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Acronyms, Passage of Time, Reputation and Coincidence

Domain names composed of two or three letters are “extremely prized,” Deutsch Welle v. Diamondware Capital Ltd, D2000-1202 (WIPO January 2, 2001) (<>). They can be attractive to many trademark holders other than complainants who claim a market identity and seek to capture the domain names for themselves. However, except for acronyms or initials well known or famous, there has to be more than coincidence of letters or numbers to find the registrant answerable for abusive registration. Two recent cases illustrate the Complainants’ burden of proving abusive registration, Holy Mother World Networks v. Gregg Ostrick, D2011-0627 (WIPO June 22, 2011) (<>) and GEA Group Aktiengesellschaft v. G.E.A. Design, D2011-0927 (WIPO July 30, 2011) (<>). It is not only that neither are in the same category as IBM and HP, but in neither case was there any evidence of targeting.

The fact that an acronym, or as in the case of GEA Group the Respondent’s initials, can is be used by many companies including the complainant cuts both ways. Where there is no proof of targeting it supports the respondent’s good faith and where there is targeting the fact that many companies could claim it is irrelevant. So, for example, the Respondent in Smith Travel Research, Inc. v. Victor An, FA0904001259999 (Nat. Arb. Forum June 15, 2009) registered <>, which is identical to the Complainant’s registered trademark. The evidence clearly established that “str” was “a very popular abbreviation and has been used by many businesses.” But, infringing intention was established through the website’s content. “Despite Respondent’s protestations to the contrary … the Complainant and the Respondent both compete in the travel business.” This leads to the conclusion that the “Respondent was clearly trying to associate its offerings with the goodwill of Complainant’s well-known mark.”

Holy Mother World Networks does not have a registered trademark for “hmwn” and it made no meaningful attempt to demonstrate its reputation at the time of domain name registration. It has the double burden of proving that its unregistered mark preceded the domain name registration and (if it did) the likelihood that a respondent geographically remote would have had any actual knowledge of its existence. GEA group whose first use in commence preceded the domain name registration by decades does have a registered trademark. Its burden is to prove that the Respondent’s choice (the initials of his name and registered 16 years before the proceedings) (remoteness in time rather than in distance) was in bad faith. For different reasons, neither Complainant can succeed on unsubstantiated allegations. “Notably,” states the majority in Holy Mother World Networks, “[the Complainant offers] no evidence … of the readership of the Complainant’s website or of the listenership or penetration of its radio broadcasting service at the date of registration of the Disputed Domain Name, being 27 December, 2002. Neither is there any evidence as to the number or scope of donations made to support the radio station by the Canadian public, nor of any promotional activities whether within the church or within the community which might demonstrate the type of use that the Complainant made of the acronym HMWN at the relevant date.”

An allegation of bad faith registration is undermined where, as in GEA Group, the Respondent shows that he “has a legitimate explanation for [his] use of GEA in the disputed domain name based on the use of [his] initials.” The fact that a domain name does not resolve to an active website although it once did is not evidence of bad faith. In GEA Group the Respondent uses his initials for his email address. The fact that the Respondent may be willing to sell the domain name “for a substantial multiple of the USD 2,000 sum offered by the Complainant, carries little weight.” For a Respondent with a right or legitimate interest the disputed domain name is an asset (intangible personal property). His to hold or sell as he sees fit, although any purchaser from the Respondent will be limited by its representations and warranties under Paragraph 2 of the Policy.

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