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Dictionary Words Generic; In Compound Distinctive

Dictionary words are generic when employed denotatively for their ascribed meanings, therefore incapable of trademark status, but can nevertheless acquire distinction if used connotatively as arbitrary or suggestive symbols. It follows too that  compounds composed of generic terms are not condemned to being generic simply because of their parts; can in fact be distinctive and qualify for trademark registration on the Principal Register.

In Greencraft LLC v. Kim, James / Mediablue, FA1509001636762 (Forum November 4, 2015) Respondent and Dissent argued that “greencraft” was as generic as “green” and “craft.” However, the creation of a compound can be an imaginative act for businesses that are both “green” and “craft” related. It is nevertheless comparatively weak in that it essentially describes the goods or services offered or performed by the trademark owner.This was essentially the dissent’s view.

The majority held that while each term of the compound is generic the trademark is distinctive. It goes on to say that :

[i]n UDRP disputes there is frequent misdescription of words or terms as “generic” when what is meant is that the words are somehow non-distinctive. Putting that to one side, Panel accepts that in certain contexts the words “green” and “craft” might separately have generic meanings, but that does not mean their combination is a generic expression (whatever the context). Panel agrees with Complainant’s reasoning in its additional submissions that:

Respondent improperly analyses the mark GREENCRAFT by dissecting it into its component part (sic). Respondent reasons that the word “green” has a meaning and the word “craft” has a meaning. However, it does not follow that the terms “greencraft” or even “green craft” have a recognized meaning.

The majority concludes from this that “[t]here is no evidence that either ‘greencraft’ or ‘green craft’ is a dictionary term. [Neither does the] Panel . . . find any compelling evidence that either ‘greencraft’ or ‘green craft’ [is] . . . a commonly used descriptive word or phrase.”

While the Dissent’s reasoning is respectable that “greencraft” is generically descriptive for items made for or using environmentally sensitive practices” the majority’s decision considers the matter in a larger context. Its closer reading of the facts, particularly concerning Respondent’s recent acquisition of <>, points to an interesting issue about successors. Implicit in its reasoning is that if the domain name had continued to be held by the original registrant Complainant would have had no actionable claim of cybersquatting. The consensus—strong enough to be considered precedent—is that successor registrants’ cannot rely on the good faith registration of their predecessors. They are on their own:

[While the] question of timing is an irrelevancy for the purposes of proof of trademark rights under paragraph 4(a)(i) of the Policy . . . in this case the timing is reset by Respondent’s acquisition of the domain name in August 2015 which becomes the date by reference to which any matters under paragraphs 4(a)(ii) and (iii) are determined.

Respondent attempted to rebut the prima facie case against it by arguing that it is a reseller of generic domain names that included other combinations of “green” and “craft”:

Panel accepts that Respondent is a domain name reseller and the reasoning of many panels that the business of registering and selling domain names for their generic value is a legitimate business practice protected under the Policy. . . . However, the issue here is not the legitimacy of Respondent’s business model but whether it has a legitimate interest in the disputed domain name. Put another way, the legitimacy of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another.

Even assuming “greencraft” is not an original term—is on the lips of everyone active in the niche Complainant services—the majority’s conclusion is correct in that the mark indicates a specific market player which for its class qualified for registration on the Principle Register. Where proof supports respondent using the domain name to harvest consumers looking for complainant’s website “mere genericness [even if it were that] does not create a legitimate interest in a domain name if it corresponds with the trademark of another” In Greencraft, Respondent forfeits the domain name because there was evidence of bad faith use: “[a]t least one link leads to the business of a competitor of Complainant. That use is in bad faith.” The majority is also correct that “[w]hether or not Respondent added the website content and links, it is nonetheless responsible for them.”

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement here

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