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Good Faith in Registering Common Words and Phrases Exploited for Their Generic Meanings

It is not illegitimate to use domain names for pay-per-click revenue. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Para. 2.6: “Panels have generally recognized that use of a domain name to post parking and landing pages or pay-per-click [PPC] links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ or from ‘legitimate non-commercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.”

The legitimacy issue is surveyed by two 3-member Panels involving the same respondent. Skycam, Inc. v. Administrator, Domain / Vertical Axis, Inc., FA1102001372311 (Nat. Arb. Forum April 29, 2011) and BrightSign LLC v. Administrator, Domain / Vertical Axis, Inc., FA1103001379395 (Nat. Arb. Forum May 4, 2011). Both complaints were denied. The question is whether the “PPC links genuinely relate[] to the generic meaning of the domain name at issue.” The Panel in Skycam noted that only “some of [the links] bear a semantic relationship to the domain name.” How much this matters depends on the reputation of the trademark claimed to be infringed. The WIPO Overview, same paragraph, continues that the use of “domain names consisting of dictionary or common words or phrases supporting posted PPC links genuinely related to the generic meaning of the domain name may be considered as a permissible use.” The Panel in BrightSign notes that the “more descriptive a mark, the more difficult becomes Complainant’s burden of proof to establish registration and use with Complainant’s mark as a target.”

There is clearly a line separating the legitimate from Panel illegitimate. BrightSign’s Semantic relationship is one test. One of the panelists in Skycam noted that “[i]t may be and sometimes is the case that a domain name is so generic or descriptive that the objective bystander could not responsibly conclude that it is evoking the trademark,” but of course this depends on the website’s content and linking history. If there is no “semantic relationship” or if the website contains linking to websites competitive with the complainant then the line is crossed to abusive registration. There is significant precedent for holding high volume registrants (such as the Respondent in Skycam and BrightSign) to a higher level of investigation to satisfy its representation and warranty under paragraph 2 of the Policy.

Panels have expressed different views whether a respondent is making a bona fide offering of goods or services in displaying pay-per-click links. The complainant can prevail on the second requirement and lose on the third. In fact, the BrightSign Panel treats the second and third requirements together while the Skycam Panel declines to reach a decision on the rights and legitimate interests element.

Some Panels hold that a respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee does not support rights or legitimate interests in the domain name. Other Panels hold that operating a pay-per-click search engine is a bona fide offering of goods or services “because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products,” Accetta v. Domain Admin, FA 826565 (Nat. Arb. Forum January 2, 2007).

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