Choosing a trademark composed of generic or descriptive elements has the virtue of being easily remembered but the disadvantage of being easily varied by a competitor interested in reaching the same public. When it comes to competitors, while there may be confusing similarity it is not necessarily consequential of bad faith. A competitor’s variation on a common theme is not condemned because it is confusingly similar to the complainant’s trademark. To state an actionable case involving terms on the lower end of the classification scale in the context of a party having a fair business interest, the domain name would have to be identical to the complainant’s trademark.
It follows that where the respondent is a true competitor (not simply using the domain name to offer competing goods or services) confusing similarity is only good for establishing jurisdiction. In USADATA, Inc. v. K2, Incorporated and US Data Corporation, FA1002001307329 (Nat. Arb. Forum April 1, 2010) the Complainant owned USADATA on the Supplemental Register. Ordinarily, registration on the Supplemental Register is not a sufficient basis for jurisdiction absent proof of distinctiveness. In this case the Complainant proved that the trademark had a sufficiently long presence in the marketplace to establish (at least for UDRP purposes) common law rights. In registering its domain names the Respondent omitted an “a” in forming <usdatacorporation> and <usdatawest.com>. Ordinarily, this would raise an issue of typosquatting, but in this case the implication is avoided because “US” and “data” are generic and descriptive.
The Respondent in USADATA frankly admitted that it registered and “is using the disputed domain names to COMPETE with Complainant and not to disrupt Complainant’s business.” The distinction between competing and disrupting may be overly subtle, but it is not unfair. The result would have been different if the Respondent were a domainer using the website to offer competing goods or services (a violation of paragraph 4(b)(iv) of the Policy), but as a true competitor it gains an advantage by being in the market prior to the initiation of the dispute (a defense under 4(c)(i) of the Policy). The Panel cites two cases to support this proposition from the first year of the UDRP, Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) in which the Respondent registered the domain name in connection with a fair business interest; and Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) in which the Respondent had an active website that had been in use for two years and where there was no intent to cause confusion with the complainant’s website and business. A more recent case discussed in the Note on January 25, 2010 is Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010) involving AUSTIN AREA BIRTHING CENTER in which the Respondent omitted “area” and the gerund from “birthing” to form <austinbirthcenter.com>.
The Policy distinguishes between a predator competitor and a competitor with a fair business interest. The former violates paragraph 4(b)(iii) of the Policy: “[Y]ou have registered the domain name primarily for the purpose of disrupting the business of a competitor.” It denotes an intentional act by a competitor who has “registered the domain name primarily” for that purpose. InfoSpace.com, Inc. v. Tenenbaum Ofer, D2000-0075 (WIPO April 27, 2000).
Gerald M. Levine <udrpcommentaries.com>
