What is the intrinsic (as opposed to trademark) value of short string domain names? It depends, of course. Rights holders have been willing to challenge domain name registrants even if they have no actionable claim for cybersquatting. Delbert R. Terrill Jr. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org), FA1803001775784 (Forum April 2, 2018) (<snn.com>). UDRP Panels have over the years, and in many cases, affirmed that short strings are “inherently valuable in themselves precisely because they are (a) short and (b) can reflect a wide range of different uses.” Dynamic Visual Technologies (Pty) Ltd v. Direct Privacy, Savvy Investments, LLC Privacy ID# 14448338, D2018-0738 (WIPO June 6, 2018) (<dvt.com>).
This does not mean it is open season against rights holders for short strings, but it does mean the facts and proof of cybersquatting must be in proper alignment, and this calls for some sober thinking about the evidentiary demands of the Uniform Domain Name Dispute Resolution Policy (UDRP). So, in terms of preparing the complaint, failure to anticipate proof of reputation when the domain name was registered and present and active use of short strings by others as evidence there is a market for them having no association with rights holders will doom claims of cybersquatting.
While consumers instantly recognize the letters “I,” “B,” and “M” are not arbitrary, they will not be faulted for failing to associate “D,” “V,” and “T” with Dynamic Visual Technologies. This issue of acronyms and arbitrary letters has a long history under the UDRP. A non-exhaustive list of short strings (some of which are infringing, others not) includes “adm,” “agcs,” “aro,” “ash,” “bper,” “clh,” “daf,” “dll,” “dkb,” “fxcm,” “jdm,” “ifo,” “irjll,” “iyzi,” “paa,” “snn,” “sog,” “ssx,” “usu,” “xrprf,” and more. In some instances, it is surprising that respondents default in appearance so the record is silent when conceivably there could have been an exonerative explanation. dm-drogerie markt GmbH & Co. KG v. Whois Agent, Domain Protection Services, Inc. / Iouane Severins, D2018-1149 (WIPO July 18, 2018) (<dm-de.net>).
But, respondents give themselves away when they use domain names with content that clearly misleads the public and capitalizes on corresponding marks. An example is American Society of Hematology v. Maneet Tikku, D2018-1209 (WIPO July 16, 2018) (<ashmeeting.com>, (combining two dictionary words but the first is also an acronym) in which the Panel found that the domain name “collects names, emails, telephone numbers, countries and special requirements information for registration for the 2018 ASH Annual Meeting and related housing.” Clearly, a phishing expedition.
The ultimate question is whether any three, four, or five letter string has become so exclusively associated with the complaining rights holders that knowledge can be inferred. Except where strings of letters are provable acronyms having independent existences as indicators of source (that is, are found to be functioning as marks if they are not registered), strings of letters are generally regarded as random and generic.
However, where strings of letters have become interchangeable with full word marks; where they have acquired an independent status in the marketplace separate from and parallel to the word marks (registered or not), complainants have the stronger hand (“fxcm,” “xrprf,” “jll” are examples). But, where the letters are not interchangeable with the words comprising them and the strings if used have never functioned as marks and are equally attractive to others for their own purposes, it tips in respondent’s favor (“clh,” “iyzi,” and “aex” are examples).
Even if the short string is a registered mark complainant will fail if the “three-letter string is not especially distinctive” and particularly so if unregistered. Euronext N.V. v. Huang tian wei, D2018-0348 (WIPO April 12, 2018):
The Complainant suggests that the Respondent was aware of the Complainant’s AEX mark and, being in a “similar” business, sought to create confusion and “subvert” the Complainant’s business. The argument is not persuasive. The three-letter string is not especially distinctive. “EX” is used as an abbreviation for a financial “exchange” in many contexts, as in “AMEX” for the American Stock Exchange and “FOREX” for foreign exchange. “AEX” could indeed be suggestive of an automated exchange, as the Respondent claims. The Complainant asserts that the color scheme of the Respondent’s website is similar to its own, but there is no obvious similarity between the two websites in color, design, or content. The Complainant’s website provides information about traditional capital markets and stock exchanges, while the Respondent’s website is a trading platform for nontraditional cryptocurrencies such as Bitcoin and Ether.
