The lexical material from which trademarks are formed is drawn from the same social and cultural resources available to everyone else, which includes domain name registrants. Since trademarks are essentially a form of communication, it is unsurprising that a good number of them are composed of common terms (dictionary words, descriptive phrases, and shared expressions) that others may lawfully use for their own purposes. And equally unsurprising, domain names can be identical or confusingly similar to these common-term trademarks. But, whether domain name registrants infringe owners' rights to exclusive use of their terms on the Internet, depends on when the domain names were registered (and if they postdated the trademark, why?) and how the domain names are being used (important only if they postdate the trademark).
One of the differences between applications for trademarks and registrations for domain names is that applied-for marks are examined by a gatekeeper and domain names are not. In the trademark world, rights to particular terms are circumscribed by statutory rules that prevent owners acquiring a monopoly over all but made-up words ("google"). This is done by subdividing goods and services into different classes. Apple Inc., the iconic maker of electronic goods in Class 37, for example, doesn't have a monopoly on the word "Apple". It shares the mark with an Apple Bank (Class 36), an Apple Market (Class 35), and many other APPLE businesses in a variety of different classes, none of which overlap with the goods offered by Apple Inc.
In the cyber world domain names (when not identical to marks) can be composed of a countless number of variations by simply adding, omitting, and reversing letters or combing words. Terms that in the actual marketplace function as trademarks in cyberspace can just as easily (the facts not demonstrating otherwise) be used for their semantic value (<gabs.com>) or be equally as distinctive as trademarks (<zionvpn.com). Cybersquatting is defined by registrants exploiting common term-trademark values (<virgin.ir>, discussed below).
In the "gabs" case, Gabs S.r.l. v. DOMAIN ADMINISTRATOR – NAME ADMINISTRATION INC. (BVI), CAC 101331 (ADReu February 26, 2017) the Panel noted that Respondent has "used the Disputed domain name only within its ordinary meaning." "Gabs" transformed into a trademark informs consumers of the nature of the good or service. "Gabs" the Panel continued
is a common English word based on "gab", meaning "talk, prattle, twaddle" (Concise Oxford Dictionary) and it is used to invoke notions such as "the gift of the gab" and in colloquial words such as "gabfest" and "gabble". It does not strain the language at all to accept that it is used interchangeably as a verb, as in "talks" or "prattles."
Ergo, the GABS Complainant has nothing to complain about because Respondent is not exploiting the trademark value of the common term.
In ZB, N.A., dba Zions First National Bank v. Oneandone Private Registration, 1&1 Internet Inc / John Mike, D2017-0137 (WIPO February 26, 2017) the dispute turns on the dictionary word "zion" in the second level string. But Complainant doesn't own "zion"; it owns several marks with the variant "Zions" as in Zions Direct and Zions Bank. Zion in the singular is a geographic term with historic/cultural and religious connotations but has no meaning in a plural form. There's only one Zion. While Complainant's mark is undoubtedly well-known in the territory in which it operates and for the banking and financial services it provides, ZB, N.A. has no monopoly on "Zion." This is clear from the USPTO database: there's a ZION in Class 12, a ZION REAL ESTATE in 35 and many other "Zion" businesses in a variety of noncompeting classes.
A better argument for cybersquatting could have been made if the added letters "vpn" were banking or finance terms a point amply illustrated in other Zions Bank UDRPs but "vpn" is an acronym for "Virtual Private Network." The Panel notes that
Complainant asserts that "the Respondent's use of Complainant's mark may tarnish Complainant's mark", but fails to deal with the fact that the Respondent is not using the Complainant's mark. Non-use or passive use can certainly constitute bad faith use, but there has to be evidence to support the contention. A problem for the Complainant is that the word "Zion", which appears in the Domain Name, also happens to be a well-known term to which the Complainant cannot claim exclusivity.
Moreover, while Respondent is "responsible for how his Domain Name is being used" here
the use to which it has been put has no obvious connection with the Complainant and given that all the links on that parking page are to VPN-related websites, it appears to the Panel that the VPN element of the Domain Name may in fact be a key element both for Internet users and search engines which undermines the Complainant's assertions as to confusion.
Because ZB, N.A.'s complaint was more "misconceived" than willful it dodged being sanctioned as a reverse domain name hijacker but it undoubtedly overreached its statutory right. Gabs also dodged the sanction, but barely; the third member held the complaint was "a classic Plan B case where a party tries, but fails to buy a domain name and then makes a claim for the same domain name under the UDRP."
