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Use of Disputed Domain Name Consistent With the Sense of the Words

No person is entitled to a monopoly over words that are common to all. Trademarks composed of generic terms or descriptive phrases lack the strength of those composed of suggestive or arbitrary signifiers. If words and phrases in everyday use that have been granted trademark status are to be forbidden – taken out of the public domain – the complainant must show that the registrant chose the disputed domain name intentionally to piggyback on the reputation of its trademark and is using it for commercial gain. Use of the choice is a significant factor, but so is the timing of the registration.

The Complainant in PETSENSE, Inc. v. Wendy Garrett, D2010-0506 (WIPO May 17, 2010) owns registrations for PET ¢ENTS for “rawhide chews for dogs” (issued in 1997) and for PETSEN$E and PETSENSE (issued in 2006 and 2007) for “retail pet supply store services.” The domain name was registered prior to the trademark, although transferred contemporaneously with the issuance of its registration. The Complainant “operates an Internet web site at ‘www.petsenseoutlet.com,’ where it promotes PETSENSE products and services. Consumers associate the term ‘petsense’ in a domain name with Complainant’s services.” The last assertion cannot mean that all consumers everywhere associate the name with the Complainant.

In Petsense the Panel stated that it “is cognizant of other decisions (including those of this Panel) finding that including advertising to third party sites, including those that compete with a complainant, did not constitute to a bona fide offering of goods and services.” Hyperlinking to merchants offering competitive products is a factor in determining a respondent’s good faith. However, a finding as such is not conclusive and must be weighed together with other factors. It is not surprising that common lexical elements chosen alike by domain name registrants and trademark holders telegraph what the Internet user sees on the website and the goods or services the consumer can expect the trademark holder to deliver.

The Complainant in Petsense offered no evidence that the Respondent (or her predecessor) had the Complainant in mind – operating initially under its PET ¢ENTS trademark – or that its business was known to the Respondent in 2005 (before issuance of certificate of registration). “[U]nder the circumstances presented here, the Panel finds that Respondent’s use of the domain name prior to this dispute, when considered in combination with the current, actual and principal use of the web site to display content, do[es] constitute bona fide use.”

Even where the registration of the domain name follows the trademark the underlying theory is that parties who utilize common terms as trademarks or service marks cannot use the UDRP to bar others from using them separately or in combination with other common words as long as the complainant or its mark is not targeted. “It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them,” Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum February 13, 2001) (<groceryoutlet.com>). The burden in these cases for establishing exclusive rights is lighter when the mark in issue is a coined or fanciful term and heavier when it is not. In Petsense, the Complainant fails in proof on two counts; first, that the domain name was registered before its establishment of the PetSense Company; second, that the Respondent is using the domain name specifically in the sense conveyed by the domain name.

Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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