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Words and Expressions that Describe Respondent’s Business

The Note for September 13 [Attempting to Extend Monopoly to More than Granted by Statute or Acquired by Common Law] discussed dictionary words, “rapid,” “national” (misspelled “natonal”) and “noble.” Generally, a single word identical or similar to one of two or more terms in a trademark does not support confusingly similarity. It is different against single word trademarks such as “apple,” “orange” and “blackberry,” but even in those circumstances merchants purveying fruits could – at least conceivably although unlikely – have a right or legitimate interest in a domain name using those words. Holders of lexical expressions common to a community of speakers that have passed the formalities for trademark registration, and thereby eligible to maintain a UDRP proceedings, cannot prevent legitimate use by others.

The more common, generic or descriptive the combination the more evidence complainant must offer to prevail. The Panel has to be satisfied “that when registering the Domain Name the Respondent was targeting the Complainant,” eSnipe, Inc. Modern Empire Internet, Ltd., D2009-0719 (WIPO August 5, 2009) (SNIPEIT and ESNIPE [“snipe” and “it”] registered as trademarks later than <snipeit.com>; Complainant alleged anterior common law use through its domain name <esnipe.com> which preceded registration of the disputed domain name).

It is “possible … to establish trademark rights in descriptive terms … but it is incumbent upon the Complainant to produce good solid evidence to support the claim of those rights,” Tellus B.V. v. Mr. Oren Nehoray, D2010-1115 (WIPO August 24, 2010). In Tellus, the Complainant demanded transfer of <intlmovers.org>; in American Independence Funds Trust and Intrust Financial Corporation v. NestEgg Advisors, Inc., FA1007001333697 (Nat. Arb. Forum September 2, 2010) the Complainant demanded <nesteggadvisors.net>. The contraction “intl” for “international” and its joinder with “movers” is as or more likely to be seen as a description of services rather than a trademark. Similarly, “nest” and “egg” which combined is a metaphor descriptive of personal savings.

In the case of <intlmovers.org> the “Respondent does not deny that he was aware of the existence of the Complainant and its website.” However, when the Respondent registered the domain name the Complainant had no trademark in any country; and, in the United States it had abandoned its application in “the face of … a preliminary refusal of the application on the ground that the mark was descriptive.” The Panel noted (I paraphrase and add my own language in brackets rather than quote)

If the name in issue is merely a description common to a particular trade and is being used by the Respondent in relation to that trade [it is not a per se violation of a known right]. Were it otherwise, [trademark holders] could effectively monopolize descriptive terms.

This is not an invitation for exploitation by competitors. The Complainant in Tellus was foiled by the timing of the respective registrations. If there were proof “that the Respondent’s motives at time of registration of the Domain Name were mala fide and actuated by a desire to exploit the Complainant’s trade mark right to his own advantage and/or thereby cause damage to the Complainant” the registration would have been abusive. But, “the Policy does not seek to regulate registration and use of purely descriptive terms.”

This is even more emphasized where, as in American Independence Funds Trust, the Panel rejected complainant’s allegation of standing because the domain name [<nesteggadvisors.net>] is neither identical nor confusingly similar to the trademark [NEST EGG FUND or NEST EGG CONSULTING]. However, even assuming that the domain name were confusingly similar, the Panel took the time (unnecessarily in view of his finding on the standing issue) to analyze whether the Respondent had a right or legitimate interest in the domain name AND did not register it in bad faith. Respondent prevailed because the domain name describes his business and he is commonly known by that name.

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

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