Yesterday’s Note discussed a dictionary word used misleadingly to confuse Internet users looking for the Complainant, but words can be used denotatively as well as connotatively. In ordinary usage, words often cross the boundary that separate them as a speaker weaves his or her sentences. In the dictionary, definitions are denotative. For example, defining the quality “virtue” or “vertu” is denotative. Trademarks on the other hand are connotative indicators; they add value to words by transforming the common into symbols of identity. Nokia’s VERTU is intended to suggest the quality attributed to one with “vertu” transformed to a cell phone. Geographic indicators are denotative in that they pinpoint location without having to cite latitude and longitude. Sometimes words are interchangeably denotative or connotative depending on the speaker’s intention. “Hayward” is a city in California; it is a surname; it is also the trademark for the Complainant in Hayward Industries, Inc. v. WebQuest.com, Inc., D2009-1493 (WIPO January 27, 2010).
The Respondent in Hayward alleged that it registered the domain name (as it has many others) for its geographic significance. It maintains a stable of domain names with geographic orientations. When domain names are appropriately used they qualify as bona fide offerings of services. It is with deviations from the denotative that respondents expose themselves. As with yesterday’s “vertu” so with today’s “Hayward.” Respondents gain credibility by showing their business plans for their geographic websites, Leyton & Associés (SAS), Thésée (SAS), Leyton Consulting UK and Ireland Limited, Leyton Maroc, Leyton Belgium, Leyton UK Limited v. Drela Mateusz, Elephant Orchestra, D2009-1589 (WIPO January 20, 2010) (<leyton.com>), but lose credibility by putting their websites to use in a non-denotative sense as in Hayward. Once the content of the website evidences a cross over to the connotative the registration of the domain name becomes suspect. “***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,” Ustream.TV, Inc. v. Vertical Axis, Inc, D2008-0598 (WIPO July 29, 2008).
The trademark does not have to have wide currency. The question is whether it is targeted; whether the respondent is taking advantage of the connotative quality of the word or phrase. In Hayward, the proof is internal; evident from the content in that the website contained links to businesses competitive with the Complainant. This raised a question as to whether the Respondent violated paragraph 4(b)(iii) or 4(b)(iv) of the Policy. Commercial gain is fundamental to all the examples of bad faith although only explicitly expressed in 4(b)(iv). However, 4(b)(iii) requires proof that the respondent is a “competitor.” Paragraph 4(b)(iv) focuses on likelihood of confusion. A competitor “is a person or entity in competition with a complainant for the provision of goods or services, and not merely any person or entity with an interest oppositional to that of a mark holder,” Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001). In Hayward, the Panel was not convinced that Respondent is a “competitor” of Complainant.
Whether one is a competitor or not, at least ultimately, important, because the question is determined by the denotative vs. connotative divide. “[W]here … the links are apparently to competitive websites, especially with no indication that the links are not sponsored by or affiliated with the relevant trademark owner, then such activity indicates bad faith under the Policy,” Wal-Mart Stores, Inc. v. Whois Privacy Inc., D2005-0850 (WIPO September 26, 2005). It is a contradiction in terms for a respondent to allege good faith – a denotative argument – and use the domain name for its connotative quality to direct Internet users to websites offering goods or services competitive with complainant.
Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com