Timing and Circumstances of Acquisition
Having an incontestable trademark composed of generic or descriptive elements opens the door to a UDRP challenge, but length of use in commerce is no guarantee that the holder is entitled to the corresponding domain name. Weak trademarks lack the strength of those composed of suggestive or arbitrary signifiers. If words and phrases in everyday use granted trademark status are to be forbidden there must be proof that the registrant chose its domain name intentionally to take advantage of the holder’s trademark, but not otherwise. Take, for example, “Home Away from Home.” In one form or another it appears in 25 live records; and twice that if dead ones are included. The phrase is unremarkable except for the fact that it is so common.
The Complainant in HomeAway.com, Inc. v. Name Administration Inc. (BVI), FA0909001283498 (Nat. Arb. Forum October 28, 2009) acquired its interest in HOME AWAY FROM HOME from the original trademark registrant in 2007 who registered it in 1981. The trademark became incontestable in 1987. However, the assignor who originally held <homeawayfromhome.com> (acquired in 1999) allowed it to expire in 2005, at which time the Respondent purchased it at public auction and put it to work as a pay-per-click portal advertising what is suggested by the name. Acquiring an expired domain name corresponding to an existing trademark does not necessarily confer rights or legitimate interests in it. The Complainant’s task is to prove that its trademark has in fact the market status it claims. The Respondent’s task is to demonstrate that it commenced using the domain name for a bona fide service “before notice” from the Complainant.
Although not dispositive, the Respondent offered evidence that the Complainant has blocked access to its own site through robots.txt. It is particularly damaging to a complainant’s case that its own use of the trademark has been less than robust, raising doubts as to the public identifying it as the source of goods or services . Damaging further is evidence that terms corresponding to the trademark are used by a variety of other businesses. A plethora of dates, the incontestability of a trademark composed of generic elements, even the fact that the trademark was acquired 18 years prior to the respondent’s acquisition of the domain name is of no account absent proof that the respondent registered the domain name in bad faith.
In HomeAway, the Complainant offered no proof that the domain name was purchased with the trademark holder in mind. Decisions favoring complainants who have lost their domain names and recaptured them involve trademarks that have a market following. Red Nacional De Los Ferrocarriles Espanoles v Ox90, D2001-0981 (WIPO November 21, 2001) (Respondent, by his own showing a knowledgeable Internet analyst, registered a recently lapsed, commonly searched domain name. The Panel held that “where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.” )