Trademarks Composed of Elements that Include Dictionary Words

Posted on May 17, 2013 by Gmlevine

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while Respondent’s website advertising links are no longer active and accessible, the subject matter of those links [when they were active] refers to providers of goods and services that may well be competitive with those of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.

Posted in Acttive / passive use, Complainant "in mind", Generic/Descriptive terms, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(b)(iv) of the Policy, Paragraph 4(b) of the Policy, Secondary meaning, Targeting, Timing of registration, Totality of facts, UDRP Rule 15(a), Website content | Tagged , , , , , , | Leave a comment

Similarity of Domain Name to Trademark Is Only the Beginning of the Assessment

Posted on May 2, 2013 by Gmlevine

UDRP provides remedies on proof of abusive registration of domain names. What constitutes abuse sufficient to support a remedy is something more than having a trademark that another party is using as a domain name. Initiating a proceeding on a non-actionable claim is an abuse of the Policy. What if the complainant initially believed it had a meritorious claim, and then learned from respondent’s submission that respondent had a right or legitimate interest in the domain name? This factual situation occurred in Avaya Inc. v. Avayo Electronics, FA1302001487607 (Nat. Arb. Forum April 19, 2013) where the 3-Member Panel came up with a surprising answer that (to my knowledge) has not previously been offered and which I think marks an advance in declaring a reverse domain name hijacking.

Avaya illustrates the rare case in which Complainant has a history of commencing proceedings “against legitimate businesses” and having its complaints denied in all three. In the most recent case it is “Avaya” and “Avayo” (“[Respondent] chose the disputed domain name because it corresponds to the name of its Canadian corporation that was founded in 2005). In one of the earlier two cases, Avaya Inc. v. Moayyad Hamad, FA 1456063 (Nat. Arb. Forum Sept. 14, 2012) it is “Avaya” and “Ayava” (“[t]he Ayava name was created by combining one of the owners’ names, Aya Hamad, with the letters ‘V’ and ‘A’ (abbreviation for video and audio)”); and, in the other case, Avaya Inc. v. Sudhir Sazena, FA 1229266 (Nat. Arb. Forum Dec. 9, 2008) it is “Avaya” and “Cavaya” (“Cavaya” means “intelligence” in the Sanskrit language.”).

The most recent Avaya case that triggers this blog is important because it pronounces a view about responsibility where a respondent submits affirmative evidence that so totally undercuts a complainant’s claim that it becomes untenable. The 3-member Panel in Avaya suggests that continuing to prosecute a claim after it becomes clear there is no actionable infringement supports a finding of reverse domain name hijacking:

It is clear from the record that the Complainant knew that the Respondent is engaged in a legitimate business. When it filed the Complaint, the Complainant could plausibly have been unaware of the fact that the disputed domain name corresponds to the Respondent’s business name. However, the Complainant could not have ignored this after the Response was filed.

The appearance of an actionable claim may support commencement of a proceeding, but once the appearance is shown to be insubstantial the claim dissolves and should be withdrawn, at least that appears to be the holding:

Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent. Further, the Complainant merely asserts that the Respondent registered and used the disputed domain name in bad faith, without providing any evidence to support its assertions.

Only in the middle case did the Panel make a finding of confusing similarity, and that because the apparent transposition of “y” and “v” is generally a clue to typosquatting. The Respondent’s explanation persuades the Panel that it is operating a legitimate business.

Where the evidence establishes at a hearing that a respondent is engaged in legitimate business activity complainant becomes at risk of RDNH if it continues to press its case. A similar result comes from another 3-Member Panel in Edward Smith v. Douglas Bates, FA1302001483682 (Nat. Arb. Forum March 27, 2013) () where the domain name was registered eleven years before Complainant acquired its rights in the trademark. Here, the initiation of a proceeding is abusive. No case could ever have been made out. In declaring that Complainant was engaged in reverse domain name hijacking the Panel held that it “should have known it could not [prove its case]” Further,

the Complainant filed its trademark application shortly after it was unable to acquire the Disputed Domain Name from the Respondent on acceptable terms. The panel finds that failing in this effort, the Complainant undertook to use the Policy to acquire the Disputed Domain Name.

In doing so it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy” citing earlier authority.

These cases illustrate two streams of thinking. The first supports withdrawal of a complaint upon conclusive responsive evidence that there is no factual basis for abusive registration; the second supports finding abusive use of the proceedings where the factual circumstances cannot possibly have justified an actionable claim.

Posted in Certification, Concurrent rights, Confusing similarity, Knowledge, Likelihood of confusion, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Similar - Not confusing, Targeting / Not targeting | Tagged , , , , , , | Leave a comment

Inadvertent Lapse of Both Trademark Registration and Domain Name

Posted on April 22, 2013 by Gmlevine

Falling out of the trademark registry for failure to file a section 8 affidavit may be embarrassing but not fatal; losing a domain name for inadvertence may be fatal depending on the strength or weakness of the trademark. In the canon of defenses, however, lapse does not prejudice a complainant’s standing to challenge a domain name holder. In Department of General Services, State of Maryland v. Domain Privacy Group, FA130300 1488524 (Nat. Arb. Forum April 2, 2013) Complainant’s trademark EMARYLAND MARKETPLACE was cancelled on October 5, 2012: the cause, “changeover in State personnel.” The Maryland Department of General Services re-applied for the trademark on February 13, 2013. Respondent jumped on the expired domain name immediately upon lapse.