Which side of the caption prevails, then, depends largely on a number of factors such as whether the letters are registered (as is ASH and JLL (Jones Lang LaSalle, discussed below)) or functioning as marks prior to respondents acquiring the accused domain names. Priority and use are critical, but so too is reputation: not as it exists presently, but as it existed when the domain name was registered. There are certainly businesses with long names that have become known over time by their acronyms, but if the domain names were registered prior to consumers associating the short strings with particular businesses, industries, or trades, respondents must prevail. Where short strings are truly arbitrary, generic and common or used (or capable of being used) by many other parties, mark owners will need particularly persuasive facts accompanied by documentary evidence to overcome the weakness of their contentions.
To take some examples. Compañía Logística de Hidrocarburos CLH, S.A. tried in two different disputes to get and , against DropCatcher.Info / Badminton, Inc., D2018-0793 (WIPO June 14, 2018) for the dot-com and Privacy Administrator, Anonymize, Inc. / Sam Dennis, Investments.org Inc, D2018-0973 (WIPO June 25, 2018) for the dot info. Both Respondents are investor-resellers. Complainant failed on the first dispute to rebut proof of evidence of ubiquity of the 3-letter string and on the second because it lacked proof of its reputation when the domain name was registered. It barely avoided reverse domain name hijacking in both (in the second case, the concurring opinion recommended the sanction). In the dot-com case, the Panel explained that,
there would be many parties, who either used CLH as a trademark or an acronym in some other context, who might be interested in purchasing the disputed domain name; as the Respondent admits, that was the reason it registered the disputed domain name. However, there is nothing to suggest that the Respondent had any awareness of the Complainant or its business at the time of registration.
Similarly, Allianz SE v. Domain Admin, Whois protection / Domain Administrator, Radio plus, spol.s r.o., D2017-2277 (WIPO March 7, 2018) in which Complainant “claims rights in AGCS on the basis that Complainant has used AGCS as an acronym for its wholly-owned subsidiary Allianz Global Corporate & Specialty SE and that AGCS is now recognized in the financial world as standing for Allianz Global Corporate & Specialty SE” but,
failed to meet its burden as it has provided no evidence supporting, for example, its contentions that AGCS is well-known in the financial world or that AGCS has come to be known by consumers as identifying Complainant’s wholly-owned subsidiary Allianz Global Corporate & Specialty SE. At best, Complainant has merely established that it is using AGCS as a mark in late 2017.
Although Respondents defaulted, Complainants in Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA1806001790949 (Forum July 8, 2018) (<xrprf.com>) and FXCM Global Services LLC v. WhoisGuard Protected, Whoisguard Inc. / Jenny Sohia, D2018-1111 (WIPO July 12, 2018) (<fxcm.press>) avoided the evidentiary infirmities in Allianz SE. because the domain names are being used for passing off in the first (pretending to be Complainant) or redirected in the second: Complainants prevail not because Respondents defaulted but for proved infringement. In FXCM Global Services the evidence supported Complainant’s contention that “Respondent uses the disputed domain name to promote and advertise its own services under the guise that it is Complainant or affiliated with Complainant.”
Two other recent decisions are worth noting, SAP SE v. Moritz Honig, VCSB Ltd., D2018-1346 (WIPO July 13, 2018) (<sap.app>) (Respondent appeared and argued) and Jones Lang LaSalle IP, Inc. v. Virginia Wheeler, D2018-1269 (WIPO July 18, 2018) (<irjll.com>) (Respondent defaulted). In the first, the Panel accepted “Complainant’s submissions to the effect that its trademark SAP has been used for many years and is widely known in commerce” but rejected Respondent’s rebuttal that it had rights or legitimate interests:
[T]he Panel draws the inference that the Respondent, a software developer, registered the disputed domain name in the knowledge of the Complainant’s trademark SAP and more likely than not with the intention of taking unfair advantage of that mark by, for example, implying an association between the disputed domain name and the Complainant’s trademark and/or by preventing the Complainant from reflecting its trademark in the gTLD “.app”.
The Panel applied the principle established in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2018), namely “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.” The same principle was applied in Jones Lang LaSalle: “It is indeed, on the facts above, difficult or impossible to find a good faith explanation of how the Respondent might use the disputed domain name.”
I mention the Telstra principle for passive holding last for how highly authoritative it is when Panels are ultimately assessing the totality of facts or circumstances and drawing inferences of good or bad faith. Both parties have to pay close attention to this principle and draft their pleadings to cover the “why was this domain name registered when it appears that any use will be infringing” question.
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP