When is the use of a generic word in a domain name considered cybersquatting and how does this play out in domain name disputes? Obviously, many well-known trademarks are made up of generic words, but these have taken on brand status when applied to products or services that don’t relate to the generic meaning.
Take the word “apple.”
The word “apple” has a generic meaning, and if someone had registered the domain apple.com years ago and resolved it to a website with information about a certain type of tree-borne fruit, it’s hard to imagine anyone being able to file a legal complaint about apple.com. However, if the domain resolved to a page featuring digital computing or communications products today, you may have a serious trademark infringement on your hands.
There have been a number of domain name dispute decisions via the UDRP in recent years that seem to address the uncertainty of when a domain is simply a generic word and when is it flat-out cybersquatting. Unfortunately, as with many challenging legal issues, these domain name dispute decisions have not been consistent.
Domain Name Dispute: Nice Car or Nice Omissions?
Let’s start out with the case of nicecar.com. The complainant owned a U.S. trademark registration for the phrase “NICE CAR” in relation to its motor vehicle sales and repair business in Colorado and claimed to have used the brand name since 1975.
For its part, the Respondent, based in South Korea, appears to have acquired the domain in 2000 but started offering it for sale in 2003—at a price of $100,000 according to the Complainant.
In a rather brief opinion in this domain name dispute, the Panel ordered that the domain be transferred, finding that:
- The Respondent had no rights or legitimate interest in the domain where all it did was offer it for sale;
- It had acted in bad faith since its asking price was considerably higher than its out-of-pocket registration costs.
Two things were missing from this domain name dispute case:
- A response from the Respondent.
- The lack of any mention in the decision of the web content to which the domain resolved and whether the seemingly descriptive nature of the phrase “nice car” or the Respondent’s residence in a distant country could act as a defense (keep in mind that panels are bound to consider the merits of a case even if the Respondent is in default).
Judging by the Price: Vanity.com’s Domain Name Dispute
Next, we have the vanity.com domain name dispute decision. Here, the domain resolved to a website featuring a blog “on beauty, fashion, health, and self topics,” whereas the Complainant operates a chain of stores selling apparel and accessories using the brand VANITY.
The Respondent had filed a court action seeking a declaratory judgment that the domain was non-infringing, but the Panel declined to suspend the case (after citing a number of prior decisions saying that suspension may not be warranted where the pending litigation doesn’t impact the domain name).
The Respondent also had its own trademark registration for the term Vanity.com, but this was not mentioned in the Panel’s opinion.
What was mentioned in the opinion was that the WHOIS record for the domain identified the Respondent as “Vanity.com, Inc.” but the Panel noted that there was “no other evidence on record addressing this issue.”
Ultimately, this fact, combined with the Respondent’s offer to sell the domain for one million dollars, led to a decision ordering the domain’s transfer to the Complainant.
All About Timing
Finally, let’s discuss a more recent domain name dispute case in which the domain fattuesday.com was transferred to the named Respondent after the complaint was initiated against its prior owner (apparently the registrar wasn’t quick enough in locking the domain after receiving notice of the complaint).
In holding that the Respondent lacked any rights to or legitimate interests in the domain, the Panel cited this transfer, which was in clear violation of ¶ 8(a) of the UDRP, which prohibits domain transfers once a proceeding has been commenced.
In finding bad faith, the Panel cited the Respondent’s offer to sell the domain for $100,000, which is quite a bit more than it had paid for the name.
This is all worth mentioning, but, again, the domain name dispute decision failed to address the underlying question of whether the domain was merely acquired and used for its value as a generic term. Unfortunately, the domain had not resolved to any web content for the past four years, so there was no reference to the Complainant and its products or services.
Generic Names, Differentiated Outcomes for Domain Name Disputes
Although these decisions involved different circumstances (default, failure to submit important evidence, offers to sell the accused domains), the common features are worth noting:
- Each decision is relatively brief;
- Each decision is missing analysis of the potential generic quality of the accused domain.
At its inception, the UDRP was intended to be a more efficient alternative to court litigation for domain name disputes, but limited to obvious cases of cybersquatting.
Given the facts presented in these decisions, (perhaps there are more that weren’t mentioned) these cases do not strike me as fitting that mold.
On the other hand, non-existent or inadequate defense may have played a role and, ultimately, these may be outlier decisions that do not reflect the majority of well-reasoned cases against truly obvious cybersquatting. I expect this could be debated at length and very likely will be.
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- How Did 2016 Domain Name Squatting Disputes Expand UDRP Thinking? - February 23, 2017