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Marshaling Evidence For and Against Exclusivity of Generic Terms

There is an interesting choreography between trademark holders and domain name registrants when the prize is a combination of two or three dictionary words both covet. The former must set out with specificity their historical presence in the market place – prove targeting – and the latter must emphasize the commonness of the words and their lack of knowledge of the trademark. Slickdeals, Inc. v. Chad Wright a/k/a Inc., FA0910001289878 (Nat. Arb. Forum January 29, 2010) (<>).

The greater the geographic distance between the parties the less the respondent’s hurdle, and vice-versa. The dance is particularly intense when the trademark is registered in a national registry different from the location of the respondent and the complainant has no presence in the respondent’s market, Starmail Distributors Inc. v. Xedoc Holding SA aka domain admin, FA0911001296166 (January 27, 2010) or the trademark is unregistered and local, Trade Me Limited v. Vertical Axis Inc, D2009-0093 (WIPO April 7, 2009) (<>).

Some arguments have nowhere to go, Alexis C. Le Hara v. Vertical Axis, Inc c/o Domain Administrator, FA0809001225832 (Nat. Arb. Forum November 26, 2008) (<sellers>), citing Bag Boy LLC v. Chad Wright &, Inc., FA 530334 (Nat. Arb. Forum September 15, 2005) (<>) stated:

Complainant seems to believe that only the owner of a registered trademark can use that mark within a domain name. This is of course not the case. Ownership of a trademark does not confer the exclusive right to all domain names containing the mark. And using a domain name for commercial gain is not, per se, a bad faith activity prohibited under the Policy.

The Respondent in Factory Mutual Insurance Company v. Valuable Web Names, D2008-1014 (WIPO August 19, 2008) is “my risk” (<>) argues that a Google search reveals a multiple of domain names incorporating the generic term and that as first registrant its ownership trumps the complainant’s. The Panel summarizes the Respondent’s argument as follows:

Complainant’s marks consist of two common dictionary words that make up a common everyday phrase. On the Internet this phrase appears on more than 200,000 third-party websites “wholly unrelated to Complainant,” and Complainant has no exclusive right to it. Because the words are “generic” or the phrase is used often in everyday English, “Respondent, ipso facto, has rights and a legitimate interest” in it.

Whether the registration of a generic term that a complainant claims is identical or confusingly similar to its trademark is legitimate depends on the factual circumstances. The Policy is not prescriptive as the Respondent in Factory Mutual supposes. Thus,

The simple gist of Respondent’s defense is that anyone who is first to register has a right to an available domain name that consists of or includes a common word or phrase, regardless of trademark rights of others. That is simply not true. (Emphasis added).

The “primary rule in relation to domain name registrations is ‘first come, first served,’ to which the Policy provides a narrow exception,” Bradley D Mittman MD dba FRONTRUNNERS® v. Brendhan Hight, MDNH Inc., D2008-1946 (WIPO March 16, 2009) (<>), that the registration is not for an illicit purpose. “The Policy was not intended to permit a party who elects to register … a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.”

This brings us back to Slickdeals. When the music stops, the Complainant has the chair, for three reasons: first, the trademark has and had national exposure in the United States where both parties reside from prior to the registration of the domain name; second, the domain name is identical to the trademark; and third, the Respondent is using a domain name to offer links to third-party websites that offer services similar to those offered by the Complainant. It is not out of the question that <> could have been used for the bona fide offering of goods or services, but the circumstantial evidence supports targeting.

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. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement here

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