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Rights to Dictionary Words and Common Phrases as Trademarks and Domain Names

As a trademark descends on the scale of protectability its holder has less cause for complaint. If it were otherwise a trademark holder would have the ability to lock up and command a community’s cultural and linguistic heritage. Registering a domain name composed of common words and descriptive phrases is not abusive merely by being identical or confusingly similar to a complainant’s trademark. Although trademark holders and domain name registrants have as a common purpose to attract attention they are different in kind. A holder deploys its trademark as a source indicator whereas a non abusive respondent chooses a domain name for its power to attract Internet users for what the name is understood to mean without reference to any trademark value. It is not a violation of the Policy to register and use domain names composed of commonly used words and descriptive phrases in their ordinary sense provided that the respondent’s purpose is consistent with good faith.

It is not consistent with good faith to appropriate a trademark composed of common words for the purpose of exploiting the holder’s reputation. For example, the combination of the words “tractor” and “supply” and “company” in Tractor Supply Co. of Texas, LP, and Tractor Supply Company v. Above.com Domain Privacy / Transure Enterprise Ltd. D2011-0487 (WIPO May 16, 2011) and earlier in Tractor Supply Company v. Forum LLC, D2006-1320 (WIPO December 15, 2006) can be used by others in the business of supplying tractors – that is, the string is not “distinctive when applied to the sale and supply of tractors.” But, in the specific, “the Complainants ha[ve] adapted the words ‘tractor supply company’ for a wide variety of goods.” The bad faith in the Tractor Supply cases is based on the respondents’ uses of the domain name for “a purpose [un]relat[ed] to its generic or descriptive meaning (such as using ‘apple’ for a genuine site for apples).”

The Tractor Supply Company kinds of case are distinguished from domain name choices that are genuinely used “with a purpose relating to [their] generic or descriptive meaning[s].” Illustrations include National Trust for Historic Preservation v. Barry Preston, D2005-0424 (August 10, 2005) and McMullen Argus Publishing Inc. v. Moniker Privacy Services/Jay Bean, MDNH, Inc., D2007-0676 (WIPO July 24, 2007) which brought up the phrases “historic hotels” and “European car.” The Panels concluded that respondents were using the names descriptively. At the same time, as the 3-Member Panel noted in McMullen that Panels have consistently rejected the often expressed view by respondents that common words are always fair game for domain names irrespective of their use as trademarks. That is not the case, but the burden is heavy to capture dictionary words and common phrases.

Single common word trademarks are even harder to monopolize. In Harvard Lampoon, Inc. v. Reflex Publishing Inc., D2011-0716 (WIPO July 26, 2011) the Complainant attempted to capture <lampoon.com>. Undermining its argument, however, is the fact that while it holds a trademark in LAMPOON the registration post-dated the domain name. The fact that the Complaint had “lampoon” in the title of its publications does not give it rights absent proof of common law protection coupled with evidence of the Respondent having taken advantage of the trademark. On this front, the 3-Member Panel noted that

the circumstances in the record do not indicate that Respondent knew or should be deemed to have had notice of Complainant’s rights in the LAMPOON Mark when it registered the Domain Name…. [T]he Panel cannot infer that Respondent had constructive notice of Complainant’s registrations for the LAMPOON Mark and then registered the Domain Name in bad faith because Complainant’s trademark registrations issued well after Respondent registered the Domain Name.

If a complainant is to prevail, it must make a showing that respondent chose the common word or string of words for its association with the trademark and to take advantage of it reputation in the marketplace. In Harvard Lampoon, however, “there is no evidence Respondent registered the Domain Name – a dictionary word – knowing of Complainant and its rights in the LAMPOON Mark.” A dictionary word other than one elevated to iconic status — “apple”– absent proof favoring the complainant belongs to the domain name holder.

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