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Generic Foreign Words + Famous Mark

Adding a dictionary word or descriptive phrase to a trademark may call for an explanation – Everglades Direct, Inc. v. HR Direct LLC, FA0908001278110 (Nat. Arb. Forum September 23, 2009) [adding “online” HR DIRECT to form <>] discussed September 28-29th – but is not an obvious infringement of another’s rights. That is not the case when the addition is to a famous mark, Microsoft Corporation v. Francesco Pennisi, FA0908001280894 (Nat. Arb. Forum September 29, 2009), adding “contatti” (contact in Italian) to MSN to form <>. The dictionary word can be a common foreign word, Am. Online, Inc. v. Villanueva, FA 236589 (Nat. Arb. Forum April 2, 2004) (the word “download” translates into French as “telechargement” and in Spanish translates as “bajar” or “descargar,” which the Respondent added to ICQ and WINAMP), although the outcome may depend on the mix of panelists, Future France v. Name Administration Inc. (BVI), D2008-1422 (WIPO December 8, 2008) (the majority rejected the complaint on <pcjeux> for the PCJEUX trademark registered in France on the grounds that “pc” and “jeux” were generic.)

The record in Microsoft indicates that the Respondent uses the domain name to operate a website offering online services competitive with the Complainant. Such an offering is not bona fide under paragraph 4(c)(i) of the Policy. To complete the prima facie case, there was no proof that the Respondent was commonly known as the domain name or that the website was being used for noncommercial purposes. When the respondent defaults in appearance and the complainant is found to have presented a prima facie under paragraph 4(a)(ii) the complaint prevails on that requirement the Panel proceeds to examine the bad faith elements. However, the result for this requirement is not influenced by the fact that the trademark may be composed of generic or descriptive terms. Technically, a respondent has no right or legitimate interests in the domain name when it is a competitor even though not in the same market, as was the case in Everglades Direct and yet have registered the domain name in good faith.

Actionable conduct depends on the respondent’s motivation for registering the domain name. If a respondent is a competitor with knowledge of the complainant and its trademark then it violates paragraph 4(b)(iii). In Everglades Direct the Respondent denied knowledge and there was no evidence of its having any. The Respondent in Microsoft defaulted. However, evidence intrinsic to the website, in this case incorporating the Complainant’s logo to make it appear as though the Internet user was purchasing services from the Complainant, was conclusive that the Respondent had knowledge of the Complainant’s trademark. “The act of Respondent passing off as Complainant is evidence of bad faith registration and use.”

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