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Domain Names Composed of Random Letters and Acronymic Trademarks

Domain names composed of few letters are extremely prized; the more so as the number of third parties legitimately claiming a right to them increases. The larger the number of potential claimants the less likely any one of them can prevail in a UDRP proceeding. Random letters and even acronymic trademarks are likely to be on the lower end of protectability as generic terms, with two exceptions. First, where the letters are instantly recognizable as a famous trademark – RBS for example in The Royal Bank of Scotland Group Plc v. irbs, D2012-0854 (WIPO June 25, 2012); The Royal Bank of Scotland Group plc v. Sara Richmond, D2012-1720 (WIPO October 25, 2012) (). The Royal Bank of Scotland has been particularly busy these last several months in policing its three-letter trademark. The second exception is where the domain name is composed of letters plus a generic term in which the generic term circles back to make reference to the trademark – for example, QNX + phone as in , QNX Software Systems Limited v. Jing Rung, D2012-1597 (WIPO October 23, 2012) where the trademark may not be instantly recognizable, but Complainant’s software technology is used across a variety of industries and applications including in the field of telecommunications. The QNX Complainant is a subsidiary of RIM Limited (developer of the Blackberry smart phones and tablets), thus the suffix “phone” is meaningful for establishing bad faith registration.

Where the acronymic trademark is not distinctive it is likely that letters either standing alone or with an affix is non-infringing. This would not be true of a famous mark plus affix, as noted above with RBS and “my” or “i”. There are several BMW cases that also illustrate this point. An example of a case involving a non-distinctive acronymic trademark is IDN, Inc. v. Name Administration Inc. (BVI), FA1209001461862 (Nat. Arb. Forum October 23, 2012) in which Complainant claims that Respondent’s registration of is identical to its trademark, LSDA. To Complainant “the combination of the four letters ha[s] no meaning … apart from [its] mark and the few acronyms one can find in an internet search.” However, the Panel agreed with the Respondent that

the four-letter string of the <> domain name is common and generic/descriptive of many companies and products, and therefore, Complainant does not have an exclusive monopoly on the letters on the Internet.

Moreover, as the Respondent pointed out and the Panel agreed “the four letters LSDA may stand for many companies and products.” Complainant has a well-defined market. It manufactures keys, locks and door hardware. Complainant offered no evidence of its reputation or that Respondent had targeted (or was targeting) the trademark. “In these proceedings, the Complainant does not allege that Respondent has used the domain name in dispute for any purpose relating to keys, locks, door hardware, or any of the goods or services in which Complainant trades.”

Separate and apart from the fact that the domain name was registered prior to Complainant’s trademark rights coming into existence, which by itself negates registration in bad faith,

The general use of a domain name comprising four letters which could stand for anything without targeting the Complainant’s business constitutes, in the opinion of the Panel sufficient grounding for the Respondent to establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

This conclusion is not undermined by Respondent’s counter-offer to sell the domain name for a price exceeding its out-of-pocket expenses (paragraph 4(b)(i) of the Policy) because excessive counter-offers are not condemned by the Policy. “[A]bsent exclusive and famous association, the general registration and use of non-distinctive ‘acronymic’ domain names is not illegitimate merely because one or another party may have rights in relation to particular goods and services, absent actual use of the domain name to engage in infringing conduct.” Further, “The Panel agrees with the Respondent that the evidence on record demonstrates that Respondent registered an inherently valuable short domain name more than a decade ago and Respondent’s use of the disputed domain name is clearly not violative of Complainant’s trademark or service mark rights.”

A review of short letter combinations finds few that are truly recognized nationally and internationally and in many cases the same letters could be claimed by parties unconnected with any particular complainant. However, once the evidence shows that the website to which the domain name resolves targets a particular complainant the respondent’s is called upon to explain its choice. That is what the Respondent in IDN was able to do and the Respondent in QNX Software was unable to do.

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