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What Domain Names Get Transferred: Why and Why Not?

Think of trademarks situated on a continuum with famous and well-known at one end and less well-known or unrecognized by average consumers at the other. On one end there is certainty of infringement, Koppers, Inc., Koppers Delaware, Inc. v. Jorge Villalva, D2018-0764 (WIPO May 10, 2018) (<koppers-us.com>) as well as other well-known marks such as Accenture, Agfa, Northface, Carrefour, Virgin, and Chatroulette; at the other end, certainty of having the complaint denied either for lack of proof or overreaching, Advanced Personnel Systems, Inc., v. Domain Admin / Mighty Products, Inc. FA1804001780243 (Forum May 25, 2018) (as well as other marks composed from generic elements and used according to their meaning, such as Secret and Dribble (dictionary words), AEX (random letters), Rioja (geographic), and Insure My Food and My Boutique (common phrases).

At some point along the continuum, it becomes uncertain whether respondents registered accused domain names in bad faith, and the question has to be answered by examining the facts. An interesting example is Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Tony Mak, D2018-0602 (WIPO May 17, 2018) complaining about, which by all appearances is a legitimate generic ensemble of words. Complainant owns HEETS and HEATSTICK. But in this case

The Panel accepts the Complainant’s assertion that website content can be considered in order to assess confusing similarity. Such content may support a finding of confusing similarity… In the present case, the Respondent’s website features the widespread use of the Complainant’s IQOS mark, the use of the word “sticks” as a menu item corresponding to an element of the Complainant’s HEATSTICKS mark and a large number of images bearing the Complainant’s branding.”)

More likely than not complainants with strong marks prevail and those with weak marks will not. As the mark descends the scale in strength, complainants must marshal ever more persuasive evidence that they have an actionable claim, as did Philip Morris Products in persuading the Panel to look at the content of the website. The results are predictable in unexceptional cases: complainants prevail on proof of abusive registration, and lose because their proof falls short of establishing abusive registration. Respondents prevail when their registrations are lawful, and lose when their arguments for good faith registrations lack merit and are indefensible.

Marks composed of terms having deep market penetration internationally—AGFA-Gevaert N.V. v. Ums United Medical System, D2018-0713 (WIPO May 7, 2018) (<agfaz.com>)—or whose marks are composed of parts not commonly associated together even though ordinary dictionary words—Coolmath.com LLC v. Kenan Yazici, Cenebaz.com, D2018-0646 (WIPO May 1, 2018) (COOL MATH and <newcoolmath.com>) have a lighter burden than marks composed of generic or common lexical parts—NLY Scandinavia AB v. Alexander Tchousov, PS Pay Solutions UG, D2018-0498 (WIPO May 8, 2018) (NELLY and <nelly-model.com>).

Nevertheless, complainants (even those with strong marks) and defendants (with potentially strong defenses) must approach the UDRP demands respectfully. For example, in explaining why transfer can be denied even for marks of international status, the Panel noted in AFGA-Gevaert that

The Complainant asks the Panel to infer that the Respondent must have registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of taking unfair advantage of the goodwill attaching to that mark. However, while the Complainant asserts that its AGFA trademark is famous worldwide, it has produced no evidence of its trading or of the reputation of its trademark.

The Panel continues:

A complainant should not expect a UDRP panel to have knowledge of the reputation of its trademark and the Complainant in this proceeding has taken a significant risk by failing to exhibit the evidence in question.

Fortunately for AGFA-Gevaert the Panel found other evidence in the exhibits. The better practice, though, is to allege rights in the complaint supported by documentary evidence in the Annexes.

Somewhat lower on the continuum is COOLMATH (contested domain name is coolmath.com>). Despite the common words the combination “cool” and “math” is not an everyday phrase; it creates a distinctive impression which is not the case with “smart search.” In an earlier Cool Math case, Coolmath.com LLC v. PrivacyGuardian.org / Aamir Munir Butt, cool math games, D2016-2203 (WIPO December 4, 2016) (<coolmath-mathgames.com>, Respondent appeared and argued that the phrase “cool math” is in common use and pointed to a number of websites incorporating the mark. However, the Panel concluded that “it [is] likely that many if not all of them are seeking to trade on the back of the Complainant’s reputation…. [It] does not see them as evidence of the Complainant’s trademark having become generic.”

