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The Role of Precedent in UDRP Cases

For consistency in the application of domain name law panelists try to anchor their decisions with citations to earlier cases. It is standard practice by both bench and bar in common law jurisdictions; a practice that is emphasized in the daily Notes. The wealth of domain name law is easily accessible online for prosecuting and defending disputes. I will depart in today’s and tomorrow’s Notes from current decisions to discuss thematic issues raised in earlier cases in which panelists received and affirmed precedential principles in favor of respondents.

Dictionary words used in their ordinary sense and “registered because of their attraction as dictionary words, and not because of their value as trademarks” do not contravene the Policy, The Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum August 6, 2004) (<landmark.com>); Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum May 25, 2004) (<target.org>, the links “relate to target practice, hunting, archery, and other sports equipment.”). Even if a dictionary word is accepted for registration the trademark holder has no superior right to the corresponding domain name, absent proof of targeting. No person is entitled to monopolize what is common to all.

Further, where the mark is “a highly descriptive term, a party seeking to establish exclusive rights carries a heavy burden of proof in removing the term from the public domain,” Snowboards-for-sale.com, Inc. v. Name Administration Inc., D2002-1167 (WIPO February 19, 2003) (<snowboardsforsale.com>). The general rule that applies to dictionary words applies to common linguistic constructions in trade and the professions. For example, the disputed domain name in Super-Krete International, Inc. v. Concrete Solutions, Inc., D2008-1333 (WIPO October 14, 2008) is <supercrete.com>; the Complainant’s trademarks SUPER-CRETE and SUPER-KRETE registered after the domain name are neologisms common in the industry to mean super strong concrete. Similarly with scientific terms employed to call attention to the content of the website, such as <rorschachonline.com>. In Hogrefe AG v. Ney Limonge, D2008-1206 (WIPO October 3, 2008) the Complainant had a registered trademark for RORSCHACH. Respondent, a clinical psychologist, registered the disputed domain name to distribute “an interactive online computer program used in the administration of the Rorschach inkblot test.” In eSnipe, Inc. v. Modern Empire Internet, Ltd., D2009-0719 (WIPO August 5, 2009) the confusing similarity involved the expression “snipe.” Wikipedia defines sniping as it relates to auctions as “the process of watching a timed online auction (such as on eBay), and placing a winning bid at the last possible moment (often seconds before the end of the auction), giving the other bidders no time to outbid the sniper.” The Complainant owns SNIPE IT!; the Respondent registered <snipeit.com> prior to the registration of the trademark, but even if the timing was otherwise, given the established meaning of snipe it “leaves open the strong possibility that entities in different parts of the world might quite likely come up with the same or similar snipe-related names independently of one another.”

Unless there is “intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common generic term,” Ultrafem Inc. v. Royal, FA 97682 (Nat. Arb. Forum Aug. 2, 2001) (<instead.com>); see, CITGO Petroleum Corporation v. Matthew S. Tercsak, D2003-0003 (WIPO February 28, 2003) (<mystic.com>; domain name is confusingly similar to Complainant’s mark but Respondent operates a bona fide business from that address). It is precisely because the web sites in these and other cases are unyielding to any inference that the Respondent intended to target the complainant’s audience under paragraph 4(b)(iv) of the Policy that the complaint must be dismissed.

Gerald M. Levine, <udrpcommentaries.com>

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