Recent Case Notes & Commentary

Can Acronyms Give Rise to a Right or Legitimate Interest?

IDN, Inc. v. Name Administration Inc. (BVI) Claim Number: FA1209001461862


In this case, the domain name was lsda.com and the Complainant’s argument was that it was identical to its trademarks and was being held passively. One of the trademarks were LSDA and the others were LOCKSMITH DEALERS OF AMERICA , LSDA LOCKSMITH DEALERS OF AMERICA and LOCKSMITH DISTRIBUTORS OF AMERICA LSDA , which give an idea of the Complainant’s concern, because it thought the domain name was being aligned with its trademarks. But the domain name had not been used to advertise locks or related products.


The domain name was held to be identical to the trademark LSDA. But the real argument revolved around whether there was a right or legitimate interest in the domain name. So the question was:


Can acronyms give rise to a right or legitimate interest?

The panel’s decision was yes, they can. In the present case the acronym was never used by the Respondent to advertise locks- and, indeed, the Complainant had not alleged that it had been. Thus:

“The general use of a domain name comprising four letters which could stand for anything without targeting the Complainant’s business constitutes, in the opinion of the Panel sufficient grounding for the Respondent to establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See BioDelivery Sciences International, Inc v HLK Enterprises, Inc. c/o Domain Admin, FA 0804002275189 (Nat. Arb. Forum May. 19, 2008) (finding that “based on the fact that the disputed domain name and Complainant’s mark contain only four letters that could stand for many things unrelated to Complainant’s business, the Panel finds that Respondent’s use of the disputed domain name as a portal website is a showing of rights or legitimate interests under Policy ¶ 4(a)(ii).”); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).”


Thus “common and generic/descriptive”acronyms or “acronymic domain names” may give rise to a right or legitimate interest in a domain name if the acronym is not a famous one. As the panel said:

“…absent exclusive and famous association, the general registration and use of non-distinctive “acronymic” domain names is not illegitimate merely because one or another party may have rights in relation to particular goods and services, absent actual use of the domain name to engage in infringing conduct.”


So this was a case where the Respondent succeeded because:

  1. Although the domain name letters were the same as the Complainant’s trademark.

  2. The trademark had not been used to advertise the goods with respect to which the Trademark had been registered.

  3. There was no exclusive or famous association between the letters of the acronym and the Complainant’s trademark.

A good test of the acronyms to which this decision would apply is found in the panel’s words that it was a domain name that was a “common and generic/descriptive of many companies and products, unrelated with the Complainant’s products.”


There was no evidence of any bad faith. Accordingly, the Respondent won and the complaint was dismissed


Laches

The remaining question was the application, if any, of laches (or delay).The panel did not resolve the issue and it is difficult to see how any individual panel could do this, as opinions are divided on the subject. However, the panel indicated that there was developing thinking on the subject. There is another note on this website concerning the issue of laches and other comments on the website.

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