As marks descend the scale to the middle or weak-end of the continuum Panels expect a more robust marshaling of supporting facts and evidence. In the “smart search” case cited in the first paragraph, the three-member Panel found

Respondent has been utilizing the disputed domain name as a parking page for PPC advertising links. [However,] [n]one of the links appear to be related to Complainant, its trademark or its business. Instead, the links seem to reflect descriptive matters that one might search for on the Internet, such as “games” and “movies.” Because these links are sufficiently related to a website that offers “smart” “search” on the Internet, and because none of the links are related to Complainant or its personnel staffing program, the Panel finds that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name.

Even further down the continuum is SECRET, FriendScout24 GmbH v. Protection of Private Person / Besnik Lajqi, L.M.Z Meida Solutions SH.P.K., D2018-0531 (WIPO May 15, 2018) Complainant argued that the incorporation of its figurative trademark in the domain name, <secret-hot.com> supports its claim. However,

the Complainant’s figurative trademark consists of a generic term “secret” in stylized format. The Panel notes that the Complainant has no trademark registrations for “Secret” on its own without stylization. Such figurative mark does not provide the Complainant with registered trademark rights to the word “Secret” on its own.

Similarly in NLY Scandinavia AB v. Alexander Tchousov, PS Pay Solutions UG, D2018-0498 (WIPO May 8, 2018) Complainant’s NELLY mark is also a common woman’s name and the content on <nelly-model.com> referred to a model by that name. The Panel explained that

there is no evidence that the Respondent was aware of the Complainant or its trademark rights prior to the Respondent’s registration of the disputed domain name. Further, and contrary to the claim made by the Complainant, the content of the website does not suggest any connection between the model [“Nelly”] that is depicted on the website and the Complainant’s business, and there is no indication that the disputed domain name is used to capitalize or otherwise take commercial advantage of the Complainant’s trademark rights or is used with the intention of disrupting the Complainant’s business.

Marks composed of geographic place names such as RIOJA are treated as generic terms, as are random letters, unless there is such identification or other evidence that the domain names were registered with complainants in mind then complainant prevails as happened in Philip Morris Products but not in Smart Search. Failure of proof as to identification and intention to take advantage of Complainant’s stylized word mark is precisely the reason the Panel rejected Complainant’s contentions in Regulatory Board of the Rioja Qualified Designation of Origin (D.O.CA) v. Domain Hostmaster, Customer ID: 43528876679114, Whois Privacy Services Pty Ltd / Privacy.co.com, Inc Privacy ID# 1027108 / Kevin Daste, D2018-0168 (WIPO May 4, 2018):

notwithstanding the weaknesses in the Respondent’s case, the Panel has not been given a good reason to conclude that, whenever the Respondent registered the disputed domain name, it most likely did so with reference to the Complainant’s trademarks, rather than (a) purely for its geographical meaning, as the Respondent claims or (b) more likely, but also uncontroversial in the context of this case, because it reflected a kind of wine which emanated from a particular region and bore a particular style or quality.

The same point is also made for the three-letter domain name “aex” in Euronext N.V. v. Huang tian wei, D2018-0348 (WIPO April 12, 2018) in which the Respondent argues that the letters AEX are not exclusively associated with the Complainant and can have many different meanings. The Complainant suggested 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. However, “[t]he argument is not persuasive” because

[t]he 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… [Moreover,] [t]he 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.

This principle of assessing short letter strings as good faith registrations when they are capable of having multiple associations is deeply embedded in the jurisprudence; AEX is simply the latest example. In descending order of strength, when complainants’ claims are denied it is because they either fail to satisfy their burden or respondents have satisfied theirs in establishing rights or legitimate interests in the domain names. It might be noted that in all these cases, the great value of these decisions is educational in the best sense; Panels try to make it as clear as possible Why and Why Not complaints for cybersquatting are dismissed. Parties and their representatives should listen carefully!

By Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

Information about the firm can be found on the Firm’s website at iplegalcorner.com. Mr. Levine has a litigation and counseling practice representing clients in Intellectual Property rights and management, Internet and Cyberspace issues, domain names and cybersquatting, as well as a diverse range of legal and business matters from working with client to resolve commercial disputes, to copyright and trademark counseling and registrations. He is the author of a treatise on Trademarks, Domain Names, and Cybersquatting, Domain Name Arbitration: A Practical Guide to Asserting and Defending Claims of Cybersquatting Under the Uniform Domain Name Dispute Resolution Policy. A Second Edition of the treatise was published July 2019 and is available from Amazon or from the publisher, Legal Corner Press (LCP). For inquiries to LCP write to .(JavaScript must be enabled to view this email address) or Mr. Levine at .(JavaScript must be enabled to view this email address).

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