The lexicon of domain names consists of letters, words, numbers, dots, and dashes. When the characters correspond in whole (identical) or in part (confusingly similar) to trademarks or service marks and their registrations postdate the first use of marks in commerce registrants become challengeable under the Uniform Domain Name Dispute Resolution Policy (UDRP) as cybersquatters. Ninety-plus percent of challenged domain names correspond to marks with deep market penetration nationally and internationally that are well-known or famous, which makes denying knowledge implausible. Since these registrants have no defensible right or legitimate interest (the second limb requirement, but also a factor in assessing bad faith registration and use) they rarely appear to defend their registrations.
However, as a complainant’s mark recognition descends to local, regional, or niche markets or its mark is more generic or common, the heavier the burden of proving cybersquatting. A smorgasbord of phrases recently under the microscope illustrates the point: “citify marketplace,” “bank direct”, “draft coin,” “sail mate,” “nutri home,” “forest gate,” “manor park,” “nano dark,” “chrome bones,” and “snap chat.” For different reasons, some of these combinations are infringing and others not. Words alone or combined into phrases and longer lexical units are, after all, coinages of everyday speech; equally capable of forming uncommon and distinctive phrases as stale and generic ones.
Understandably, mark owners can become overly heated by domain names containing similarities they believe violate their exclusive rights, but on this issue some are confusing and others not. Even where the domain is identical to the mark, there is no actionable claim if the registration predated the mark. This is the story in the “chrome bones” case (Complainant alleged but was unable to prove common law rights), Chrome Bones / CB Luxury Brands, LLC v. Laursen, Shawn / Shawn’s pasta & bake shop, FA1805001787926 (Forum June 27, 2018) (<chromebones.com>. In other cases, Respondents have been found to have rights or legitimate interests in the domain names where they are able to establish rights under paragraph 4(c)(1). “Nutri home” and “sail mate” are in this group, whereas the facts in “draft coin” and “snap chat” supported Complainants’ claims.
If a registrant is to be accused of cybersquatting, mark owner and domain name holder alike should be educated about the distinction (and the necessary facts to support) what is and what is not confusing, as a preliminary to proving or rebutting rights/legitimate interests (second limb) and cybersquatting (third limb of the UDRP). In Chrome Bones, the Panel was convinced Respondent was using the domain name in bad faith, but “that is immaterial because a complainant must prove both bad faith registration and bad faith use in order to prevail.”
At the threshold, the complainant has to negotiate three elements: 1) the subject domain name is identical or confusingly similar to 2) a mark in which 3) it has a right. So, for example, there can be no right for a registration filed for an “intent to use” mark. Walker Edison Furniture Company LLC v. Manor Park (Guernsey) Ltd, FA180400 1784458 (Forum June 15, 2018) (<manorpark.com>).
There is also the issue of what is common, generic or ordinary as opposed to an unusual combination of words. To take as examples of this issue, consider “bank direct” and “direct banking.” Why is one both confusing (under the first limb) as well as evidencing “likelihood of confusion” (third limb of the Policy)? The question has come up recently in a number of disputes, but particularly in Texas Capital Bank N.A. v. WhoisGuard, Inc. / Aleksandr Osipov, Private, D2018-1040 (WIPO June 19, 2018) (<bankdirect.online>) and “anciently” (for those who consider 16 years a lifetime) in Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA0112000103058 (Forum February 15, 2002) (<directbanking.biz>).
In Texas Capital Bank, the Panel notes that although the “BANKDIRECT trademark comprises a combination of two ordinary English words, ‘bank’ and ‘direct’ [that] … are individually descriptive … in combination they form a term which the Panel considers is capable of being distinctive and which has been used by the Complainant for many years.” Ordinarily, an answering respondent would attempt to rebut “distinctive” or offer evidence showing common use of the phrase by other banks but here
Respondent [has not] advanced a claim to having used them for their descriptive meaning …[and] [t]hose facts are sufficient in the Panel’s opinion to at least raise an inference that the Respondent knew of the Complainant and/or its BANKDIRECT trademark when registering the Disputed Domain Name and intended in some way to take improper advantage of the Complainant.
A Google search for “bank direct” brings up Texas Capital Bank on top while “direct banking” brings up many banks. There is a direct correlation: as the number of potential users increases the association of particular phrases with any one party claiming exclusive right becomes increasingly tenuous. The Panel in Salem Five Cents Savings Bank, found it
simply makes no sense to this Panel to preclude the Respondent from registering and using a domain name that accurately describes the type of banking services it offers. To do anything else would be to deny a domain name registrant, and correlatively the Internet community, if not the public at large, of the benefit of using a term, consistent with its common ordinary meaning that accurately describes that registrant’s services; to do otherwise would unjustifiably withdraw such terms from the public lexicon. Furthermore, this view is particularly telling inasmuch as the Respondent (not the Complainant) is the party which first registered the name.
