In disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) parties should be able to rely on Panels delivering predictable, consistent, and legally reasoned decisions. In large measure, this depends on Panels analyzing the facts objectively through a neutral lens and applying principles of law consistent with the jurisprudence. But the results are not always, or are not always seen by the losing party, as having achieved a fair result. What has to be avoided in considering the underlying concern expressed in this criticism is the belief that marks and domain names are fixed locations on a continuum; they are not. Potential infringements grow into cybersquatting (if they do at all!) as the factors in favor of one party or the other establish one or the other’s rights. Not every domain name corresponding to a mark is infringing; but it is equally the case that not every domain name composed of common linguistic elements is lawful. What principles of law will be applied will depends on the facts parties are able to establish or the record holds.
We can see this playing out in a number of recent adjudications. In some instances domain names can just as easily be held, employed, monetized, and resold by others without disturbing any third-party rights. On the continuum some combinations employed as marks have achieved greater recognition than others, either because alone or combined they may be unusual or not commonly found together in everyday speech or have achieved a connotative value due to their penetration in the market, always recognizing that what is connotative in some circumstances can as easily be descripitive and denotative in others. See earlier discussion on this topic, Trademarks vs. Domain Names.
This is to say that some combinations are common coin even if they have never been uttered before–“Order my oil” (from 2017, noted at the botton of this essay), “vapor supply,” “fair markets,” and others discussed further below. If website content projects the semantic understanding of words or phrases (to focus on just one factor) it favors lawful registration; but as a combination moves to the right on the continuum it strengthens to “coined” rather than common coin; in trademark parlence, it becomes inherently distinctive.
Disenchantment over fairness have been expressed about number of earlier decisions, some of which have moved to federal court for de novo assessments under the Anticybersquatting Consumer Protection Act (ACPA) resulting in UDRP awards being vacated (<ado.com> settled by on-the-record stipulation) or “confirmed” (<beautifulpeople.com> with attorney’s fees to domain name registrant). See earlier discussion on ACPA actions, Post-UDRP, ACPA Actions Challenging Awards. In all the instances discussed, the question about fairness is whether particular awards are warranted by the facts.
Respondents are either domain name investors (reselling or monetizing their holdings) or businesses (active in the past but not necessarily so in the present). The award has been questioned in Lakes Gas Co. v. Domain Administrator, DomainMarket.com, D2019-0830 (WIPO June 21, 2019) (<lakesgas.com>). The issue resolves around its status as an expression: we will want to know on what part of the continuum “lakes gas” sits? Is it common or uncommon? I’ll come back to this decision in a moment. The same question has to be considered for other expressions such as <payway.com> and <rxpetplan.com> and others which I’ll talk about first. We have to determine where expressions sit on the continuum.
There is certainly a degree of subjectively in answering the question, but the analysis has to begin with the distinctive value of a particular combination. A speaker is more likely to encounter “beautiful people” or “power agent” in daily conversation than other combinations that signal the existence of a mark. Let’s examine the differences through some recent cases. No one will argue that “toner connect” carries any strong connotative strength, but the Complainant nevertheless prevailed in Toner Connect, L.L.C. v. Privacy Protect, LLC / Realogue Corporation, D2018-2829 (WIPO February 21, 2019). This was not because the combination is particularly distinctive–it could only have become a mark through proof of secondary meaning–but because “the evidence submitted shows that Respondent’s sole owner and president is a direct competitor of Complainant.”
Where there is no proof of targeting weak marks and the combinations are common coinage complaints must be denied. In Darryl Davis Seminars, Inc. v. Privacydotlink Customer 656889 / Domain Admin, Abstract Holdings International Ltd., D2018-2238 (WIPO January 21, 2019) the Panel held that Respondent “has satisfied the Panel that it registered [<poweragent.com>] for its inherent value as a domain name incorporating a common descriptive term, as part of its business as an investor in such domain names.” In ILQ Australia Pty Ltd v. Gidman, John, FA1806001790689 (Forum July 13, 2019) Complainant failed to demonstrate (or even allege) it had common law rights to FAIR MARKETS, but even if it had proof of secondary meaning it would have taken a strong dose of evidence to overcome the commonness of the expression: “Respondent’s own evidence [demonstrates] that the expression ‘fair markets’ is descriptive and in ordinary use in the financial markets sector.”
The results in these cases are undeniably correct; one can even (once the facts have been fully excavated) say they are “predictable.” Complainants prevail if they satisfy their burden of proving abusive registration but fail if their “proof” simply alleges a corresponding trademark. The results in Toner Connect and Darryl Davis Seminars are simply stating the law.
Let’s look at a couple of more examples. In Pet Plan Ltd v. AD Burns, D2019-0755 (WIPO June 24, 2019) Respondent added “rx” to PET PLAN. The applicable principle is that adding an affix does not distinguish a domain name from the mark and most likely reinforces complainant’s claim. The Panel considered three facts in Pet Plan that favored Respondent: 1) the phrase “pet plan” while distinctive in a trademark sense is a common phrase; 2) it qualifies as a mark for its acquired distinctiveness; no one would ever accuse it of being inherently distinctive; and 3) Respondent submitted documentary proof that it could not possibly have targeted Complainant because it actually offered Rx pet services before the existence or reputation of the mark:
Respondent has provided evidence, to some extent acknowledged in the Complaint, demonstrating a prior use of the disputed domain name that is consistent with its meaning as a descriptive phrase for drug prescription plans for pets.
The <payway.com> dispute, Payway, Inc. v. Domain Administrator, FA1905001845958 (Forum July 10, 2019) is another pointed lesson. Complainant attempted to extend its rights by alleging common law use earlier than the registration of the domain name but “[w]hile the Complaint recites familiar tokens associated with common law rights in a mark, the attachments to the Complaint are wanting of even the slightest proof in support of this claim.”
In many of these disputes we find that respondents are either businesses using identical or confusingly similar indicators (like Respondent in Pet Plan) or large or small resellers in the domain name market (Respondent in Darryl Davis Seminars). The latter is illustrated in Dr. Muscle v. Michael Krell, FA1903001833036 (Forum April 19, 2019) (<drmuscle.com>). Here, even though the Panel labels Respondent a “speculator” it nonetheless dismisses the complaint because “the components of the domain name, ‘Dr.’ and ‘Muscle’, are common terms.” The Panel also pointed out that although there was no proof Respondent actually did any searches for Dr. Muscle as a mark, or “took any steps to meet his obligations under Paragraph 2,” it is nevertheless Complainant’s burden to prove registration and use in bad faith.
Thus being a “speculator” in the domain name market is never (if that were all there is) the tipping factor even where (as in Dr. Muscle) Respondent is found not to have rights or legitimate interests—“Although it is a close call, the Panel concludes, given the Respondent’s failure to come forward with factual evidence supporting its allegations that Complainant has succeeded in demonstrating that Respondent lacks rights or legitimate interests in the disputed domain name.”
The commonness of expression (there being no evidence otherwise) is conclusive. But what is good for the goose is also good for the gander. Respondents are not saved by manipulating parts: either creative rearranging of words, by reversing them as in AutoZone Parts, Inc. v. Li Wenhan, FA1904001840813 (Forum June 12, 2019) (AUTO ZONE and <zone-auto.com) or creating artificial combinations with new TLD extensions that refer to complainant’s business as in Epic Games, Inc. v. Host Master / 1337 Services LLC, FA1906001846617 (Forum July 10, 2019) (FORTNITE and <fortnite.events>, <fortnite.games>). There is nothing surprising in these results because the evidence, one way or the other, supports the outcomes.
With these thoughts in mind, it is time to consider Lakes Gas in which Respondent is also a so-called “speculator.” But here, the issue is squarely on the value of the combination; that is, where it sits on the continuum. Is it common coin or more coined even if descriptive? The Respondent argued that the combination of “Lakes” and “Gas” was simply two dictionary words. The Panel questioned this:
[T]he Panel does not disagree [‘lakes’ and ‘gas’] are both generic words. But this specific combination of words together has no real descriptive or generic meaning, and really only has meaning in the context of Complainant’s trademark.
Then concluded that
[i]n order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.
The answer to the question about sitting on the continuum is that “Lakes Gas” is that it is on the right; it is descriptive not generic, and descriptive is saved as a mark if there is proof of secondary meaning, which means that the decision forfeiting the domain name to Complainant is correct.
There are, of course, disputes in the penumbral zone; “close calls” as in Dr. Muscle, but in those cases the result necessarily depends on complainants satisfying their burdens of proof. What is not always clearly understood is that “speculators” (even they, if that’s an appropriate epithet to burden resellers) should not be deprived of their property, unlawfully. U.S. and courts in other jurisdictions have concluded that domain names lawfully registered are intangible property. But at the same time, mark and brand owners (which can include trade names functioning as marks) deserve protection. That is the balance Panels are attempting to achieve.
NOTE, regarding “Order My Oil” and <orderyouroil.com>. The Massachusetts Appeals Court in Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com v. michael Meehan, 18-P-325 (July 12, 2019) affirming the trial court’s dismissal found the alleged mark to be generic. It also explained concerning Plaintiff’s claim of common law rights that the test for common law trademark infringement “[i]n Massachusetts … is the same as under the Lanham Act”. The UDRP complaint was previously denied in Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com v. michael Meehan,: FA1701001715122 (Forum March 9, 2017) (ORDER MY OIL and orderyouroil.com>.
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. (Legal Corner Press, 2015). A Second Edition of the treatise is scheduled for publication Spring 2019. Available on Amazon and Barnes & Noble. If you purchased the First Edition, you can buy the Second Edition 50% off list price by contacting email@example.com or firstname.lastname@example.org. The discount will not be available from Amazon and Barnes & Noble.