With qualification, descriptive phrases are not denied trademark registration but they are less protected from concurrent users. That is clear from such trademarks as BABY ESSENTIALS, the subject of A.D. Sutton & Sons, Inc. v. BABYESSENTIALS.COM c/o Nameview Inc. Whois IDentity Shield / Vertical Axis Inc., D2010-1125 (WIPO September 22, 2010). Other examples have been noted in recent cases such as “Streetwise Maps” and “Simple Truths.” It is also clear that under UDRP (although not necessarily under trademark law) descriptive phrases that have not matriculated to trademark status are recognized as having common law protection as noted for “Ergonomic Designs.” While the holders for BABY ESSENTIALS, STREEWISE MAPS and SIMPLE THRUTHS lose (despite their trademarks) the Complainant in Ergonomic Designs prevails. The explanation for “Ergonomic Designs” is that it was well known in its market, the parties resided in the same geographic location and there was evidence that the Respondent had knowledge of the Complainant. The circumstances in A.D. Sutton are different and it is worth noting why such complainants fall short.

The Complainant in A.D. Sutton alleges that the Respondent uses the disputed domain name for a pay-per-click website containing links to baby goods and services provided at other websites. The Respondent alleges that it had no knowledge of the Complainant’s trademark until it received the Complaint. It alleges that the trademark is “entirely descriptive”; that a Google search for “baby essentials” yielded 504,000 search results from numerous websites offering a wide range of baby goods and services which have no connection with the Complainant; and that words “baby” and “essentials” are incorporated into numerous registered trademarks.

The Panel noted that

Had the Complainant’s BABY ESSENTIALS trademark been widely used and, hence, well-known in August 2006 when the Respondent registered the disputed domain name, there might have been basis for the Complainant’s case under paragraph 4(a)(ii) of the Policy. However, the facts are that the mark, although registered, is descriptive of the goods to which it is applied, that the words comprising the trademark are widely used by other parties dealing in such goods, and the Complainant appears to have only begun to use the BABY ESSENTIALS trademark in September 2005.

That a trademark issues is not sufficient evidence of its presence in the marketplace, hence the requirement for proof of its penetration at the time the disputed domain name was registered. A descriptive trademark well known when the complainant commences the proceedings is not support for a retrospective reputation. In the absence of reputation targeting cannot be inferred. Rather, the Respondent’s use of “baby” and “essentials” targets the market rather than the Complainant. This is evidenced further by other of Respondent’s domain names containing the words “baby” and “essentials.” The domain name was not chosen with the Complainant in mind.

The Panel made a further point based on the history of the disputed domain name. The Respondent was not the original registrant, but acquired the domain name after non renewal by a prior registrant.” It was originally registered in 2002, “some 3 years prior to the date when the Complainant began using BABY ESSENTIALS.” The relevance of this observation may not be immediately apparent. It means that whatever use may previously have been made of the domain name it could not have infringed on the Complainant’s nonexistent trademark. Therefore, the Respondent (as successor registrant) inherited a domain name registered and used in good faith. This is significant as an indicator of a registrant’s motivation for acquiring a previously registered domain name. The result may possibly have been different if the trademark had existed prior to the first registration of the domain name. A similar analysis is performed for transfers that occur after acquisition of a trademark.

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