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Plain English Words Adopted as Trademarks by Foreign Companies

Domain names that mimic trademarks composed of common words that have achieved extraordinary penetration in the domestic and international marketplaces are more likely to be seen as opportunistic registrations [Honeywell International Inc. v. Celeris Controls, FA1010001351938 (Nat. Arb. Forum November 15, 2010)]; less likely with trademarks confined to niche markets [Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010) (<>)]; and less likely further with trademarks composed of the commonest of dictionary words [CareFree Homes II, L.P. v. Worldwide Media, Inc. / Domain Administrator, FA1010001351494 (Nat. Arb. Forum December 7, 2010)].

Foreign complainants with trademark registrations consisting of plain English words that may have penetration in their domestic marketplaces but are unrecognized out of it must establish that in registering the domain name the respondent had the trademark in mind. An illustration of the evidentiary hurdle is Visa Europe Limited v. Name Administration Inc. (BVI), D2010-1531 (WIPO December 14, 2010). The Respondent contended that [w]here a domain name consisting of common terms [here, ‘premier’ and ‘card’] is demonstrably used for an advertising purpose suggested by the primary meaning of the constituent components of the domain name itself, such use is not illegitimate under the Policy.” The Complainant holds a trademark registration in France for PREMIER; the disputed domain name is <>.

“Premier” is a common qualifier in the banking industry “in connection with the marketing and promotion of premium banking and credit services (and, indeed, in respect of a wide range of goods and services in numerous industries), both in France and worldwide.” The component words are descriptive; and not specifically identifying the Complainant as the sole source of banking services.

Visa Europe’s “premier” business is centered in France. The Respondent operates an English language domain name for an English language website. It does not compete with the Complainant. Pay-per-click advertising is not per se illegitimate. “The crucial issue in respect of this proceeding is whether the Respondent was aware of the Trade Marks at the time it registered the disputed domain name. The Complainant has asserted that the Respondent clearly had knowledge of the Complainant and its Trade Marks at that time.” Being aware answers the question of targeting. Denial is made more plausible by distance; not in miles but in language. However, “[t]he lack of distinctiveness of the wording component of the Trade Marks lends weight to the Respondent’s arguments, as do the facts the Complainant has used the Trade Marks primarily if not solely in the French market, whereas the Website operates entirely in the English language.” Thus, audience is singled out as a significant factor in determining whether the registration is abusive. See General Motors LLC v. Shenzhen Belding Golf Planning Co.,ltd., D2009-1781(WIPO February 10, 2010) in which the Chinese Respondent targeted an English language audience.

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