panel held that the “disputed domain name <aati.com> is comprised entirely of a common acronym that has many meanings apart from the use of the AATI acronym alleged by Complainant.” Best practice for respondents is to do what counsel in this case did (and regularly does), namely find examples of the “many meanings.”
Another example is the triple A which has an established non-trademark meaning. In The American Automobile Association, Inc. v. Adam Cooper – AAA Locksmith, D2015-0683 (WIPO July 3, 2015) (<aaalocksmithnaples.com>) the Panel noted that it was
persuaded that the reference to “AAA” locksmith in the Domain Name refers to: “a rank on an alphabetical grading scale” and that it has nothing to do with The American Automobile Association. Furthermore, although Respondent argues in the context of the first element that the difference in his webpages from Complainant’s webpages forestalls any confusion, the Panel takes note of the fact that the significant differences between Respondent’s and Complainant’s webpages would lead to the conclusion that Respondent was not trying to mimic Complainant’s website or otherwise use the Domain Name in bad faith.
The question is whether there is any evidence to suggest that in choosing the three-letter string Respondent had any intention of taking advantage of Complainant’s trademark. A quick check of the database indicates that 99% of cases with the AAA string end in cancellation or transfer of the domain names—these include <aaaclub.xyz>, <aaa2bcars.com>, <driveaaa.com>, <aaainsurancefreequote.com>, <aaatravelersguide.com>. But not <AAAexchangenetwork.com> which passed muster:
The holder of this domain name, Parmamagoo Media, LLC, claims that it is preparing to use the domain to provide exchange services in the timeshare industry. While Complainant uses its AAA mark in the travel industry, the Panel finds that the words “exchange network” are not by themselves indicative of any particular service or industry. The Panel does not believe that Complainant can control every possible use of its marks; it is limited to the class restrictions in its registrations. Therefore, it is possbile for Parmamagoo to have a legitimate interest in the domain name.
This does not end the discussion because it’s not just strings of arbitrary letters that suggest infringement. In L-com, Inc. v. Resolution Services / Resolution Services Ltd., FA161100 1703364 (Forum December 21, 2016) <lcom.com> did not resolve to an active website and Complainant argued (speculatively as the Panel saw it) that passive holding could be prelude to fraudulent use “as an email suffix in an effort to email Complainant’s vendors, requesting delivery of products on Complainant’s credit through purchase orders.” While nevertheless speculative, the Panel accepted the possibility:
However, as Respondent has not responded, the Panel must accept at true any reasonable assertion made by Complainant. As this is clearly not an unreasonably assertion, the Panel accepts this argument as possible, although it does not accept the notion that Respondent may be “compelled” to commit a fraud. In the very least, under a totality of the circumstances test, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
The speculation of fraud is not altogether far-fetched. For example, in Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, D2016-2213 (WIPO December 16, 2016) Respondent “without the Complainant’s knowledge or consent, has used the disputed domain name to impersonate an employee of the Complainant (***@alarfoods.com) in order to perpetrate a fraud on one of its customers, obtaining payment of false invoices.” This adds a new dimension to passive holding; the possibility that passively held domain names are acquired to use the corresponding emails to perpetrate frauds rather than resolve to websites is well known.
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 is currently available. The Supplement and Update is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement.