Brandable Domain Names and UDRP

Interesting decision on use of Limble.com https://www.internetcommerce.org/udrp-case-summaries/short-brandable-memorable-terms-permitted-for-resale-even-where-corresponding-trademark-exists-vol-3-13/

Case Comment by ICA General Counsel, Zak Muscovitch:

This decision reflects an important evolution in the application of the UDRP by three experienced Panelists. Many decisions over the years have upheld rights and legitimate interests by domain name investors when it comes to domain names based on dictionary words or acronyms where in the absence of a famous mark it is clear that the Complainant can claim no exclusive rights to the term, however when it comes to “brandable” domain names, Panels have often failed to find that an investor has a legitimate interest in investing in such a made-up term if it matches a prior trademark registration. While a compelling basis exists for having the inherent right to speculate in dictionary word or acronym domain names because they are capable of having widespread appeal, Panels have been less certain about “brandable” domain names because it is assumed that the universe of parties interested in such domain names is far more limited, and the more fanciful the term and the fewer users of it, the more likely that it is that it was registered because of the trademark owner complainant. Nevertheless, this case demonstrates that the same qualities appurtenant to dictionary word and acronym domain names – namely inherent appeal – can also exist when it comes to distinctive, made-up terms which are capable of adoption by third parties.

The fact that a single party may have a trademark is not determinative, since a trademark by itself – absent fame – does not bestow a monopoly upon the trademark holder and indeed, trademark law itself is premised on the potential coexistence of similar or even identical brands by multiple unrelated parties, where the goods or services are in different fields. As such, fidelity to first principles of trademark law as applied to the domain name context, would suggest that we should likewise not bestow an effective monopoly upon a trademark holder when a third party may very well find a similar domain name attractive for the same reason that the original trademark owner did, and can potentially register it in good faith for a different purpose.

The universe of fanciful terms held for investment is potentially far greater than the number of dictionary and acronym domain names held for investment, in part because many fanciful terms have widespread appeal as potential online identities, and in part because the supply of dictionary and acronym terms is insufficient to meet the global demand from businesses for attractive domain names. As recognized by this panel, in the absence of evidence of targeting, it cannot be inferred that an investor who registers a fanciful domain name matching a prior trademark has registered the domain name in bad faith. That may especially be the case when, as in this instance, the fanciful domain name was first registered by a third-party prior to the Complainant’s adopting a similar brand, thereby indicating that the Complainant adopted its brand knowing that the dot-com domain name was already registered to a third-party yet proceeded to adopt its brand anyhow.

Moreover, a speculator in such domain names can legitimately serve as a middleman by aggregating such attractive domain names for resale – even whereas here, a trademark registration exists. As the Panel noted, absent any significant reputation, there is no factual basis for inferring targeting in such a case. Moreover, the application of the doctrine of “willful blindness” or requiring a Respondent to have conducted a trademark search before registration, would in effect and unfairly, create a monopoly for the trademark owner despite such notions being unsupported by trademark law and presuming targeting even when there was none.

We believe INDRP should be following a similar approach in terms of .in domains , including brandable domains .

India Trademarks , INDRP and Generic Domains

Chat.com sold for over $10 million

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