Trademarks gather strength as they ascend the classification scale. In order, fanciful, arbitrary and suggestive are at the strong end of the scale, while descriptive and generic (if they qualify for registration) are on the weak end. The registry of trademarks includes numerous well-known dictionary words used fancifully or arbitrarily – think fruit: “apple”, “blackberry” and “orange”; or common words combined such as “micro” and “soft” and “America” and “Online.” More common words used descriptively have qualified when by their presence in the marketplace they have achieved secondary meaning. Whether domain name registrants are cybersquatting on the trademark depends on a number of factors that are discussed in Imagine Solutions, Inc. v. Encapture.com, Privacy Services / Ravindra Kumar Lahoti, D2013-0268 (WIPO April 17, 2013). In this case, the domain name, is identical to the Complainant’s trademark.
Respondent argued that “encapture” is a common word. While “en” is a familiar prefix in English, “enthrone”, “enrapture,” “entangle” etc. it does not work with “capture.” “Capture” is a common word, but not “encapture.” What would the word mean? To Respondent the prefix is a substitute for “to ”, but that would violate standard usage. “En” may mean “to put on” (“enthrone”), indicate intensification of an emotional state (“enrapture”), or cause something or someone to become more caught up in (“entangle”). The Panel notes that “Respondent has alleged that the term ENCAPTURE is generic in the sense of describing ‘to capture’. To begin with, the term ‘encapture’ is not listed in the Merriam-Webster online dictionary or in The New Shorter Oxford English Dictionary, two standard reference works. This argues against consideration as a generic term….”
Even if a word were generic the manner in which it is being used would be an important factor in determining whether the registration was abusive. There are numerous examples of domain names identical or confusingly similar to trademarks on the lower end of the scale for which the respondent has an equal right to hold and use because they are being used for their semantic meaning. In Imagine Solutions
while Respondent’s website advertising links are no longer active and accessible, the subject matter of those links [when they were active] refers to providers of goods and services that may well be competitive with those of Complainant, including “contract management software” and “computer software”, part of the class of goods for which Complainant’s trademark is registered…. Absent the trademark usage, the term “encapture” might not otherwise be associated with contract management software or computer software in general.
In other words, Complainant has created a non-word that looks as though it could be a word because it appears to have been properly formed, but in fact its validity to English speakers (as with the fruit examples) depends solely on its use in the marketplace. It works only on the symbolic, not the grammatical level. The Complainant established that the manner in which Respondent was (or had been) using the domain name disqualified it as having a right or legitimate interest in it. While that alone does not establish abusive registration it is certainly consequential in supporting a conclusion that Respondent chose the domain name to take advantage of the trademark.
Respondent argued further that it “could not have undertaken registration in bad faith because Complainant did not have rights in the ENCAPTURE trademark when he registered the disputed domain name.” This defense has merit where the domain name precedes complainant’s acquisition of the trademark, but not otherwise. Here: “Complainant has provided substantive evidence of use of the ENCAPTURE trademark [unregistered] in commerce as early as November 2005” which preceded Respondent’s purchase of the domain name. Registration is not a necessary precondition for asserting a trademark right.