Naming is the first imperative. It as much precedes the launching of new lives as it does new businesses. Names secure a presence, and for businesses in the marketplace names can grow into trademarks, if they function like one. Are we not sometimes made aware that not all names are equally distinctive, and that some of them are distinctly commonplace? In discussions leading up to the implementation of the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) trade names (personal names as well) were excluded from protection. The World Intellectual Property Organization (WIPO) in its final report of the procedure that in 1999 became the UDRP, The Management of Internet Names and Addresses: Intellectual Property Issues, Final Report of the World Intellectual Property Organization Internet Domain Name Process (April 30, 1999) (Final Report), declared there were two limitations on the scope of the procedure.
The first limitation relates to the ultimate issue of bad faith, namely that “it is available only in respect of deliberate, bad faith, abusive, domain name registration” (Paragraphs 166 and 135(i)). The second limitation (Paragraph 167) defines “abusive registration by reference only to trademarks and service marks.” Thus,
registrations that violate trade names . . . rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure. (Bold in the original).
In a subsequent report, The Recognition of Rights and the Use of Names In the Internet Domain Name System, Report of the Second WIPO Internet Domain Name Process, dated September 3, 2001 WIPO extended the list of exclusions to personal names, except “when they constitute trademarks” Paragraph 179 (Second Report). For trade names, though, the Second Report softened WIPO’s earlier certainty. Gone is the categorical exclusion that trade names “would not be considered to fall within the definition of abusive registration.” The new consensus is found to be more nuanced, namely that distinctiveness rests not only on lexical choices but circumstances; essentially recognizing what after all is a deep-rooted concept under trademark law:
Where a trade name is used in widespread markets, it . . . often . . . satisfies the conditions for protection as an unregistered trademark so as to qualify, in appropriate circumstances, for protection against bad faith, deliberate misuse under the UDRP” (WIPO Second Report, Paragraph 318(ii)).
The question with trade names is what lexical ingredients qualify—what are “appropriate circumstances”—for surely some do not? Dictionary words used denotatively are obvious candidates for exclusion (“fabricator” is common but THE FABRICATOR is distinctive), but the same dictionary words can also be used suggestively (“Easy”) or arbitrarily (“Virgin”) or combined with other dictionary words (“price” and “line”), and be obvious candidates for protection. They rise in dignity as their penetration advances. Unexpected combinations of words (“Circle back“ and “Nu mark”) or spellings (“quikr”) are also obvious candidates, but letters (“sog” and “atc”) (which to complainants are acronyms and to domain name holders merely arbitrary strings) not so obvious, and with geographic locations plus descriptive word (“Wasatch” and “shutters”) not even likely to have a right.
ICANN panelists have been particularly attentive in construing the antecedents of “rights” in Paragraph 4(a)(i) of the Policy. What passes as a trademark or service mark (when their market presences predate registrations of domain names) is more extensive than some imagine. Panels determined, first, that rights included unregistered as well as registered commercial signs and symbols; then, for the unregistered, it included business and trade names when they “satisf[y] the conditions for protection” as well as celebrities (sports, media, entertainment, etc.) when their names are shown to function as trademarks. The more celebrated the name, the easier the proof (easier because the circumstances of acceptance and recognition are easily marshaled).
(As an aside, just as the envelope for inclusion has expanded, so too has the conjunctive term “rights and legitimate interests” for respondents (Paragraph 4(a)(ii)) widened (for example, agreeing that reselling domain names identical or confusingly similar to marks having no association to them is a complete defense under 4(c)(i) of the Policy and satisfies 4(a)(ii) of the Policy).
This formulation (“satisf[ing] the conditions for protection”) in fact steadily became the consensus of UDRP panelists. It aligns with the notion that rights for complainants (as rights and legitimate interests for respondents) are determined by appropriate circumstances. It applies to both personal names and to trade names. When signs and symbols are indicators of source, when they convey information about origin, are in fact connotative, they qualify. When domain names convey the meanings allocated to them and are used accordingly, they cannot be forfeited for infringement.
So, what names have Panels found to qualify? First, unregistered rights must function as trademarks. Business and trade names have two personalities: for some, they simply identify the entity (“tupelo honey”) or describe their wares or services (“The Fabricator” and “Gotham Construction”); for others, names serve double duty by becoming distinctive of their goods and services.
That is what the Panel found in in CircleBack Lending, Inc. v. Andy Tang, FA1603001667870 (April 28, 2016) in which the Panel found that the “term ‘circleback’ is quite unique, with almost no currency in the English language.” Further, the “Google Books Ngram database, a tool for measuring the frequency of word usages, shows the term’s scarcity: it has only recently risen to the point where it appears in one hundred-thousandth of a percent of books annually.” In this case, the Panel agreed that “circle back” was protected as an unregistered trademark.
Similarly with trade names conveying information about source, Elan, LLC v. Al Perkins, FA1705001731999 (Forum June 26, 2017) (“Elan Studio” and <elanstudionola.com>), or using the first part of its company name, Caldsoft Way3D Sistemas Eireli EPP v. JInsoo Yoon, D2016-2514 (WIPO January 23, 2017) (<caldsoft.com>), or visually distinctive spellings of words, Nu Mark LLC v. Bui, Long, D2013-1785 (WIPO December 22, 2013) (“Nu Mark” and <numarkcigs.com>).
In Elan Studio Complainant offered sufficient proof that its business name functions as a trademark by being distinctive of its activity. That Complainant entered the marketplace with a trade name registered in the office of the Louisiana Secretary of State does not undercut the claim because it did not rely on the state filing as evidence of a common law right; it offered evidence of “appropriate circumstances.”
The Panel in Nu Mark found that “Complainant’s trade name . . . had become a distinctive identifier associated with its business and products on its website and thus demonstrated complainant’s unregistered trademark rights.” In Caldsoft the Panel found that the Complainant acquired unregistered trademark rights in the trade name CALDSOFT beginning in 2000 for the purpose of the Policy.” That there was a short period in which the trade name “was not a component of the Complainant’s company name does not act as an abandonment or waiver of rights. The evidence shows the Caldsoft name was the predominant commercial impression of a valid trademark registration during the intermezzo. Moreover, the evidence shows the Complainant used the name Caldsoft on its ‘www.caldsoft.com.br’website as a trademark during that time.”
Further, prior UDRP panels have found the use of a term in connection with specific products can give rise to unregistered trademark rights. Examples are Uitgerverij Crux v. W. Frederic Isler, D2000-0575 (WIPO October 30, 2000) finding that complainant demonstrated unregistered trademark rights in a term based on evidence that complainant had been using the mark in association with its business for years prior to the registration of the domain name in dispute; also Endeavors Technology, Inc. v. Dick In Jar, D2001-0770 (WIPO July 21, 2001) (endeavorstechnology.com> finding that complainant’s use of a term as a trade name in connection with its product on its website was sufficient evidence that complainant had tied its business name to its product in advertising and promotion and, consequently, was sufficient evidence of complainant’s rights in the trade name as an unregistered trademark.
For the same reasons Acko Technology & Services Pvt. Ltd. v. Shashank Singh, D2017-0821 (WIPO June 13, 2017) (<ackoinsurance.com>) and Quikr India Private Limited v. Ujjwal, Green Apple Info, D2016-2631 (WIPO February 10, 2017) (<quikrbazaar.com>) prevail and trade names on the other end of the continuum composed of generic and descriptive terms, Wasatch Shutter Design v. Duane Howell / The Blindman, FA1705001731056 (Forum June 23, 2017) (<wasatchshutters.com>, <wasatchshuttersdesign.com>) fail.
Earlier examples that are simply too generic include Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Forum October 30, 2002) (“diversified” and “mortgage”) and WorldClaim Global Claims Management v. Bishop, Atticus / Bishop, FA1609001694577 (Forum November 7, 2016) (“world” and “claim”). The Panel in WorldClaim held that “[o]ne would need very compelling evidence to show that the combination of two descriptive words” supported a common law claim. The Panel in Wasatch Shutter Design held that “descriptive, or geographic words such as the words WASATCH, SHUTTERS(S) and DESIGN in the case at hand, there is an even greater onus on Complainant to present compelling evidence of secondary meaning or distinctiveness.” Complainant failed to do that and the complaint was dismissed on the first requirement: it had no right to support a claim.
The “very compelling evidence” demanded in WorldClaim and other cases is the price complainants pay for succeeding in proving rights. These views have a solid foundation in UDRP jurisprudence, even for businesses well known in the marketplace whose marks are common terms such as Target and High Life: Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (“target.org>) and Miller Brewing Co. v. Hong, FA 192732 (Forum December 8, 2003) (<highlife.com>).
The importance of these decisions to the business community (I’m including investors in this class as well as those who have no understanding of trademark law) rest on their forewarnings both of what to expect and how to respond to claims of abusive registrations of domain names. Names, trade and personal qualify when their presence in the marketplace are perceived as distinctive of their activities, but not otherwise.
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. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Supplement and Update through August 2016 published January 2017. The Supplement and Update is also available in pdf format free on the publisher’s website, www.legalcornerpress.com/dna-supplement.