In a trademark context, who owns or controls, or would prevent others, from using words and phrases commonly available to speakers in a language community, is in persistent tension. While common words alone or combined may become protected from infringing uses under trademark law, their protection is contingent on factors such as linguistic choices and strength or weakness of marks in the marketplace. What is distinctive and exclusive in a trademark sense is, as with love, in the eyes of the beholder. The more common the words or descriptive phrases, the less protection from others registering them for non-infringing purposes, although percentage-wise the number of indefensible claims filed under the Uniform Domain Name Dispute Resolution Policy has been creeping up and is now over ninety percent. Defensible registrations (regardless whether respondents appear) are now in the 5% to 7% range.
But in considering whether use of identical or confusingly similar words or phrases is defensible (or not) we have to know what the facts are. To take two simple examples. In one, a UDRP Panel found that the non-appearing Respondent in Slingshot Transportation, Inc. v. InBok Lee, FA1904001841279 (Forum May 26, 2019) was using <slingshot.info> “to point to pay per click links relating to slingshots the weapon,” therefore the complaint was denied. In contrast, another non-appearing Respondent in Indeed, Inc. v. Mark Conway, FA1905001843197 (Forum June 10, 2019) was found to be pointing <indeedconsultant.com> (two dictionary words combined into a not uncommon phrase) to its own competing business website, therefore the complaint was granted.
The reason for insisting the “linguistic commons” not be enclosed is consistent with U.S. (and most likely other jurisdiction’s) law. In Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) the court held that “[a]lthough EMI has the exclusive right to use the trademark ‘ENTREPRENEUR’ to identify the products described in its registration, trademark law does not allow EMI to appropriate the word ‘entrepreneur’ for its exclusive use. The descriptive nature and common, necessary uses of the word ‘entrepreneur’ require that courts exercise caution in extending the scope of protection to which the mark is entitled.”
The same point was made more recently by the dissent in Booking.com B.V. v. U.S. Patent & Trademark Office. No. 17-2458 (4th Cir., 2019). He stated that the decision to allow registration of BOOKING.COM “[u]njustifiably empowers Booking.com to monopolize language, thereby enclosing the linguistic commons and adversely affecting competitors in precisely the manner that trademark law seeks to forestall.” The majority justified its decision by explaining that “the relevant public understood BOOKING.COM, taken as a whole, … refer[s] to general online hotel reservation services rather than Booking.com the company” (emphasis added).
In other words, BOOKING.COM was found to be descriptive not generic. The “common mistake” noted the court in CES Pub. Corp. v. St. Regis Publications, Inc., 531 F.2d 11 (2nd Cir., 1975) is in “failing to distinguish between ‘merely descriptive’ terms which can be rescued as trademarks by such proof [of secondary meaning] and generic terms which cannot be.”
From the UDRP’s opening cases in 2000, Panels can be seen taking care (although not without some unfortunate lapses) to reject mark owners’ attempts to “enclose[e] … the linguistic commons.” The first shot at this was Allocation Network GmbH v. Steve Gregory, D2000-0016 (WIPO March 24, 2000) in which the Panel noted that
[t]he difficulty lies in the fact that the domain name allocation.com, although descriptive or generic in relation to certain services or goods, may be a valid trademark for others, so that “[a]lthough the registration and offering for sale of allocation.com as a domain name may constitute a legitimate interest of Respondent in the domain name, this is different if it were shown that allocation.com has been chosen with the intent to profit from or otherwise abuse Complainant’s trademark rights.
There was no such proof of intent to profit at Complainant’s expense and the complaint was denied.
A number of decisions from the 2019 docket similarly find no evidence of “intent to profit from or otherwise abuse Complainant’s trademark rights.” In these disputes, respondents are either operating businesses (<headkandy.com>, <sumvalley.com>, and <emsprofessionals.net>) or domain resellers (<slingshot.info>, <drmuscle.com>, <karma.com>, <cloudinsure.com>, and <rdw.com>). (As a side note, deserving further study and not further argued here, it is interesting that except for <ems professionals.net> these cases were filed with the Forum rather than WIPO, most likely because of a misimpression the Forum is more hospitable to complainants (which it generally, with exceptions, is not!). A quick review indicates the Forum currently has a slightly higher percentage of complaints denied than WIPO, but having said that the number of transfers by both providers has been creeping up. This correlates with a diminishing number of complaints against common words, descriptive phrases, and arbitrary letters filed with both providers, which is directly attributable to the emergence of a robust jurisprudence).
A recent case stands out as being (in the dissent’s view) “inconsistent with the trend of decisions on generic and common language domain names.” In Rosetta Stone Ltd. v. Digital Privacy Corporation / Stuart Thomas, D2018-2322 (WIPO February 27, 2019) (<rosettastone.app>) the dissent expressed his “disappoint[ment]” that “this is another decision that prevents people from registering domain names that are simply part of the common language that belongs to everyone.” The disappointment echoes Entrepreneur Media. I have discussed this case in earlier essay Credibility and Disbelievability as it affects Outcomes in UDRP Proceedings. The dissent continued:
The basis for making such a claim is said by the Complainant to be Article 6bis of the Paris Convention and Article 16.2 and Article 16.3 of the TRIPS Agreement. But that is not so. Neither document justifies the statement that the Complainant’s trademark rights actually prevent “any” use of the mark with “any” products “regardless of the list of the products and services for which the trademark is registered”.