There is a similar result in Citigroup Inc. v. LYON LESHLEY, FA1805001788603 (Forum June 29, 2018) (<citifymarketplace.com>). Citigroup’s CITI has no exclusive right to all “citi” formative phrases. For a start, “citify” is a dictionary word and “market place” a generic phrase.. Additionally, the parties operate in different markets: “Because Respondent’s activities are sufficiently unrelated to those of Complainant, and because those activities amount to a legitimate offering of on-line marketing services and goods, Respondent has satisfied the requirements of Policy ¶ 4(c)(i).”)
Equally tenuous as exclusive signs are “sailmate” and “nutrihome.” In Myriel Aviation SA v. Olli Jokinen, D2018-0828 (WIPO May 28, 2018) the term “sailmate”
comprises two ordinary English words, “sail” and “mate”. The Panel considers these could readily be independently derived by a person developing a software product associated with boating, particularly given that the word “sail” is commonly used in English (i) as a noun in relation to the fabric structure used to catch the wind in a wind-propelled boat (ii) as a verb (to sail) to refer to the act of travelling by boat; and the word “mate” is commonly used in English (i) as a noun which is a colloquial term for a friend or companion, and (ii) as a noun which is a position or rank occupied by an experienced seaman on a vessel who supervises the vessel’s crew and reports to its more senior officers.
Similarly in Fresenius Kabi S.A. v. Domain Manager, EWEB Development, Inc., D2018-0491 (May 24, 2018) (<nutrihome> in which the Respondent was in the business of trading in domain names:
[It] claims to have registered the disputed domain name, combining the commonplace prefix “nutri-” with the dictionary word “home”, as being of potential interest to customers wishing to offering nutrition-related services online. It provides evidence of other “nutri-” related domain names that it registered in the same year as the disputed domain name or in the preceding two years.
Based on the parties’ submissions in this case, the Panel can find no evidence upon which to conclude that the Respondent was aware of the Complainant’s Argentinian trademark NUTRI-HOME at the date it registered the disputed domain name (being the Complainant’s only registered trademark at that date) or that it registered the disputed domain name with the intention of taking unfair advantage of that trademark.
The “nutri” Complainant also “provided little or no evidence of its business activities and public profile in 2009 and (while there was a brief period prior to August 2009 during which its website at “www.nutrihome.com.ar” appears to have been active) it has adduced no evidence that the Respondent was, in fact, aware of its trademark, or identified circumstances from which to infer that it must have been so aware.
As evident from the above illustrations, one of the considerations is what respondents can demonstrate about themselves, their status and the commonness of their lexical choices. The Respondents in Myriel Aviation and Citigroup are using the domain names commercially, and prove it. In contrast, Respondent in BTCDRAFT INC. v. Brian Boyer, D2018-0613 (WIPO June 1, 2018) is an investor, which could also qualify as making a bona fide offer of goods or service, but fails because it lacks the kind of evidence marshaled by the “nutri” Respondent.
In BTCDraft, Respondent acquired the domain name to hold for resale. The Panel explained that “[w]hile the term ‘Draftcoin’ consists of two dictionary words, in the Panel’s view the combination is not an obvious one.” This is an important point that has been expressed by other Panels: some word combinations are surprising and not obvious, making it unlikely they could be independently thought of or invented. In any event, Respondent’s credibility was also a factor because of its claimed intention for the website without offering any evidence of “demonstrable preparations.”
The SNAP CHAT combination is also “not obvious.” In Snap Inc. v. Ali Alshumrani/Ali Aleryani, FA180500 1788602 (Forum June 14, 2018) (<snaps.chat>, <snapkm.com>, <snapei.com>, and <snaprz.com>) Respondent attempted to circumvent the claim of bad faith by arguing he was using the domain name “in connection to [its] dictionary meaning in Arabic.” Not a particularly persuasive when considered in the totality of circumstances: “[Although] Respondent’s disputed domain names redirect to websites written in Arabic [they were] displaying logos identical or similar to Complainant’s trademarked and copyrighted logos, as well as profiles of Complainant’s Snapchat users and links to those profiles on Complainant’s own website.” Also, the “websites connected to the disputed domain names … include[d] sponsored advertisements.”
<Nanodark.com> illustrates a different, although frequently found situation that I have written about before. Colin LeMahieu v. NANO DARK, FA1805001786065 (Forum June 9,2018). Here, Respondent creates the combination by adding “dark” to the mark NANO. Complainant operates a digital currency business. Respondent registered the domain name a couple of months after the NANO registration. The Panel found that the domain name was registered with actual knowledge of Complainant’s mark because it was attempting to “pass itself off as Complainant and divert Internet users to a website offering competing digital currency.”
The strengths and weaknesses of claims and defenses rest on facts parties are able to prove. If they can, they prevail, while naked assertions fail.
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP