There is always a question with domain names composed of generic and descriptive terms whether the registration is purposeful to take advantage of a complainant’s trademarks or a choice that by happenstance is identical or confusingly similar to a complainant’s trademark. The less well known the mark the more evidence to prove the second and third requirements. Acronyms do not travel well, hence the necessity for proving knowledge. In Scripps Networks, LLC v. Chief Architect, Inc., D2009-0633 (WIPO June 29, 2009), the Respondent had prior dealings with a third-party vendor to Complainant as well as being in an unrelated trademark dispute with it.
The Complainant’s trademark in Scripps Networks is an acronym (hg) + generic term (tv) for HGTV. The disputed domain name is <hgtvsoftware>. The added term “software” is descriptive of the Complainant’s goods or services thereby increasing the confusion for Internet users. The question is whether “the addition of a word and its associated concept strongly leads an average Internet user back to a complainant’s trademark,” Enterprise Rent-a-Car Co. v. Richard Lanoszka a/k/a Silent Register, FA 1242244 (Nat. Arb. Forum February 25, 2009. If it does, then the domain name is confusingly similar to the trademark.
The cliche is that when facts are against a respondent it must argue law. In Scripps the Respondent argued first that the Complainant had no trademark rights in <hgtvsolftware.com>; second, because the Complainant had no trademark right the Respondent “has rights and a legitimate interest in it.” The Respondent also argued that because of some images it provided to the third-party vendor for use in conjunction with a program being created by the Complainant it had a legitimate interest.
The first argument “turns [the threshold requirement] on its head.” It is not the complainant’s burden “to show rights in the infringing domain name, only rights in the mark HGTV that Respondent has infringed by using in the Domain Name.” The flaw in the second argument is that the right or legitimate interest that a respondent must prove is not established by default, that is, it cannot be said that because the complainant allegedly has no trademark in the domain name the respondent has a right to it. The third argument “has no relevance to Respondent’s burden under [paragraph 4(a)(ii)] of the Policy.”
Bad faith in these circumstances is based on the registration of a domain name confusingly similar to the Complainant’s trademark without permission to serve the Respondent’s purpose for some commercial benefit. That the domain name is being held inactive yields no inference of good faith since any use of the domain name would mislead the Internet user into believing that the website was associated with the Complainant.
