"UDRPTalk, see Comment below made the following comment about the decision in Compart AG v. Compart.com / Vertical Axis, Inc., D2009-0462 (WIPO July 9, 2009)“If there was no valid proof of competing usage, then the respondent should not have lost.” There are three questions that the complainant must answer to succeed in a UDRP proceeding. None of them concern “competing usage” which is a phrase borrowed from trademark analysis. The physical world accommodates identical trademarks in different classes of goods or services; the cyberworld does not. “Due to the [Internet’s] technological limitations and boundless use, only one entity can be registered in each gTLD name throughout the world,” Cimcities, LLC v. John Zuccarini D/B/A Cupcake Patrol, D2001-0491 (WIPO May 31, 2001).
The Respondent’s “competing usage” in Compart was a pay-per-click parking page, not illegitimate in itself if the term identical or confusingly similar to the trademark is used in its dictionary sense. The Respondent argued that the word “compart” was common in both English and German. However, the Panel opened several desk dictionaries and found that although the word appears “to be an English language word ... it is not listed in all common dictionaries ... and thus the Panel does not agree that it could be said to be in common use.” In dictionaries in which the word is defined (including the OED unabridged) it is preceded with “arch[aic]” or “rare.” The earliest usage as a transitive verb is recorded in the 16th century; as an intransitive verb the 18th century. One of its meanings is to “[v.] lay out in parts according to a plan.” In fact, the Respondent argued that
the automated technology used by the domain name parking service HitFarm.com is drawing on the contextual meaning of the “part” component of the Domain Name to generate what it considers to be relevant advertising.
However, the Panel called the word “obscure.” The Panel also determined that the word was not common in German (if a German word at all), which means that it must be uncommon and uncommon words adopted as trademarks have a higher level of protection. So, why would a respondent register an archaic, rare or obscure word that is a third party’s trademark unless there were a target audience and what better audience than Internet users looking for the trademark holder? The Panel held that
the mere fact that a word identical to the Domain Name exists as a defined dictionary term does not give rise to any rights or legitimate interests in the name on the part of a respondent who uses it in ways like this that are not tied to the generic meaning of that word.
These observations about dictionaries apart, there is clearly an issue in waiting. The domain name was registered by a predecessor to the Respondent after the Complainant was founded but before the Complainant’s expansion of trademark Internationally, including North America. However, the Respondent acquired the domain name contemporaneously with the Complainant’s trademark registrations and expansion of its business into North America. This makes a difference because under UDRP jurisprudence transfer of a domain name constitutes a new registration and activates the warranties therein. While the original registrant may have registered the domain name in good faith, the transferee is in a different and more difficult legal position.
Compart stands for the proposition (and it is not alone in this respect) that a later registered trademark, particularly if composed of uncommon words or phrases and temporally consistent with a finding of knowledge may triumph over an earlier registered though subsequently transferred domain name. It does not work against the original registrant, NETtime Solutions LLC v. NetTime Inc. c/o Chad Wagner, FA0810001230152 (Nat. Arb. Forum December 19, 2008) (<nettime.com>) or registration of an uncommon (or even nonexistent) word where there is insufficient proof of knowledge, Eclipse International N.V. v. Luma, Inc., D2009-0380 (WIPO May 22, 2009), “luma” as in <luma.com>. Luma has a specialized meaning, but is not a common word found in English language dictionaries; it is not in the OED unabridged. The Panel made a point of noting that the Complainaint in Eclipse International failed even to state what business it was in.
