Pay No Attention To That Trademark Behind The Curtain

This week’s World Intellectual Property Organization (WIPO) decision began when a Russian mobile app developer, a Hong Kong-based wall poster company, and a UDRP panelist walked into a bar. Okay, okay – I’ll spare you the sad attempt at an IP joke, but this week’s decision does involve the above-mentioned parties and the domain name www.ifunny.com.

The Complainant, a Russian mobile app developer, Okruzhnost LLC of Penza in the Russian Federation, has been using a website associated with the domain name www.ifunny.mobi since 2011 to sell its mobile applications and software. The Respondent holds trademarks for IFUNNY in Russia (registered in 2012) and the United States (registered in 2013). As the Complainant argues in section 5.A. of the complaint, “The use of “ifunny” as a keyword in Google searches increased significantly three months after the Complainant launched its “www.ifunny.mobi” website and related application. The Complainant therefore argues that the word “ifunny” gained recognition and secondary meaning in connection with the Complainant’s products, and had become well-known by the time the Respondent acquired the Disputed Domain Name in August 2012.

Since 2009, the Respondent, Six Media Ltd. Of Hong Kong, has operated a website at www.fakeposters.com, to which www.ifunny.com redirects, that sells “humorous” images and posters. The Respondent argues that it registered www.ifunny.com in 2012 after it failed to acquire www.funny.com, and that it chose ifunny.com because it was generic and offered “broad” appeal. The Respondent also filed for a trademark for iFUNNY in Hong Kong in 2013, and “contends that it cannot be found to have purchased the Disputed Domain Name in order to target the Complainant, since the Complainant’s IFUNNY trade marks were not registered until a year after the Disputed Domain Name was acquired by the Respondent.”

While the 3-member Panel found that www.ifunny.com is confusingly similar to the Complainant’s trademark, it also held that the Respondent had demonstrated rights to the domain name (rendering the need to decide on the issue of bad faith – the third issue in domain name disputes – unnecessary).

The most striking feature of this case, from the legal perspective, is that the Panel accepted the Respondent’s argument that the term iFUNNY is merely generic for humorous web content but completely overlooked the fact that the Respondent had applied for a trademark registration for IFUNNY in Hong Kong!  It is one of the most fundamental concepts in trademark law that a generic term is not capable of functioning as a trademark because the public doesn’t view it as a true “brand” but, merely, as the common name of the product or service (e.g., fruit, computer, boat, etc.).  By applying for a trademark registration, the Respondent was claiming that the term iFUNNY is actually not generic but functions as a brand name for its humor services.  One could argue whether the addition of the letter “i” really changes the generic nature of the word “funny” but I feel the Panel here owed it to the parties to at least address this inconsistency in the Respondent’s position.

This case also speaks to the need for business owners to pay attention to the top-level domain when registering domain names.  While the Respondent was wise to register its branded domain name in the gTLD of “.MOBI”, since that reflects its mobile-related services, the Respondent should also have obtained the domain name in the popular .COM TLD in order to prevent other companies from registering the name.  While it is not necessary to register a domain name across all TLDs all of the time, it is important to make a strategic decision about which ones to register defensively in and, as new gTLDs launch, when to use the Trademark Clearinghouse.