Dubai Aerospace Enterprise (DAE) Ltd. v. Registration Private, Domains By Proxy, LLC / Deven Patel, WIPO Case No. D2020-0041
AVK Holding A/S v. Best WebLimited, Dispute No.102848, Czech Arbitration Court ( CAC) ( Feb.21, 2020)
Disputes about domain names that are acronyms are becoming big business, so it seems. They certainly cross the desks of busy arbitrators frequently and, these days, more frequently than ever before-or so it seems. Our assessment of why this is so is that, all over the world, businesses are looking for short, catchy names, in keeping with “instant grab” news, globalisation and the compression of language demanded by social media. It seems that every firm of accountants, real estate agents or management consultants wants an acronym for their domain name and website. In that regard, acronyms are a good start for businesses looking for a short, catchy name. Most acronyms, or most of the good ones, have three letters. Strictly speaking, an acronym must be capable of being pronounced, as acronyms are supposed to be the first letter of each of a series of words in a name. That might suggest that there should be a vowel in every string of letters going to make up the acronym, but such a requirement would hardly be insisted on these days; when we refer to an acronym today we mean a word made up of a few letters, but not necessarily including a vowel.
Well, what has this got to do with domain name disputes? Businesses frequently hit on their desired acronym and then try to register it as a domain name, only to find that it is already taken and that it was registered many years ago and has remained in its original ownership during that time. They then try to buy it, only to find that the domain name holder, the registrant, will not play ball and wants an unacceptably high price to sell the domain name. They (the aspirants that want the domain name) then bring a claim under the UDRP (or their local country code dispute resolution policy), which brings to the fore the problems that claimants face in proving their claim. Claimants should be careful in bringing a claim for a domain name that is an acronym. There have been many cases where panels have decided that an acronym could mean anything, not just what the claimant thinks they mean. When the respondent, domain name, holder has acted responsibly, it has frequently won.
The first thing that claimants have to prove is that the domain name they are chasing is identical or confusingly similar to a trademark in which they have rights. So, clearly, they must prove they have a trademark. You would think this was pretty obvious to anyone who makes even a cursory examination of the UDRP, the rulebook that will tell you if you have a good claim for a domain name or not. But you would be surprised, as some claimants do not seem to realise the necessity for the trademark.
By this time the claimant may have acquired a trademark, having registered one because they think it will strengthen their case. Well, as already said, it is essential.[1] We often find that a claimant has registered a trademark, even if it was registered quite recently and after the domain name owner (the respondent against whom the claim is being made) had registered the domain name. Even if the trademark was registered that late, it is not fatal to the first leg that the claimant will have to prove. That is so because the claimant has to prove only that it “has” a trademark, not that it had one at the time the domain name was registered. But it may be in trouble later on in the case if the trademark was not in existence when the domain name was registered.
If the claimant has its trademark, it then has to prove that the domain name it is claiming is identical or confusingly similar to the trademark. It is lucky for a claimant who is chasing an acronym, because it may not be confusingly similar to its trademark, but it will probably be identical to it, so that will get the claimant past first base.
To give you an example from a recent case we will look at several times, the claimant[2] was chasing the domain name <dae.com>. It did not have a registered trademark, but DAE was an abbreviation of its name and it could also prove an unregistered or common law trademark for DAE, which is adequate for the purposes of the UDRP. So it had a trademark, DAE, which got it past first base because <dae.com> is identical, to all intents and purposes, to DAE[3]. But if the domain name was not identical, the claimant would have had to show that it was similar to the trademark and confusingly so, which is sometimes very difficult.
So, the first rule if you are claiming a domain name that consists of an acronym is to make sure you have a registered trademark, or that you will be able to prove a common law or unregistered trademark. We will look another time at how you prove an unregistered or common law trademark. At the present, the point to remember is that you must show that the domain name you are seeking is identical to the trademark you are relying on or confusingly similar to it.
The acronym is like a dictionary or common word.
