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Acquired Distinctiveness Through 5 or More Years of Use

Words and phrases in common use are attractive equally to purveyors and domainers. That one has a trademark does not disqualify the other from registering an identical or confusingly similar composition as long as proof fails to demonstrate bad faith. While registration confers distinctiveness, trademarks on the lower rung acquire this virtue over time. Trademarks qualified for registration under Section 2(f) of the Lanham Act (15 U.S.C. §1052(f)) for example are concededly generic or descriptive. This being the case, it is equally true that as a trademark descends in rank it has less protection. PetsMed Express Inc. v. JLB a/k/a Joseph Brinton, D2009-0179 (WIPO April 6, 2009) (“The Policy was not intended to permit a party who elects to register or use a common or descriptive term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.”).

Viewed in this light distinctiveness is a fluid concept. In the UDRP context, domain names composed of common words or descriptive string employed for their common meanings infringe complainant’s right only on evidence that respondent intended to take advantage of complainant’s existing reputation in the marketplace. British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, D2009-0817 (WIPO August 26, 2009). As a result, while potential use by many of common words and descriptive strings may be an argument in favor of a respondent’s good faith, the test is whether respondent targeted complainant’s trademark in particular, and that is determined either from the resolving website’s content or the parties’ geographic or product/service proximity.

Whether a respondent acted in bad faith depends on its intentions, which in turn can be determined from its business operation and further inferred from its use of the domain name. “If the Complainant’s mark [PETMEDS] were highly distinctive or famous, that conclusion would be nearly unavoidable.” These principles are reinforced in a new proceeding by PetsMed Express against a different respondent, Brian Schiffman, Inc., D2012-0326 (WIPO April 4, 2012). It lost the first time for the same reasons as the second. The Panel notes in the second proceeding that

“Pet meds,” referring to pet medications, appears to be widely used as a descriptive term, and it is found in numerous domain names, including <>, <>, <>, <>, <petmeds>, <>, <>, <>, <>, <nationalpet>, <>, <>, <>, <>, <>, <petmeds>, <>, and <petmed>. This suggests that many retailers of pet medications find the term useful for its descriptive value rather than its trademark value. (Emphasis added).

There is no question that the Respondent had knowledge of the Complainant, but that is not dispositive either of lacking rights or legitimate interests or of abusive registration. But, as noted above, the mark is neither “highly” distinctive nor famous. Furthermore, competition is not grounds for forfeiture.

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