Good faith and abusive registration of domain names

All domain names identical or similar to registered trademarks do not give rise to action. Exhibit 1 are plaintiffs whose trademarks are subsequent to the registration of the domain name. The latest example is Insight Energy Ventures LLC v. Alois Muehlberger, LMBerger Co. Ltd., D2016-2010 (WIPO December 12, 2016) (), but there are other more esoteric examples such as Genericide loss, Shop Vac Corporation v. Md Oliul Alam / Quick Rank, FA1611001701026 (Forum December 10, 2016). Common words and phrases can convey sources of goods or services, but within a community of speakers they can also convey other expressive communications unrelated to brand value, which the Shop Vac Panel concluded that this was the case with :

It is not clear whether the complainant has been or is likely to be successful in preventing the use of the words “shop vacuum” to describe a type of vacuum cleaner. However, it appears from the documents before the Panel that the word “vac” is commonly used in the industry as an abbreviation for “vacuum” and that the terms “shop vacuum” and “best shop vacuum” are used. common use in relation to vacuum cleaners other than those of the complainant.

The reference to the likelihood of success in preventing the generic use of the term “shop vac” of death is the complainant’s unsuccessful attempt to suppress the generic meaning of the mark. A factually similar situation to “shop vac” results in legitimate trademark disputes between two fair users of a common expression, a difference between the generic and the lack of distinctiveness.

In NZ Manufacturing, Inc. v Eric Snell, FA1604001670641 (Forum of 3 June 2016), the Panel found that there was “no doubt as to the generic nature of the words ‘stretch cordz’, even in view of alternate spelling of the last letter in the word ‘strings’. Neither the Complainant nor the Respondent are the “authors of this other form of spelling” widely used in commerce. ” The difference between Insight Energy and New Zealand manufacturing is the trademark’s ongoing legal challenge in the USPTO, which takes it outside the scope of the policy.

Basically, the universe of abusive domain name registration consists of adding generic words before or after the mark (cybersquatting) and subtracting letters, reversing letters inside or adding letters to marks (typosquatting). . The only qualification of marks as dominant is when they are composed of dictionary words to which are added other dictionary words which, when combined, create distinguishable associations of the allegedly infringed marks. One example is Food and Wine Travel Pty Ltd v. Michael Keriakos, Keriakos Media Ventures, D2016-1953 (WIPO, November 21, 2016) (). The complainant unfortunately lost the domain name by inadvertently failing to renew the registration and the evidence of the cybersquatting supported neither the absence of legitimate rights / interests nor bad faith. As the Committee pointed out, many companies use these generic words and there was no evidence that the Respondent registered the general pool domain name on the registration expiration date to take advantage of the complainant’s mark.

The loss of domain names for non-renewal of registrations illustrates a not always fully understood difference between trademarks and domains, namely that trademarks are owned and domain names (while they can be valuable assets when ‘they are detained) are not. Having a brand is not a guarantee for recovering an expired domain name.

When considering additions, the notes are always the dominant part of the composition when they are arbitrary and fanciful or well known or famous nationally and internationally and less when they are at the lower end of the scale. classification scale. For example, the “QQ” (or similar affixes) added to “Google” (an arbitrary word) is not (and cannot be) dominant in a composition with a well-known mark, despite the contrary argument. of the respondent in Google Inc. v. J Renz, FA160900 1694123 (Forum October 28, 2016) () that “QQ” is dominant. The puzzling similarity is not diminished, no matter how many additional words or (in the case of letters) are added or subtracted. The central point to confuse the similarity is the brand.

Ordinary cybersquatting simply involves opportunistic recordings even if the registrants ignore the law. Squatters betray each other by either offering domain names for sale, filling their websites with links to companies competing with the plaintiffs, or passively owning domain names that could not have any non-infringing use if directed. to a website that is being resolved.

In Telstra Corporation Limited v. Graeme Riordan, D2016-2022 (WIPO on December 6, 2016) (), the Respondent argues that he has a legitimate interest in collecting domain names because he purchases them (currently 3000) for his “personal satisfaction as … collector’s item[s]. “Extensions such as the dot website are no different from legacy top-level domains in that they are functional elements to be ignored to determine puzzling similarity. In any event, registrants cannot not illicitly possess counterfeit domain names as collector’s items; they have no intrinsic value as collector’s items because unlike family heirlooms that may be owned, domain names composed of trademarks appropriate (however long they are held) cannot be sold without infringing the trademark rights of the owners.

Moreover, the argument that the confusing identity and similarity refers only to the string to the left of the dot has been vigorously rejected although in Telstra the chain to the left of the point is the same as the mark and is lost regardless of the extension. The respondent in Raincat Online Services v. fluder, CAC 101125 (ADReu February 1, 2016) (AD6.MEDIA) argued that “[t]The disputed domain name is neither identical nor similar to the point of confusing the protected mark … [because] [t]ICANN rules only apply to what’s left of the point [, and that any other reading would be] abuse of administrative procedure. The panel disagreed and the domain name was transferred.

This is not the case, however, because when the second and first level domains read together produce an identical or confusing similarity to an allegedly infringed mark, no argument will do so; typical in addition to are and where the second-level domains by themselves could potentially be used without infringing the marks of the plaintiffs, but the extensions seal the infringements.

Typosquatting differs from cybersquatting in this regard, in that it is easier to support inference from real knowledge and closer to a in itself violation of the Policy. For example, in TTT Moneycorp Limited v. Guiying Huang, D2016-2030 (PMOI on December 1, 2016) (), the complainant is a financial institution that issues (among other services) credit cards. The accused domain name mimics the of the complainant by adding a single letter “s”. There are of course situations where adding a single letter (or omitting a single one) may be lawful, but not where the resolving website turns out to be “a typical parking website, providing links to the websites of the complainant’s competitors and generating income through a PPC mechanism.

It is helpful in understanding the UDRP’s evidentiary requirements to have a firm theory for the confiscation or retention of accused domain names. As I recently explained, registrants have stated that cybersquatters generally do not bother to respond to complaints when the violation is evident from the record, but when the record contradicts the complainant’s claims as it does. did in Insight Energy the default is not and cannot be a determining factor in attribution.