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Targeting as an Essential Element of Proof for Trademarks Composed of Generic and Descriptive Terms

Having a registered trademark buys standing but it is not sufficient to win a domain name if its composition is on the weaker end of the classification scale.  The Panel noted in National Gardening Association, Inc. v. CK Ventures Inc., FA0911001294457 (Nat. Arb. Forum February 16, 2010) that “it seems probable that the USPTO only found the marks [containing the words GARDENING WITH KIDS] to be distinctive enough to be registrable because of the stylized manner in which they were presented as well as the additional embellishment of the sunflower device.”  To prevail the complainant must also prove that the respondent had actual knowledge of its trademark and registered the domain name to take advantage of its reputation in the marketplace.

Timing is a critical factor in proving knowledge even with suggestive trademarks.  Holders of generic and descriptive trademarks cannot rely on their registrations. That a later acquired trademark has no priority over an earlier registered domain name is a well established principle imbedded as a consensus view in the WIPO Overview at paragraph 1.4.   In National Gardening, the record disclosed that when the disputed domain name was registered “Complainant’s earliest trademark was still pending and indeed was only advertised for opposition purposes some 3 weeks” after the registration of the domain name. “Admittedly [the application] was on file and [the trademark] had apparently been used since January of that year, but it seems difficult to attribute bad faith to Respondent when it could hardly have been aware of Complainant’s (only marginally) earlier rights.”

Generic and descriptive trademarks used by their holders in an essentially generic and descriptive way cannot prevent others from using the same combination of words to advertise their own goods or services.  This is the case in National Gardening and was also illustrated recently in Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010), AUSTIN AREA BIRTHING CENTER and <austinabirthcenter>.

Even though the Respondent in National Gardening is using the domain name as an advertising portal and in that respect may lack any right or legitimate interest and even if the use of the domain name marginally directs Internet users to competitors of the Complainant it is not sufficient to prove abusive registration.  The Panel cited Société des Produits Nestlé S.A. v. Pro Fiducia Treuhand AG, D2001-0916(WIPO October 12, 2001) for the proposition “that where a respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant’s business, and is not using the domain name to divert Internet users for commercial gain, then lack of bona fide use on its own (i.e. all the features set out in paragraph 4(b) of the Policy), is  not sufficient to establish bad faith.”  This proposition is less convincing when applied to a suggestive or fanciful trademark, TATRA, a.s. v. Tatra Ltd., Tatra folks PO, FA0911001296249 (Nat. Arb. Forum February 5, 2010), denying the complaint (over dissent).  In National Gardening, there was no persuasive evidence that in registering the domain name the Respondent intended to piggyback on the reputation of Complainant’s trademark.

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