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Proving Cybersquatting on Weak Trademarks

See Anthology of Commentaries — 2014

Proving cybersquatting on weak trademarks rises in difficulty as the marks descend the classification scale. Dictionary words such as “bespoke”, “emoney” and “upbeat”, descriptive phrases such as “historic hotels” and “broadband voice” , combined words such as “md online”, “master page” and “great courses” and compounds such as in “nestegg” may be registrable as trademarks but still fail in disputes with domain name holders who use the terms in their semantic senses. Weak trademarks––which includes generic elements accepted for registration as suggestive or arbitrary signs but having limited market penetration and none of the luster of APPLE and BLACKBERRY––have standing to maintain an administrative proceeding under the UDRP but are unable to muster sufficient evidence of bad faith registration. All of these terms have the ability to climb the classification scale, of course, as their reputations take hold in the marketplace––the EASY mark is an example.

Recent illustrations for descriptive phrases and combined words are Nick Nifadeff v. Andre Schneider, DomCollect AG, D2014-1435 (WIPO November 13, 2014) (<masterpage.com>) where the domain name had recently been transferred and is not currently active but which the original holder used to promote the sale of pagers and mobile phones; and MD On-line, Inc. v. Yenta Marketing, Inc., D2014- 1468 (WIPO November 8, 2014) (<mdonline.com>) where the Panel noted that the phrase “MD online” is descriptive and undistinctive, which supports Respondent’s claim that it registered the Domain Name for its generic meaning. In The Teaching Company, LLC, d/b/a The Great Courses v. Brendham High, Marchex Sales, LLC, D2014-0448 (WIPO June 4, 2014) (<greatcourses.com>) the Panel held that

[Denying the complaint] … does not mean that the Complaint lacks trademark rights in THE GREAT COURSES, or lacked them even before its mark was registered or before the Respondent registered the disputed domain name. Trademark rights alone do not demonstrate the Respondent’s requisite knowledge or targeting. Especially is that so when the mark is descriptive. In such a case there must be some showing, backed up with evidence, that targeting was more likely than not the Respondent’s reason for registering the disputed domain name. Satisfactory proof of this, or of facts from which the Panel might infer this, is lacking in the record.

Recent illustrations of dictionary words albeit employed as non-generic signs are Bespoke Services Group S.A. v. Garth Piesse, D2014-1533 (WIPO November 5, 2014) (<bespoke.com>) and Electronic Transaction Systems Corporation v. Will E., FA140600 1563968 (Nat. Arb. Forum July 28, 2014) (<emoney.com>). In Bespoke Services the majority denied the complaint on alternative grounds that the trademark included a small design element, that is was not BESPOKE but BESPOKE BSPK and that “bespoke” was a dictionary word that was not being used in any way that would suggest targeting Complainant’s reputation and goodwill in the marketplace. In Electronic Transaction the Panel rejected Complainant’s contentions that the contents link to competitive services:

The use is all linked to the dictionary meaning of the word ‘money’ and to the natural connotation of the term, “emoney.” By definition, the use of the domain name can be said to conflict with Complainant’s interests. However, Panel finds that Respondent did not intend “emoney” to refer to any particular good or service, still less to Complainant’s services.

The test in all cybersquatting disputes is whether respondents had complainants’ marks “in mind” in registering the domain names. The overwhelming majority of registrations of domain names that are found to be identical or substantially similar to existing trademarks––with heavy emphasis on existing––are forfeited. The decisions referred to above are among the few instances respondents prevailed with existing trademarks. Complainants cannot succeed where they acquire their marks after domain name registration; recent illustrations, Parker Waichman LLP v. N/A, FA1410001584806 (Nat. Arb. Forum November 30, 2014) (<yourlawyerfl.com>; Julie Wampler v. Name Administration, Inc., D2014-1586 (WIPO November 27, 2014) (<tablefortwo.com>) and GIGS United S.L. v. SIE MANTIC, D2014-1689 (WIPO November 19, 2014) (<trendyhair.com>).

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. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement here

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