The second element that must be proved by the complainant is that the registrant has no right or legitimate interest in the domain name. The registrant can show that it has such a right or interest (an RLI) on any ground at all. It is not limited to the grounds set out in the Policy that are sufficient by themselves to prove the RLI. It is here that the acronym comes into its own. The registrant can argue that the very fact that the domain name is an acronym gives it exactly the sort of RLI that the UDRP says it must establish. Here again, the DAE case is instructive as a good illustration of the view being advanced here, that an acronym may, subject of course to all the facts and circumstances of the particular case, constitute an RLI. The three-person panel in the DAE case unanimously decided that DAE is an acronym, like a dictionary or common word, that it had many meanings and , most importantly, that the registrant was not using it to target or aim at the trademark owner. So it had a right to register the domain name and a legitimate interest in it because it was going to be used for a business or for a personal purpose. This was the first step towards the trademark owner losing the case.
But the really fatal blow for the claimant came when the Panel held that the registrant had not registered the domain name in bad faith and that the reason why it had not done this was , again, that it had not targeted the trademark owner. You could probably say that this argument was more persuasive because the Complainant’s trademark was “only” an unregistered trademark; i.e. it was more believable that the registrant had never heard of the trademark or its owner when the trademark was not on a public register and may have been known only to people in the claimant’s industry and sometimes not even to them. In any event, the Respondent was able to show that there was no targeting of the trademark owner because it had bought the domain name at a public auction in which the claimant took part. Moreover, the domain name had many meanings, like most acronyms, not only as an abbreviation of the claimant’s name, and the registrant’s explanation that it became aware of the claimant only during later negotiations for the sale of the domain, was plausible. In other words, those circumstances tended to show that the Respondent was not preying on the complainant, but was interested in the domain name because it had many and varied potential uses which it could turn to its own advantage.
EVIDENCE FOR THE HEARING
So how does all of the above influence your conduct in a domain name proceeding, whether you are the complainant or the respondent. If you are seeking to recover a domain name that is an acronym, you would do your best to show that the acronym is widely known as your business name or its trademark and of course that the registrant of the domain name must have known of you or your use of the acronym or probably did and that that was the real reason why it had acquired the domain. If you are the other side and are defending such a claim and want to hold onto a domain name that is an acronym, you should try to find some evidence that the acronym has a wide meaning apart from the claimant’s name or trademark, give some evidence of what those wider meanings are, that other people use it in this wider sense, and that the conduct of the registrant shows that it was not targeting the trademark owner or aiming to do it any harm.
As a potential complainant, always reflect, before you file the proceeding that if you lose, the panel may make a finding against you of Reverse Domain Name Hijacking ( RDNH). Why risk RDNH, especially when businesses that look it up to see what it means find that it involves bad faith. Do you really want a finding against you by an arbitration tribunal that you have engaged in bad faith.
OTHER PITFALLS
Another recent decision shows more of the pitfalls that can face a complainant seeking a domain name that is an acronym, and how they can be avoided.The decision is AVK Holding A/S v. Best WebLimited, Dispute No.102848, Czech Arbitration Court ( CAC) ( Feb.21, 2020) which concerned the domain name <avk.com>. The decision was the unanimous decision of a three person panel. The complaint seems to have been a chapter of accidents for the Complainant. It was the second time that the same complainant had made a claim for the same domain name, which was not a good start. Its first attempt had been a few months before, also in the CAC. The Complainant had not specified a mutual jurisdiction in its complaint and, despite being invited by the then panel to rectify this serious omission, it did not do so, although it never really explained why it was not providing that information . Accordingly, the panel dismissed the claim. A few months later the Complainant returned to the siege with a new Complaint and the new panel[4] was able to address the substantive issues involved in the case.
The first point that galvanised the Panel’s attention was that the Complainant had made the submission that “It is not necessary to prove both registration and use in bad faith...” which was clearly wrong. It could safely be said that the Panel may have thought by this time that the complainant may not have had some of the principles straight before it filed the Complaint. However, it proceeded to make a detailed examination of the issues involved.
The Complainant had some registered trademarks that predated the registration of the domain name that had been registered on September 8, 2003, so the Complainant had no difficulty getting to first base. Second base, whether the registrant had a right or legitimate interest ( RLI) in the domain name , however, was a different story.
