Is it possible that the inexhaustible wealth of the English language has limitations when it comes to selecting suitable trademarks that have not already been taken by domain name registrants? Or, is it a failure of imagination? To hear it from complainants with later accruing rights there is something unfair in respondents owning (or having pounced first on) domain names identical or confusingly similar to their newly minted trademarks. There is a palpable sense of grievance in the variety of arguments put forward for stripping domain names from the respondent. Here is a short list of word combinations that stayed with respondents: “everyday food” [Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009)], “success bank” [Success Bank v. ZootGraphics c/o Ira Zoot, FA0904001259918 (Nat. Arb. Forum June 29, 2009)], “market watch” [Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, D2009-1033 (WIPO October 18, 2009)], “loyalty trac” [MediaTrac, LLC v. eNet Buzz Inc., FA0908001281461 (Nat. Arb. Forum October 16, 2009)].

Domain names soak up word combinations that otherwise would make attractive trademarks. This week’s auction of domain names for example included “eScripts.com”, “HonorRole.com” and “Raspberry.com” There is an existing ESCRIPT trademark and multiple trademarks in which “Raspberry” is the dominant term. Perhaps the successful bidders were the trademark holders or those who foresee a brand in embryo. On <honorrole.com> perhaps the future holds the prospect of a UDRP proceeding. Tuesday’s Note on lapsed domain names cited an auction case that did not go well for the successful bidder, Intagent LLC v. Dominor LLC, D2008-1878 (WIPO January 29, 2009) (<intagent.net>). A second or later generation registrant who is not a trademark holder must populate its website carefully.

The latest griever is Bwired Group Pty Ltd v. Eric Adem, bWiredDomains, D2009-1102 (WIPO October 16, 2009) arguing over <bwired.com>. The Respondent is wrong in his argument that a trademark in Australia only confers rights in that jurisdiction, but is correct in that a trademark holder must demonstrate that its right accrued prior to the registration of the domain name. In Bwired there is “no evidence on the file contradicting the Respondent’s statement that he was the original registrant.” This is important because a second or later generation registrant is more vulnerable. Proof that the Respondent’s use of the domain name “does not appear to have exploited the Complainant’s mark or goodwill in any way” is corroborated by a review of the website on the Wayback Machine.

The Complainant in Bwired crossed the magic line that separates inspired from abusive advocacy. The Respondent put the Complainant on notice that its registration of the domain name antedated the trademark right. “Despite this, the Complainant founded its complaint on the allegation that the Respondent registered the Domain Name for the purpose of sale, rental or other transfer to the Complainant or a competitor to the Complainant at a profit.” Parenthetically, the Complainant was represented by counsel. In Dow Jones, the Panel offered a cautionary note that in deciding the issue of good faith registration “does not provide instruction regarding whether Respondent may now or in the future infringe on a service mark owned by Complainant. These are distinct legal issues” (emphasis added). Under the Policy, a change to bad faith use does not impair the first generation registrant’s legitimate interest, but may very well violate the trademark holder’s rights under the ACPA or, perhaps, a comparable statute in a different jurisdiction.