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Totality of Facts Analysis of Bad Faith for Common Words and Descriptive Phrases

Friction between holders of trademarks composed of common words or descriptive phrases and domain name registrants rests on the variable meanings of the words and phrases. For the complainant its choice acts as a source indicator; for the respondent the same words convey only their attributed (cultural) meanings. As a general rule respondents have a right to register and use domain names composed of commonly used words and descriptive phrases provided that the registrations are in good faith. The proviso “good faith” most obviously applies to registrations that precede a complainant’s trademark acquisition. Post-registration puts in issue respondent’s knowledge of the complainant’s trademark and use of the domain name. Respondents’ often expressed view that common words and phrases are always fair game irrespective of their use as trademarks has been consistently rejected, but so too has complainants’ view that they have a superior right to the domain name corresponding to their trademark.

For trademarks on the lower end of the scale, complainants have an enhanced burden in proving bad faith even if the respondent fails to establish a right or legitimate interest in the domain name. According to the Complainant in Ticket Software LLC v. MRWFX Inc., D2011-0721 (WIPO June 17, 2011) (TICKET NETWORK and <ticketsnetwork.com>)

the Respondent intentionally is using a confusingly similar name to divert traffic to the Respondent’s website, which contains links to ticket providers. The Complainant maintains that the Respondent’s use of the disputed domain name as a repository for links to third party websites offering entertainment and sporting tickets creates a likelihood of confusion, and infringes upon the Complainant’s rights in the TICKETNETWORK mark.

However, “ticket” is generic; at best TICKET NETWORK is descriptive. See, Advertise.com, Inc. v. AOL Advertising, Inc., 616 F.3d 974 (9th Cir. 2010), citing Filipino Yellow Page, Inc. v. Asian Journal Publications, 198 F. 3d 1143, 1147 (9th Cir. 1999) applying the “familiar ‘who-are-you / what-are-you’ test.” A generic choice answers the question ‘what are you?’ “[W]here a respondent registers a domain name consisting of ‘dictionary’ terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest.” A party who elects to register or use a common term or terms as a trademark has a weak case, “unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.”

In Ticket Software, the balance was at best in equipoise. The Complainant stated on its website that it was initially founded in 2002 as a computer software company, but failed to provide any information on when it first launched the ticket exchange service on its website. On the one hand, the Panel was unable to determine that the Respondent had a right or legitimate interest, in part because for its 9 years as holder it had not developed the business it claimed motivated its registration of the domain name, on the other was the timing of Complainant’s trademark application and registration. The domain name was registered several months before the PTO application. While Respondent’s intention assertion may have put its credibility in issue, it was not sufficient to support a forfeiture. “The Panel is more inclined to believe that the Respondent acquired the disputed domain name for monetization purposes – i.e., to generate paid advertising revenues or hold the disputed domain name for eventual sale.”

A finding of bad faith if not proved conclusively – equipoise means that the complainant has failed its burden of proof – rests on the totality of facts and circumstances in the record. That totality in Ticket Software was insufficient to establish that “the Respondent registered the disputed domain name seeking to profit from and exploit the Complainant’s trademark rights.”

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