Ordinarily, registration and use of dictionary words singly or combined to form a descriptive phrase are available to the first to register on the principle that common words cannot be monopolized. This principle, however, is not without qualification. It does not mean in every instance that a respondent is entitled to register common words that have achieved (by registration or common law) trademark status. On one side of the divide there are clearly common words available on a first come first served basis. Closer to the divide are combinations of common words. In many instances the difference between good and bad faith depends on the reputation of the trademark and the location of the parties. It also depends on the status of the respondent. There is a developing consensus that high volume purchasers and users of domain names are more accountable for their choices.

The existence of trademarks with a reputation in the marketplace cannot simply be ignored because they are composed of common words. Where the respondent is a domain name reseller it must show the steps it took in good faith to avoid registering domains which correspond to trademarks. “In mVisible Techs., Inc. v. Navigation Catalyst Sys., Inc., D2007-1141 (WIPO Nov. 20, 2007), a distinguished Panel underscored, as have other Panels, the notion that a sophisticated domainer cannot be ‘wilfully blind’ to whether a particular domain name may violate trademark rights.” Asserting ignorance of a complainant’s “trademark is not enough to avoid a finding of bad faith registration.”

The Complainant’s in Oregon Freeze Dry, Inc. v. Vertical Axis Inc., FA1003001316531 (Nat. Arb. Forum June 10, 2010) owns the trademark EASY MEAL which it acquired in 1984. The Respondent purchased <easymeal.com> after the prior registrant (not the Complainant) allowed it to expire in 2006. The Panel was divided. The case is in the murkier area of the divide. The majority based its finding of bad faith registration and use on a combination of facts. First, that as a high volume registrant the Respondent had a duty to investigate; second that it was offering the domain name for sale; third, that the website contained hyperlinks to the Complainant’s competitors.

While the general rule does not require a respondent to search trademark registers, in Oregon Freeze Dry the “Respondent has obvious and close links with the United States and is in the business of looking for opportunities generated by domain names becoming available for registration.” The dissent saw the circumstances differently: “To argue that a registrant who chooses descriptive terms and then must be held accountable because it later discovers them to be trademarked by some relatively obscure mark owner is completely the opposite of the UDRP principle.” The trend is toward greater accountability. The fact that undercuts the dissent’s position is the content of the website. Was it mere happenstance, or were the contents created to take advantage of the trademark? Actual knowledge is not required; willful blindness is not tolerated.

Panels have reached consensus on content. “The Respondent cannot say it does not bear responsibility for the sponsored links appearing on its website. It cannot disclaim responsibility for those links which concern the field of commercial activity in which the Complainant is a major player.” Indeed, “[t]he profitability of PPC links engendered by a well-known name must, over time, increase the saleability, and therefore, the price, of the disputed domain name. It is no excuse to say that the offer to sell is standard on a particular PPC website.”

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