In response to a cease and desist letter from the Department dated October 17, 2012, Respondent took a position that failure to renew a domain name was fatal: “all ownership rights [said the Respondent] are thereby relinquished and the name is placed back into the public pool of names – which are then available for purchase by anyone choosing to pay for such ownership and all the rights which accompany same.” As the Panel rightly pointed out acquiring domain names following their non renewal is not unusual, but

a party in the position of Complainant, or indeed any other party that believes it has a right to the domain name [as a trademark owner] is still able to file a Complaint under the UDRP and such a claim is then judged on its merits. That is the process that is presently under way.

A second prong of Respondent’s argument that Complainant has no trademark because it was cancelled is equally meritless. Cancelled trademark registrations do not cancel established trademark rights, even though it may make a party vulnerable.  This is so for the reason stated by the Panel:

[I]t is now well established that under the UDRP a party can make out a claim for a common law or unregistered trademark and that is what has happened in the present case. It is not always easy to see if a common law or unregistered trademark has been made out, but in the present case the Panel has concluded that a case can be made out, mainly because the registered service marks, while they were registered, were widely used and over a considerable period of time and must have become known in the commercial community as they means by which the State of Maryland provided one of its important services, namely procurement. Moreover, it should be noted that EMARYLAND MARKETPLACE has been legislated for by name and the Panel should not lightly disregard that fact.

The third prong of Respondent’s argument addresses concern of the State of Maryland that use of the disputed domain name may “be misleading to consumers, be in violation of federal cyberpiracy law, or an infringement of the trademark held by the State of Maryland”:

Respondent in that regard argues that it intends to use the domain name for other purposes, that it is not misleading internet users, email traffic is redirected to a new State of Maryland website and that it has put a disclaimer on its website.

The Panel’s response is that while

[e]ach of these steps has its own value … the difficulty with all of them is that they do not rebut the concern, which is really that Respondent is holding a domain name that would be understood by many people to be a State instrumentality providing State services, whereas at the present it appears to be a private service offering clearly commercial services and services that the State is not permitted to offer. It should be added that the disclaimer is not of much effect because of its position on the website.

It may be true that under certain circumstances a purchaser of an expired registration is given the benefit of the doubt particularly where the parties are distant from each other and the trademark is descriptive of generic products or services. There are many examples of this in the UDRP database, but not where the evidence establishes that the trademark is anchored to services in a particular geographic location in which both parties reside. To intend to develop around an acquired domain name a “‘stealth’ start up company” directed to the same community of businesses who formerly used it immediately falls foul of paragraph 4(b)(iv) because any use “creat[es] a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” of respondent’s product or service. “Intentionality” can be inferred from intended use where the trademark is well-known at the time complainant’s registration inadvertently lapsed.

Posted in Abusive intent, bad faith use, Common law protection, Complainant "in mind", Cybersquatting, Inadvertent lapse of renewal, Para. 4(b)(iv) of the Policy, Renewal / Re-registration, Targeting, UDRP, Website content | Tagged , , | Leave a comment

Insufficient Evidence for Respondent’s Lack of Rights or Legitimate Interests – Not Even the Iconic Trademark Owner Is Excused From Having to Offer Proof

Posted on April 10, 2013 by Gmlevine

Just as complainants cannot prevail on the strength of their trademarks which only proves the first requirement that it has standing to maintain the proceedings, so respondents do not forfeit their domain names on default of responding to the complaint. This message continues to be lost even to the most prestigious law firms and the wisest counselors. If nothing but suppositional allegations are offered as proof for paragraphs 4(a)(ii) or 4(a)(iii) relief will be denied. Should that verdict be applied to iconic trademarks such as AOL, as it was in AOL, Inc. v. ChengshuangLi, FA1302001483339 (Nat. Arb. Forum March 26, 2013)? The Panel made the following pronouncement: the “Complainant’s entire argument” on the issue of rights or legitimate interests is that

Respondent has no rights or legitimate interests in the infringing domain name. Respondent is not named or commonly known as AOL, nor is he licensed or authorized to use the AOL mark in this manner.

Unlucky to have had this particular panelist assigned to the case who demands support for conclusory assertions? Or, a warning by an experienced arbitrator that sufficiency requires offering evidence of factual circumstances, even where the respondent (Chinese in the AOL case) fails to appear? The onus is on the complainant to prove each requirement separately. As complainant ascends the procedural scale of requirements the evidentiary demands increase. The proof for prevailing on the second requirement is greater than the first, but easier than the third. AOL lost (a questionable call I think) because it apparently failed to offer persuasive evidence to prove its prima facie case; either that or its suppositions were unsupported with documentary evidence even though Respondent’s rights or legitimate interests were transparently thin.