Accordingly, the Complainant’s trademark gives it the right to use ROSETTA STONE within the terms of the trademark itself. But it does not prevent other uses of the same expression and in particular it does not prevent the Respondent or anyone else from showing that it has a right or legitimate interest in the disputed domain name. It also does not prevent the Respondent from showing that it did not register or use the domain name in bad faith.
The Rosetta Stone award is being challenged in an Anticybersquatting Consumer Protection Act case.
In close cases the question of lawful registration turns on whether any of respondent’s acts were pretextual, simply taken to avoid forfeiting the domain name, or clear instances of cybersquatting. Domain names identical or confusingly similar to marks (without more) is never sufficient to overcome a persuasive reason for particular words and combinations. The issue in Sinclair Finance Company v. Nathaniel Young / SumValley, FA1903001835985 (Forum May 3, 2019) (SUN VALLEY and <sumvalley.com> registered by an operating business) was whether the registration was pretextual or not, and the Panel held it was not. The Panel found “Respondent’s explanation for the selection of the business name and corresponding domain name to be entirely plausible.”
In Dr. Muscle v. Michael Krell, FA1903001833036 (Forum April 19, 2019) (registered by a domain reseller) the Panel rejected Complainant’s claim that Respondent lacked rights and legitimate interests in the domain name. The Panel explained that
the components of the domain name, “Dr.” and “Muscle”, are common terms … [and that] Respondent’s claim [is] credible that he registered the domain name because of the descriptive nature of those terms rather than because Respondent was targeting Complainant and its trademark…. Complainant has failed to rebut these assertions with sufficient evidence of the fame or renown of its app in Nebraska or in the United States generally, nor has Complainant adduced any evidence that would support a finding that Respondent likely was aware of Complainant or its app or its DR. MUSCLE trademark at the time he registered the domain name.
When we turn to respondents forfeiting domain names composed of common words (alone or combined) we have to ask what has the complainant submitted in proving its case? and what respondent lacked in rebutting the proffered evidence? Two factors top the list, namely website content and credibility based on documentary evidence.
Two recent decisions (one understandable and the other not) illuminate the role of credibility or lack of it in balancing rights to domain names: T & P Holding Company, LLC v. Wendy Webbe and Ancient Holdings, LLC, FA180200 1773041 (Forum April 6, 2019) (<youareok.com>); and Charisma Brands, LLC v. Web Support / Pearl One Media, FA1903001833611 (Forum April 2, 2019) (<adora.com>). Both marks are weak; the Respondent defaulted in the first and appeared in the second.
In T & P Holding the Panel explained: “Here Complainant provides a list of prior UDRP cases decided against Respondent…. Accordingly, the Panel finds Respondent has engaged in a pattern of bad faith registration under Policy ¶ 4(b)(ii).” Respondent forfeits <youareok.com> because it “is part of that pattern and thus registered and/or used in bad faith.”
The decision in Charisma Brands for <adora.com> is more problematic, since it’s what I call a “one-off decision.” Not only are the facts unclear on several issues, the Panel applies the wrong standard of liability. The Panel cites “precedent” but these are either unconvincing or not germane to the facts in the case. Respondent alleges <adora.com> was registered before Complainant trademark was first used thus could not have been registered in bad faith, but the facts appear to indicate bad faith use. Complainant’s argument that Respondent was offering to sell the domain name to Complainant is undercut by the rebuttal that Respondent was responding to Complainant inquiring about purchasing it. If these are the facts, the complaint should have been dismissed since the UDRP is a conjunctive model of liability. In other words, the Panel applied the disjunctive standard of the ACPA. I have not heard that this award is being challenged, although if it were there are clearly problems of trademark infringement as a separate and distinct claim from cyber-piracy.
In summing up, complainants prevail for marks composed of common words and phrases when respondents use their domain names to capitalize on complainants’ reputations, but complainants have no legal or better right to prevent use by others where the proof of cybserquatting is lacking. An interesting illustration of this is L-Nutra, Inc. v. Douglas Kantner, D2019-0597 (WIPO May 29, 2019) (<longivitynutrician.com>) in which the 3-member Panel got it exactly right:
it may be possible that Respondent’s actual future use of the disputed domain name could cast a different light on the Panel’s assessement of Respondent’s claimed rights and legitimate business purpose. Conseqently, the Panel concludes that its ruling is without prejudice to Complainant potentially refiling a Complaint in the event that the use of the disputed domain name by Respondent turns out to be for a business that competes with Complainant and/or its NUTRITION FOR LONGEVITY goods and services.
It is noteworthy that a jurisprudence of domain names that emerged and developed since the year 2000, in which Panels from the start developed factors protecting the “linguistic commons”, has the effect of discouraging one-off decisions. While <longivitynutician.com> may pass the confusingly similar test for NUTRITION FOR LONGEVITY it could also have been found similar without being confusing thus failing the Paragraph 4(a)(i) test. Having a robust jurisprudence encourages predictability and consistency. This is so because as the jurisprudence strengthens earlier, well-reasoned decisions are influential in establishing the principles and factors Panels apply in determining rights. Where the linguistic commons is breached district courts or defendants themselves had vacated UDRP awards.
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, Second Ed. July 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.