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Disclaiming Common Words in Design Trademark

It is not surprising that two companies in different though contiguous States think they can make a living selling coffee at a discount and not surprising either that they select similar names, as trademarks and domains. Inevitably, the trademark holder sees the domain name registrant as trespassing on its rights however generic or descriptive the phrase they both use. However, the Respondent in Discount Inc c/o Kirby Newbury v. WCM Investments, Inc. c/o William McClure, FA0908001281715 (Nat. Arb. Forum October 21, 2009) denied any knowledge of the Complainant or its trademark. The Complainant has a registered trademark on the Principal Register for DISCOUNT COFFEE.COM, but disclaimed the words “apart from the mark as shown.” That is, he had nothing but the design. The disputed domain names describe the Respondent’s line of business, <>, <>, and <>. No superior right to the domain name is supported by the design trademark and there was no evidence that the Respondent registered the domain names to capitalize on any market recognition historically built by the Complainant. Pleading market recognition – “Discount Coffee has become the most recognized leader in the online coffee sales industry” – is merely fluff if not proved.

Superiority of right where it exists is more likely to occur with strong trademarks, on the fanciful and arbitrary end of the classification scale. It is not just that adjectival phrases composed of common words are weak – there are undoubtedly examples of descriptive combinations that have achieved great market penetration – but everyday expressions such as “discount coffee” arrive on the Principal Register (if they do at all) only as part of a design. Protectability of the design does not extend to the words. That is why complainants’ arguments are generally limited to expressing disbelief that the respondent was unaware of its existence. The “mere existence of Complainant’s trademark rights at the time Respondent registered the disputed domain name does not … create any presumption of knowledge,” Salmi Oy v. PACWEBS, D2009-0040 (WIPO February 4, 2009). In Discount Coffee, “The Respondent was well aware of the long standing notoriety of Discount Coffee and of the mark when registering the domain names as evidenced by his previous work experience.” But the record offer no proof of that which is self evident to the Complainant.

Of course if a respondent had registered domain names for websites advertising the same goods or services as the complainant but was not itself in the business of distributing such goods or services its good faith would not be taken for granted. Advance Magazine Publishers Inc. v. Moniker Privacy Services, Registrant, Registrant / Registrant, D2009-0801 (WIPO August 5, 2009) involving an equally generic expression, <>. But in Discount Coffee, there was no proof of the Complainant’s penetration into the Respondent’s market – necessary to establish knowledge – and the Respondent had an ongoing business. It was using the domain names “in connection with a bona fide offering of goods or services” [paragraph 4(c)(i) of the Policy]. Although it was unnecessary to examine the bad faith requirement, the Panel recited the Respondent’s contentions (presumably supported by evidence in the record) to the effect that its purpose for registering the domain names was to “build its own brand and identity.”

As in Push Traffic Inc. v. Art Lynch, FA0908001281020 (Nat. Arb. Forum October 14, 2009) in which the Complainant argued theories outside the scope of the Policy, Note for October 19th, Mr. Discount Coffee “argues various legal points pursuant to the Lanham Act and the Arkansas Deceptive Trade Practices Act as they may apply to Respondent’s alleged unfair competition and deceptive trade practices. The instant dispute is governed by the UDRP and not the Lanham Act and the Arkansas Deceptive Trade Practices Act.”

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