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Multiple Users of Term Other than Trademark Owner

There have been a number of recent UDRP cases in which complainants’ trademarks are composed of letters or words that have currency for other users in the marketplace. Two, three and four letter strings, for example, are valuable names that could also be acronyms. Examples: <> and <>. The Panel in Rocky Mountain Health Maintenance Organization, Incorporated v. Domain Administrator / PortMedia, FA1112001418881 (Nat. Arb. Forum January 27, 2012) noted that the domain name was not exactly an acronym. The Respondent in Telephone and Data Systems, Inc. v. Protected Domain Services – Customer ID: NCR-813584 / Daniel Wang, D2011-0435 (WIPO May 10, 2011) pointed out that there are “numerous other United States trademark registrations for TDS for a wide variety of goods and services.” A review of the PTO database for “TDS” indicates that a more accurate description would have be a “handful” rather than “numerous” but the point is that either as a string of letters or a true acronym the Complainant cannot claim a monopoly on “tds”. A plausible explanation for holding the domain name is sufficient to rebut the Complainant’s prima facie case that he lacks rights or legitimate interests in it.

In Ansell Limited v. – / Kevin Kovar, FA1112001421538 (Nat. Arb. Forum February 1, 2012) Complainant contested the Respondent’s registration of “skyn” which is not an English word but sounds like one. Complainant represented in its trademark application that “skyn” was a foreign word that translates in English to “sense.” There are other “skyn” trademarks. Complainant markets condoms. Respondent purchased <> for a prospective Internet clothing business and offered sufficient evidence of demonstrable preparations to succeed in its 4(c)(i) defense.

Complainants in Telephone and Data Systems and Ansell have registered trademarks. It puts them on a more secure level of protection than unregistered marks, but their burden of proving Respondents’ intentions to take advantage of Complainants’ trademarks is notched higher on rebuttal proof of multiple users in the marketplace. A third example is an alleged violation of an unregistered trademark, NSENSE. Complainant challenged the registration of <>. The Respondent in Nsense Group v. noorinet, D2011-1888 (WIPO January 25, 2012) offered evidence that it was commonly known by the domain name:

The trademark application for a design mark N-SENSE with Korean characters filed by the Respondent’s business partner was published on March 2, 2001 in Korea, and thus the name “Nsense” has not been used solely by the Complainant. A third party, the Respondent’s business partner has run a shopping mall using the domain name <> since 2004. The Google search result hits for each of the disputed domain name and the third party’s domain name <> are much more than those of the Complainant’s relevant domain names <> and <>.

A search of the Internet brings up “numerous” users of “nsense.” Even if the Complainant were able to prove its unregistered mark it would have a hard case. As it happens, it offered no substantive evidence of its historical use of the term. The Panel noted (and properly so) that “a conclusory allegation of common law or unregistered rights (even if undisputed) does not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate is required.”

Where the letters or word strings spell a well-known trademark and the domain name either does not resolve to an active website (in which case the passive holding principle applies, Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), or the website has content competitive with the complainant an inference is likely to be drawn of abusive registration. Where respondent alleges that the domain name is generic or used by many others in the marketplace but content belies good faith registration, the letters or word strings take on an identity specific to the complainant.

This is illustrated, for example, in Smith Travel Research, Inc. v. Victor An, FA0904001259999 (Nat. Arb. Forum June 15, 2009). In fact, the USPTO database lists 95 alive and dead registrations that include “str” and although there was proof that the acronym was “a very popular abbreviation and has been used by many businesses,” targeting was proved through the website content. The Panel held that “[d]espite Respondent’s protestations to the contrary … the Complainant and the Respondent both compete in the travel business.” This leads to the ineluctable conclusion that the “Respondent was clearly trying to associate its offerings with the goodwill of Complainant’s well-known mark.”

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