Proof of a prima facie case can be reduced to a check list which takes the paragraph 4 (c) defenses and turns them around: contention 1 (not authorized) and evidence of it (which could be a declaration from a person with knowledge); contention 2 (not commonly known by) and evidence of it (which could be a copy of the Whois directory); and contention 3 (the manner in which the domain name is being used) and evidence of it (which could be a snapshot of a page). It is important to note whether the domain name is being used at all, or passively held. To allege that a respondent has no rights or legitimate interests in a domain name is conclusory, and conclusory alone is insufficient to satisfy the requirement. The Panel cites to an earlier, more successful case initiated by the same Complainant: AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006). The rule is that a

Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

Insufficiency of evidence can be thought of as a kind of silence. A record is a combination of statements and silences. There are different kinds of silence. Default is a silence; suppositional allegations are a silence. What a party omits in its submission can be equally as important as that which it includes. Omission where evidence is expected is a form of silence. Holding back facts, for example, supports an adverse inference as does any manipulation of evidence. While default is not an admission of liability and suppositional allegations are not conclusive, these strategies have consequences. Omitting what can easily be confirmed strikes at a party’s credibility. I am speaking generally now and not about the AOL case.

The fact that a complainant is well-known, famous even and iconic does not excuse insufficiency of evidence. The evidence in the latest AOL dispute is obviously available and could easily have been marshaled, but (it appears) the representative wrongly believed that he could prevail by alleging suppositions rather than demonstrable facts. This may be a harsh result but Panels will not make the complainants’ cases for them even where it is otherwise clear about respondent’s intention in registering the domain name as is the case with <webmail-aol.us>.

Posted in Abusive intent, Burden of proof, Burden of proof / persuasion, Cybersquatting / Not cybersquatting, Default, Insufficiency of evidence, Intent / Tartgeting, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Reputation in the marketplace, UDRP Rule 10(d) (evidence) | Tagged , | Leave a comment

Protecting Corresponding Domain Names to Trademarks When ICANN Expands Space for new gTLDs

Posted on April 1, 2013 by Gmlevine

ICANN has recently approved several rights protection mechanisms to counter cybersquatting for new gTLDs, including the Trademark Clearing House program (TMCH) which allows brand owners to submit their trademark details for entry into a centralized database and enable the rights holder, after verification, to participate in the sunrise program and Trademark Claims service across all eligible new gTLDs. The TMCH is described in a circular dated January 11, 2012. Sunrise rights refer to a stipulated period during which an owner of a registered trademark may register domain names in new generic Top Level Domains (gTLDs) prior to the registrar accepting registrations from the general public. Not all owners or trademark counsel are acquainted with the procedure to protect the corresponding domain name for new gTLDs.

The pressure to understand the procedures will become more pressing starting in the fourth quarter of 2013 when ICANN expands the familiar gTLDs to include a variety of new extensions such as .book, .traffic, .car, .bank, etc. (categories of goods and services). The expansion opens up a Pandora’s Box for established brands. Heretofore, registration agreements for new gTLDS provided a mechanism for trademark owners to challenge registrations during the sunrise period, and there is no reason to expect this to change, but waiting in ignorance of the procedures will create later uncertainty.

The TMCH will accept

3.2 The standards for inclusion in the Clearinghouse are:

3.2.1 Nationally or regionally registered word marks from all jurisdictions.
3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.
3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.
3.2.4 Other marks that constitute intellectual property.

As with the UDRP, “Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.”  Corresponding domain names refers to the Second Level Domain. Registration extends only to claimants who as complainants would have standing in maintain a proceeding.

The question is, If the trademark owner fails to challenge a registration during the sunrise period does it lose the right to have the disputed domain name cancelled or transferred after the window has closed? The emerging consensus is that it does not. The issue has been squarely raised in a number of .mobi [C. Bechstein Pianofortefabrik AG v. Melvin Besbrode, Besbrode Pianos Leeds, D2008-1528 (WIPO December 4, 2008); Adidas AG v. Zhifang Wu, D2007-0032 (WIPO March 21, 2007); and Mansueto Ventures, LLC v. Jonathan Witte, D2006-1479 (WIPO January 19, 2007).] and .xxx TLD decisions [Richard Branson v. Sean Truman, FA1201001423689 (Nat. Arb. Forum February 14, 2012); HEB Grocery Company, L.P. v. Eric Gonzales, FA111200 1421851 (Nat. Arb. Forum February 7, 2012)] and in court actions, although I am not aware of any in the United States [Coca-Cola failed to register its mark within the sunrise period in Albania and commenced an action in the Tirana District Court which rejected Coca-Cola's claim. On appeal to the Tirana Court of Appeal, judgment reversed and ordered cancellation of (November 2011). The Court held that a trademark owner does not lose its right to a corresponding domain name for failing to register the domain name within the Sunrise period. As reported by Gjergji Gjika, Drakopoulos Law Firm an appeal to the Supreme Court of Albania is pending].

Posted in Inadvertent lapse of renewal, Sunrise, UDRP | Tagged , , , , | Leave a comment