Two "virgin" disputes can usefully be cited to round off the discussion of common terms. With the right facts, "virgin" can legitimately be used by others but for respondents to prevail where their choices postdate the existence of corresponding trademarks there must either be insufficient evidence of bad faith or affirmative proof of good faith. Respondent appeared and argued good faith in one (<virgin.ir> and defaulted in the other (<virgin.yacht>). Virgin Enterprises holds trademarks in the U.S. and other countries in a variety of classes but not for Virgin Olive Oil (Class 29) or for Virgin Yachts (Class 12 or 37).
In Virgin Enterprises Limited v. Damon Serji, DIR2016-0036 (WIPO December 31, 2016) (<virgin.ir>) Respondent explained the reason for its choice — "to promote and sell virgin olive oil in the Islamic Republic of Iran" — but failed to explain anomalies in its story including passive holding of the accused domain name. While non-use has been found to support conjunctive bad faith it generally requires the presence of other factors. So what were the other factors in Virgin Enterprises?
The Panel recognized that the domain name "consist[ed] of a dictionary word, meaning unspoiled or untouched." Normally,
in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the definition of the term, and not trade off third-party rights in such word or phrase (Paragraph 2.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
But here, while "the Respondent did not provide any real proof of use or preparations to use the disputed domain name in connection with the supposedly relied-upon meaning" neither did Complainant "submit[ ] [any evidence] ted to prove that the Respondent traded-off the Complainant's rights in VIRGIN either." However, there was proof that Respondent owned "several domain names, most of which are comprised of generic or descriptive terms related to the food industry, which could lead to believe that the disputed domain name was in fact intended for use in connection with the meaning claimed by the Respondent." Nevertheless (and fatally, at least on this record),
the Respondent has also acquired a significant number of domain names which undoubtedly contain third party trademarks, some of which are famous, such as <ralphlauren.ir>, <primark.ir>, <hogan.ir>, <paulsmith.ir>, <geox.ir>, <beatles.ir>, <reiss.ir>, <orangeblossomwater.com>, <kiricheese.com>, <tildarice.com>, and <ahmadteashop.com>. The Respondent did not provide evidence-supported arguments to demonstrate a fair registration over these domain names, and said domain names act as evidence to demonstrate that the Respondent is aware of third parties' trademarks. (Emphasis added)
The Respondent failed because the totality of evidence undercut his professions of good faith. The Panel simply didn't believe Respondent because his "clear familiarity with the Internet and the domain name system, lead the Panel to infer that the Respondent knew of the existence of the trademark VIRGIN at the time of registration of the disputed domain name, and that it is not likely that the Respondent registered the disputed domain name to sell virgin olive oil, or virgin coconut oil." The clincher was Respondent changed the the website to reflect olive oil "only after having been notified of the Complainant's claims."
The <virgin.yachts>) case is different. Because Respondent defaulted the Panel had a one-sided record. The failure to provide a counter-narrative was tantamount to there being none. The Panel in Virgin Enterprises Limited v. Michelle Meads, Virgin Yachts, D2016-2162 (WIPO March 13, 2017) stated that "there is no evidence in the case record that refutes the Complainant's submissions." Yet, this case is unusual for the reasons noted by Andrew Allemann in Domain Name Wire. He says that he "did a double take when [he] saw this decision" because "n order to register a .yachts domain name, you have to be affiliated with a company in the industry."
Mr. Allemann notes further that there is public information that the domain name registrant is a legitimate company in Florida. In his conclusion, he underscores an important lesson for respondents. Even though "respondent [may have a] legitimate interest in the domain name and probably didn't register it in bad faith" the Panel "accepted" whatever the complainant said. This is too bad because (continuing with Mr. Allemann) "I think it should have been obvious to both the complainant and perhaps the panelist" that this wasn't a cybersquatting case but without a response, whatever the complainant said was "accepted" by the panelist.
He concluded wryly that the Complainant "obviously didn't point out these facts." And why should it have is the underlying and ironic coda.
A Panel's task is to measure the metes and bounds of an owner's rights to marks composed of common terms joined or not with other letters or words. But, as in any dispute unless there is a full record the party with the more compelling narrative prevails even if the Panel may suspect that there is more that could have been established by the losing party.
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP