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Trademarks Unknown Out of their Niche and Fair Use of Descriptive Terms

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>). There have been a number of recent examples, “streetwise”, “pantaloons”, “fender” and “crediteurope” to give only a few in the last month or two. Either because respondents affirmatively defend their right or legitimate interest or the web sites are unyielding to any inference of targeting the complaints must be denied.

The Complainant in Juniper Networks, Inc. v. Kenneth Crossman, DTV2010-0010 (WIPO August 22, 2010) alleged that it had a trademark in “Juniper” – which troubled the Panel because the USPTO database showed only that it was pending – but since it was the holder of JUNIPER NETWORKS and “juniper” is the dominant term in the trademark <juniper.tv> was confusingly similar. However, “juniper” is a dictionary word and 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) (LANDMARKS and <landmarks.com>).

The burden of proving protection for a generic term is significantly higher for complainants well known in their niche who not known out of it. One Panel offered ‘apple’ as an example, Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO January. 21, 2003). Should the word “apple” be used in <apple.com> with respect to a web site offering fruit, namely apples, the registrant may have a legitimate interest in the name. However, “given the reputation of [the ‘apple’ mark] then the intentional registration and use of the misspelled word or words (for example <appple.com>) clearly manifests an intent to capitalize on the mark and constitutes bad faith under the Policy.”

In Juniper the Panel found the Respondent’s denial of knowledge “plausible, since it appears from the record and from a perusal of the Complainant’s website that the advertising and media references to the Complainant’s marks are predominantly in trade publications and industry websites.” Further, “[by] its own account,

the Complainant’s customers are chiefly Internet service providers, business enterprises (including 99 of the Global Fortune 100), government agencies, and institutions of higher education. The Respondent is a free-lance writer and licensed psychotherapist, and there is no evidence in the record that his job experience or current business ventures involve high-performance Internet protocol networking devices.

One other issue should be noted concerning a transferee’s liability. In Averitt Express, Inc. v. DI S.A. c/o Domain Admin., FA1006001332938 (Nat. Arb. Forum August 23, 2010) the transferee was found not in bad faith even though the transferor would have been. In Juniper the Complainant presented a similar argument, which the Panel rejected because the “parking website formerly associated with the Doman Name was not focused on the Complainant’s or competing product.” Finally, “[i]t would be easier to infer such an illicit intention if the Complainant’s mark were not comprised of dictionary words” and it had demonstrated “that its mark is famous in a broad consuer market [and] otherwise likely to come to the attention of the Respondent.” In the absence of such evidence “the Panel cannot conclude that the Respondent is prevaricating [or] … intend[ing] to mislead internet users by a false implication of association with the Complainant.”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@reseaarchtheworld.com

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