As was obvious, the domain name was an acronym, which, like all acronyms could stand for anything and probably did, making it harder to assume that the domain name was acquired to target the owner of a trademark using the same letters, in this case AVK. Indeed, the evidence was that there were numerous trademarks for AVK that had been registered by other parties and nothing to infer that the Respondent must have known of the Complainant’s particular AVK trademark. As the panel pointed out, the attitude of UDRP panels is that short domain names based on “acronyms, dictionary words, or common phrases” give rise to an RLI where the registrant has not targeted the trademark owner and where it can show that its domain names are being bought and sold legitimately, which will often be so, because that activity is part of its business. The Panel also pointed out that the same approach had been taken in Dynamic Visual Technologies (Pty) Ltd v Direct Privacy, Savvy Investments, LLC Privacy ID #14448338, WIPO Case, D2018-0738, concerning the domain name <dvt.com>. The panel in that case reached a similar result, supported by observations such as that the respondent’s use of the domain name “appears to be genuinely related to the meaning of the acronym and does not appear to trade off the Complainant's claimed trademark.”
A PATTERN IS EMERGING
It can be seen, therefore, that a definite pattern is emerging from these decisions tending to show that a respondent who acts responsibly and in a legitimate manner with respect to a domain name consisting of an acronym, may well be able to show that it has an RLI in the domain name which will defeat the complainant’s claim. As with all commentary, however, this is subject to the facts of individual cases which may well vary from cases to case.
To return briefly to AVK Holding A/S v. Best WebLimited (supra), the Respondent succeeded on the ground that the domain name was an acronym. But it also succeeded on bad faith because there was no evidence that any of the criteria set out in the Policy for proving bad faith had occurred and the Respondent had not offered to sell the domain to the Complainant as had been alleged. Here, the fact that the domain name was an acronym again proved significant; it was always going to be difficult for the Complainant to prove bad faith because you could not assume the Respondent was targeting the Complainant when the acronym was far from being exclusively associated with the Complainant. The Complainant needed strong evidence to prove that the Respondent was acting in bad faith and the evidence was just not there.The final denouement was that the Panel made a finding of Reverse Domain Name Hijacking against the Complainant because it was using the UDRP as a “cheap alternative to commercial negotiation with legitimate domain name holders” and because of the unsatisfactory first Complaint.
OTHER ACRONYM CASES
There are other decisions to show that an acronym may be accepted by a panel as giving rise to a right or legitimate interest in a domain name, subject of course to the precise facts of the case. One such case is Electronic Arts Inc. v. Abstract Holdings International LTD / Sherene Blackett , FORUM Case No.: FA1111001415905, (January 4, 2012 ), where the complainant had a trademark for SSX which was registered with the USPTO on October 4, 2005 and was seeking the domain name <ssx.com> which had been bought by the Respondent on October 5, 2011.The panel made it clear that it was treating the acronym in the domain name as if it were a generic word, where, subject to any considerations to the contrary, there would be a good chance that this gave rise to a right or legitimate interest in the domain name, giving the Respondent a defence to the claim. Its words were quite unequivocal: “The domain name, <ssx.com>, is comprised of common or generic letters. Complainant clearly does not have an exclusive monopoly on the term. The number of other persons or entities holding identical if non-competing marks and the number of other users with rights in the name are clear evidence of the limited ownership claims of the Complainant. Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (“Complainant’s rights in the QWEST mark are limited to its application to the telecommunications industry,” where a variety of other businesses used the mark in unrelated fields). See also Telephone and Data Systems, Inc. v. Protected Domain Services, WIPO Case No. D2011-0435 (May 10, 2011) (“Respondent has set forth a potentially legitimate interest …, and … Complainant has been unable to prove that such interest is illegitimate. …”).
All domain name cases are decisions on their own individual facts, but the above statement from Electronic Arts Inc. v. Abstract Holdings International LTD / Sherene Blackett is a fairly forthright statement of the principle being contended for here. There are other decisions to look at. But even without them it can be seen that if the domain name is an acronym and the Respondent has behaved responsibly, it will have a good chance of defeating a claim against it for the domain name.
[1] It is essential under the UDRP, i.e., for claims for .com domain names and such like. For some country code claims, like in Australia, with.com.au, it is not necessary to show a trademark, just a registered business or company name. [2] Dubai Aerospace Enterprise (DAE) Ltd. v. Registration Private, Domains By Proxy, LLC / Deven Patel WIPO Case No. D2020-0041 [3] For practical purposes, the “.com” is ignored. [4] The Hon Neil Brown QC was a member of both panels.