Recent Case Notes & Commentary

ACRONYMS - COMMON THREE LETTER ACRONYMS AS DOMAIN NAMES

With the increasing tendency to use letters and short acronyms – like ABC- as business names, it is important to note that they often mean different things to different people. This makes it hard for trademark owners to claim that domain names consisting of the same letters as their trademark must automatically be invalid and should be handed over to the trademark owner. It does not work that way.


Obviously, all cases must be judged on their own facts. But it is also true that respondents who have registered domain names consisting of acronyms, abbreviations or generic or dictionary words often win when trademark owners claim the domain name.


A recent win by a domain name owner on an acronym domain name is PCO AG v Register4Less Privacy Advocate, 3501256 Canada, Inc. WIPO Case No. D2017-1778 (3 October 2017) where the domain name was <pco.com>. The Complainant's trademark was PC-EDGE. So the domain name was confusingly similar to the trademark.


But the trademark owner failed and the domain name owner won, because the former was not able to prove that the domain name had been registered and used in bad faith. There was no evidence that the respondent would have known the complainant or had it mind when registering the domain name. Nor was there evidence that the trademark owner was widely known as it claimed. Nor was there evidence that the Respondent was using the domain name for a website. Nor was this a case of passive holding, as the Complainant was far from being famous. And the panelist obviously thought it was significant that:

".... the disputed domain name is common three-letter acronym and there is no evidence whatever to link the Respondent's selection of the disputed domain name with the Complainant"


There was just nothing to show bad faith.


Worse still, from the trademark owner's perspective, the case was undefended ! So it is important not to assume that just because the Respondent ignores the Complainant the Complainant will always win. It will not always win, as the Complainant still has to prove its case.


This decision, like many others, shows that a Complainant/trademark owner can still lose if it does not produce the right evidence - even if the case is undefended.


Take home message: always put the evidence in - even if you think the case will be undefended.


OTHER CASES ON ACRONYMS

See our note on Acronyms in Domain Names: an Implausible Response,

Domain Times, June 1, 2016.


Archer-Daniels-Midland Company v. Shawn Downey, WIPO Case: D2015-0415, May 04, 2015.


Can Acronyms Give Rise to a Right or Legitimate Interest?

Domain Times, April 3, 2013.


IDN, Inc. v. Name Administration Inc. (BVI) FORUM (FA1209001461862)