Competition for domain names productive for non-trademark business and those corresponding to trademarks is intense. Dictionary words alone or combined to form likely and unlikely phrases are all grist. The right term for domainers is one that both attracts Internet users and avoids infringing third party rights. Holders of dictionary word and descriptive phrase trademarks must prove that the disputed domain names were chosen opportunistically, for the value of the trademark rather than the word or phrase. “Clean” and “keys” are nondescript but are unusual in combination, Cleankeys Inc. v. Registrant [3291906]: Bing Liu, D2010-1810 (WIPO December 14, 2010), while the combination of “eldercare” and “advocates” is generic, ElderCare Advocates, Inc. v. Isaac Goldstein, FA 1357548 (Nat. Arb. Forum December 13, 2010).
Just as holders of trademarks associated with particular Classes of goods or services have no right to exclude others from using the same term in another Class as long as there is no likelihood of confusion, neither may they capture corresponding domain names registered in good faith without intention or knowledge of the complainant. In Greenply Industries Limited v. Matthew Poston, D2010-1748 (WIPO November 29, 2010) each party held a trademark for GREENPLY in the same Class; the Complainant in India, the Respondent in the U.S. Simply having a trademark is not a sufficient reason to win a transfer where there ismissing proof of intention and knowledge.
For trademarks on the lower end of the protective scale it is not unlikely that domain names incorporating the whole or their dominant parts will be registered and put it to use in a productive way. The tide comes in regardless of the outstretched hand that forbids it. Some terms have been used a multiple of times, “web” and “vision”, Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010) (“there has been a Webvision Corporation or Webvision Inc. operating at various times in the USA”); Future Steel Holdings, Ltd. v. Private Whois Service, FA1010001350737 (Nat. Arb. Forum December 6, 2010) (<steelmaster.com>; “at least six other parties own trademark registrations for this term.”); or the terms are standard in a particular industry, Visa Europe Limited v. Name Administration Inc. (BVI), D2010-1531 (WIPO December 14, 2010) (“premier” and “card”; “Many ... entities ... make use of the word ‘premier’ as trade marks in respect of the marketing and promotion of their banking and credit card products and services.”).
Domain names composed of the dominant or identical term of a trademark plus a dictionary word do not become distinctive so as to defeat a holder’s right; a fortiorori when the added dictionary word suggests the complainant’s business. The portmanteau word “alienware” plus “laptop” violates the Policy despite the Respondent’s argument that the Complainant’s trademark is ALIENWARE not <alienwarelaptop>, Alienware Corporation v. James Dann, FA0910001290045 (Nat. Arb. Forum December 28, 2010). “Alien” could have passed the test as did “allocation” in Allocation Network GmbH v. Steve Gregory, D2000-0016 (WIPO March 24, 2000) as long as the domain name was not “chosen with the intent to profit from or otherwise abuse Complainant’s trademark rights.” The evidence in Alienware was that is was so chosen.
Complainants whose businesses come into existence and whose trademarks are acquired after the registration of the disputed domain name may have a right to maintain the UDRP proceeding, but they are tilting at windmills. A respondent can alienate or not what it owns at a price it deems the market will bear. The complaint in X6D Limited v. Telepathy, Inc.,D2010-1519 (WIPO November 16, 2010) contends that the disputed domain name, <xpand.com> has been used in bad faith because the Respondent indicates on its website that it “is likely to ignore offers below USD 40,000 for a domain name.” Under these circumstances it is irrelevant that the price is greater than the out-of-pocket cost for acquiring the domain name.
