Combinations of letters are either acronyms or abbreviations for a company’s name – protectable or not against domain name registrants depending on the trademark’s strength – or simply a string of random letters (“random” that is to respondents) that are capable of use (when acronymic) by many third parties other than complainant trademark holders. Panels have noted that domain names composed of few letters are “extremely prized” Deutsch Welle v. Diamondware Capital Ltd, D2000-1202 (WIPO January 2, 2001); the Panel in Physik Instrumente GmbH. & Co. v. Stefan Kerner and Jeremy Kerner and Magic Moments Design Limited, D2000-1001 (WIPO October 3, 2000) rejected Complainant’s analogy of “pi” with “vw” or “ibm.” They can be attractive to many persons other than trademark owners of identical or confusingly similar strings. Louis Vuitton Malletier S.A. v. Manifest Information Services c/o Manifest Hostmaster, FA0609000796276 (Nat. Arb. Forum November 7, 2006); more recently, Rocky Mountain Health Maintenance Organization, Incorporated v. Domain Administrator / PortMedia, FA1112001418881 (Nat. Arb. Forum January 27, 2012) ( which the Panel found not to be a true acronym.).
The line dividing good from bad faith, what respondents call random letters (unprotected) and complainants acronyms deserving of protection is difficult to calibrate. This is illustrated in CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd., D2011-1981 (WIPO February 20, 2012) in which the majority noting that this was a close case held in Complainant’s favor over a vigorous dissent. “It is” (the majority pointed out)
by now well established that PPC parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii).
The majority rests its conclusion of abusive registration on awkward logic, namely that if there “is no dictionary meaning for the term ‘ceat’ … [t]he value of the disputed domain name to the Respondent is, therefore, its value as a trademark.” The evidence of opportunism and willful blindness (it must be admitted) has some foundation. The Complainant, an Indian corporation in the business of manufacturing tires (or “tyres”) has a trademark registration in Canada, the location of Respondent’s domicile.
Nevertheless, the dissent offers a persuasive analysis that the Respondent’s use of “ceat” for the contents displayed on its website supports a finding of safe harbor. There is, for example, evidence that the combination of letters as an acronym can be claimed by four or five other third parties.(There may be a question here as to how many other third parties may claim a string before it can be declared generic. The greater the pool of use the heavier the burden to prove targeting. Trans Continental Records, Inc. v. Compana LLC., D2002-0105 (WIPO April 30, 2002) (“LFO, among other uses, is an acronym for ‘Low Frequency Oscillation,’ and, according to Respondent, the initials of numerous organizations and individuals”).
The dissent in CEAT notes:
The majority claims that such a principle [i.e. using the domain name in a non-trademark sense] cannot apply “where the domain name is a trademark and has no dictionary meaning…” and that such an exclusion applies in the present case because “(t) here is no dictionary meaning for the term ‘CEAT’.” It is clear from previous decisions that the first part of that statement is, with respect, not correct, as an acronym may give rise to a right or legitimate interest even if it is a trademark. Nor is it a requirement of the Policy or any relevant law that an acronym must have a dictionary meaning; many, if not most, acronyms would have no dictionary meaning, some have many meanings, some have whatever meaning the user gives to them and others have value simply because they are short, catchy and easy to remember.
The point being made by the dissent is an important reminder that combinations of letters that to some are acronyms of well-known trademarks may to others be no more than “short, catchy and easy to remember” strings that can properly be used by the first to recognize their non-trademark value. The majority noted that this was a close case.