In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a three-member Panel refused to order the transfer of a domain name that exactly matched the Complainant’s trade mark because the Complainant failed to prove bad faith registration and use, given the domain name’s plausible attractiveness as an Italian dictionary word.

The Complainant was a New York based company specializing in the transportation and storage of artworks. It operated two art storage facilities in the New York City area. The Complainant had registered several trade marks, namely UOVO (registered on 9 December 2014), UOVO FINE ART STORAGE and UOVO FASHION STORAGE (both registered on 19 November 2013). “Uovo” is an Italian word which means “egg” in English.

The Complainant operated its business under the <> domain name.

The disputed domain name was <> (the “Domain Name”). It was registered on 9 September 2015 by the Respondent.

The disputed Domain Name was pointing to a webpage on which it was being offered for sale through for USD 125,000.

“complainants must be very careful when filing complaints in relation to trade marks that are also dictionary words…domain names consisting of four letter generic words may also be very valuable in the domain name secondary market”

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):

(i) the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Panel found that the first requirement had been established. Indeed, the Panel stated that UOVO was the dominant element of the Complainant’s trade marks and was incorporated in its entirety in the disputed Domain Name. Therefore, the Panel concluded that the Domain Name was confusingly similar to the Complainant’s trade marks UOVO, UOVO FINE ART STORAGE and UOVO FASHION STORAGE and was in fact identical to the Complainant’s UOVO mark when the generic Top Level Domain (gTLD) .COM was disregarded.

Turning to the second requirement, Paragraph 4(c) of the UDRP lists three non-exhaustive examples of ways in which a respondent may establish rights or legitimate interests in a domain name, as follows:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel noted that the Respondent’s business model involved trading in domain names, wherein the Respondent sought to acquire domain names of value, which may then be held or offered for sale to the public. The Respondent apparently targeted generic or descriptive domain names, and in particular short generic domain names that may attract a premium price when auctioned in the domain name secondary market.

The Panel pointed out that a number of previous UDRP panels had concluded that a respondent had a right to register and use a domain name to attract internet traffic based on the appeal of a commonly used descriptive word, even when the domain name at issue was confusingly similar to the registered trade mark of a complainant (for example see National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424). In particular, the UDRP panel in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, had stated that “where a respondent registers a domain name consisting of ‘dictionary’ terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest”. However, the domain name must have been registered because of its attraction as a dictionary word or descriptive term, and not because of its value as a trade mark (see Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964).

The Respondent claimed not to have been aware of the Complainant’s trade marks upon registration of the Domain Name. In this regard, the Panel highlighted the fact that prior Panels had held that the UDRP implicitly required some good faith effort to avoid registering and using domain names corresponding to trade marks (see paragraph 2, which states that “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”). In the case at hand, the Panel found that a cursory search by the Respondent would likely have revealed the existence of the Complainant’s trade marks. However, in the Panel’s view, in cases where a respondent makes a plausible claim of descriptive use, the issue was not just whether or not the respondent was aware of the complainant’s trade mark rights, although such knowledge may be a relevant consideration, but whether, in light of the totality of facts and circumstances of a given case, it was demonstrated that the respondent’s real aim was to exploit and profit from another’s trade mark.

In the present case, the Panel decided that the facts and circumstances of the case militated against a finding that the Respondent had targeted the Complainant and its trade marks. It was not in dispute that “uovo” was an Italian word meaning “egg”. The Complainant had not proved that its trade marks had become well known even in the niche market in which the Complainant operated its business. Furthermore, the Complainant’s storage facilities were all located in the New York City area, whereas the Respondent came from Minnesota.

The Panel considered that the Respondent had presented a plausible claim that the disputed Domain Name was registered based on its attractiveness as a dictionary word or descriptive term. In the Panel’s view, the fact that the Respondent tried to sell the Domain Name for USD 125,000 did not mean that the Respondent was attempting to trade on the goodwill associated with the Complainant’s trade marks. The Panel observed that the Respondent had made a plausible showing, supported by some evidence, that domain names consisting of four letter generic words may also be very valuable in the domain name secondary market.

However, in view of the Panel’s findings in relation to bad faith, the Panel decided that it was not necessary to decide the issue regarding the Respondent’s rights or legitimate interests.

As far as the third limb relating to registration and use in bad faith was concerned, the Panel found that the Complainant had not demonstrated any of the examples of bad faith listed at Paragraph 4(b) of the Policy.

Concerning registration in bad faith, the Panel concluded that the Complainant had not satisfied its burden of demonstrating that the Respondent had registered the Domain Name in bad faith. In the Panel’s view, the Complainant had failed to demonstrate that the Respondent had registered the Domain Name with the intent to exploit or profit from the Complainant’s trade mark rights, notwithstanding the fact that such trade mark rights pre-dated the Respondent’s registration of the disputed Domain Name. The Panel found that no convincing evidence had been offered by the Complainant that the Respondent’s explanation for the registration was a pretext for cybersquatting.

As for use in bad faith, the Panel quoted a previous case where a panel had found that the UDRP was not intended to permit a party who elected to register or use a common term or terms as a trade mark to bar others from using the common term in a domain name, unless it was clear that the use involved was seeking to capitalize on the goodwill created by the trade mark owner (see, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230). The Panel therefore concluded that the Domain Name was not registered and used in bad faith and so the Complaint was denied.

This case underlines that complainants must be very careful when filing complaints in relation to trade marks that are also dictionary words, even in a language other than English under certain circumstances. It is generally not enough to simply show that a respondent would likely have been alerted to the existence of a complainant’s trade mark in the event of a cursory search, and instead it is usually necessary to demonstrate that the respondent’s real aim was to exploit and profit from the goodwill attached to such trade mark.

The decision is available here.

First published on Anchovy News: Anchovy® is our a comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house.