Domain names composed of common foreign words (allegedly without knowledge that they are identical or confusingly similar to complainant’s trademark) are generally treated as generic terms. Dictionary words like “mariposa”, “mirabella” and “clara” have been unsuccessfully challenged by domestic and foreign trademark holders. Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010) (<clara.com>, meaning “clear” in Spanish); Mirabella Beauty Products, LLC v. Mrs Jello, LLC., D2009-0673(WIPO July 29, 2009) (<mirabella.com> meaning “look beautiful” in Spanish); and Mariposa Ltd. v. Stonecutter, Don Sawtelle, D2010-0200 (WIPO March 28, 2010) (<mariposa.com”, meaning “butterfly” in Spanish). Bad faith registrations in this kind of case turn on the use to which the domain name is being put; that is, does the website exhibit any signs that the complainant or its trademark is known to the respondent?
Where the content of the website is derivative or runs parallel with that which the Complainant offers or upon which its reputation rests the domain name is more likely than not to be found abusive. The Respondent in Vaga-lume Midia Ltda v. Kevo Ouz d/b/a Online Marketing Realty, FA0910001287151 (Nat. Arb. Forum December 7, 2009) simply dropped the country code extensions used by the Complainant who projects itself on the Internet through <vagalume.com.br> (and other country code extensions in South America). The majority concluded over a vigorous dissent that the registration and use of <vagalume.com> (which means “firefly” in Spanish) constituted abusive registration. The majority found that the Respondent was essentially capturing the Complainant’s audience; had, in fact, acquired the domain name for its traffic generating power. A foreign word equally common in its own language but less familiar to the targeted Internet users coupled with an English pronoun raises an alarm of abusive registration. Such was the case in Teva Pharmaceutical Industries Ltd. challenged Protected Domain Services / Dworld c/o Basil Administrator in D2010-0532 (WIPO May 28, 2010) for <myteva.com> in which “teva” means beauty in Hebrew but has no meaning in English.
A more subtle variant involves a trademark that has no meaning in any language but by happenstance is similar to a common word in a foreign language. The Complainant in West Corporation v. Domain Admin c/o Mrs Jello, LLC., FA1004001321540 (Nat. Arb. Forum June 14, 2010) cries foul because the disputed domain name <entrado.com> is “confusingly similar” to its trademark INTRADO. However, “intrado” is a made up word while “entrado” is a common word in Spanish meaning “coming in” or “entrance.” The Panel agreed that the domain name was confusingly similar to the trademark, but rejected the contention that the Respondent lacked rights or legitimate interests in it or that the domain name was registered in bad faith. A trademark holder’s failure to consider similar (in fact, confusingly similar) linguistic constructions in other languages is at the root of the problem. “Complainant’s use and registration … of a mark similar to the common term constituting the disputed domain name cannot prevent others from using the term in a wholly different context that is aligned with the term’s common descriptive meaning.”
The extended or figurative meaning of “entrado” appears to include a sexual reference. However offensive this may be to the Complainant it is an unintended consequence of its choice of trademark. The “mere fact that a domain name resolves to a website featuring adult content does not per se render the registrant devoid of rights or legitimate interests in the domain name.” There was no evidence that the domain name was registered to capture the Complainant’s traffic.
Levine Samuel, LLP. <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com