Recent Case Notes & Commentary

GENERIC WORDS IN DOMAIN NAMES - FIRST IN A SERIES

We may be wrong, but it seems to us that there have been quite a few cases recently involving domain names based on generic words or expressions. They have raised some important issues, particularly whether generic words may give a Respondent (the registrant) a right or legitimate interest in the domain name, which would defeat the claim. These cases also raise issues like: what is the significance of the Complainant trying, but failing, to buy the domain name and the Respondent offering to sell it. Also, what if the Complainant’s trademark came into existence AFTER, rather than BEFORE the domain name was registered. There are often other issues as well.


We thought it would be useful to look at the recent cases and then, when we have done that, bring them altogether and see if we can reach any conclusions. Today, we introduce the first case. But remember two things as we go along because they are important.

  1. Decisions are not precedents and they are only guides to how panels have reacted to various fact situations.

  2. All cases are decided on their facts, so the most important thing is the EVIDENCE.

  3. We will be using the word “generic” to refer to these words and expressions, but the same points arise if we call them generic, common, or dictionary words. Sometimes the same principles will apply if the domain name consists of a place or a given or family name.


Now we start with our first in this series of decisions:

Karma International, LLC v. David Malaxos: FORUM, FA1812001822198

15 February 2019

The Complainant had a trademark for KARMA which it used for a purpose that all millennials would love having parties and going to celebrity events. Obviously, they had not heard of Groucho Marx’s observation that he would not want to be a member of any club that would have him as a member. But apparently that did not matter and the Complainant seems to have been very successful with its parties and trips here and there.


The Respondent registered the domain name < karma.com> which you would have thought was as generic as a word could be, because it is referring to a concept or idea.


But the Complainant fancied the domain name and brought this claim for it under the UDRP. As you know, the first thing the Complainant had to show was that it had a trademark.


THE TRADEMARK

The best the Complainant could show was an application for a trademark and that, of course, does not count as a trademark, so it had to try to prove that it had an unregistered or common law trademark for KARMA.


Complainant tried to do this by claiming that “consumers associate (the word KARMA) with Complainant’s entertainment services, namely, conducting parties…”. That sounded a bit unlikely for, as the three person panel noted, Karma is a dictionary word and could have meant virtually anything, not only a reference to the Complainant. So why would consumers associate the word “karma” with the Complainant rather than with an Indian swami? Or a hippie colony? The Complainant argued as if the whole world revolved around it, but left out that element that we are always warning parties to include evidence. There was no evidence that the Complainant’s assertion that the public saw “karma” as referring to the Complainant was correct.


The lynchpin of that analysis was that the word “karma” was “an ordinary dictionary word.” That made it all the harder to prove that the public saw it as the Complainant’s trademark or, if you like, the Complainant’s word. It could have been the trademark of others parties or no-one’s trademark.


So the Complainant could not prove its common law trademark or any other sort of trademark and could not therefore show that the domain name was identical or confusingly similar to a trademark in which the Complainant had rights.


That was virtually the end of the case, but the panel went on to look at the other two elements. Why? Because the Respondent had asked the panel for a finding of Reverse Domain Name Hijacking. The panel felt that it could not do this unless it had looked at all three elements to see what this showed about the Complainant’s intentions in bringing the case.


RIGHTS OR LEGITIMATE INTERESTS

The Complainant made out a prima facie case that the Respondent did not have a right or legitimate interest (RLI) in the domain name. Could the Respondent rebut that prima facie case? That was where the real fight started.


The Complainant tried to show the Respondent did NOT have an RLI because it had tried to sell the domain name to the Complainant. But, as the Complainant pointed out, it could not have formed that intention because the Complainant did not even exist at the time the domain name was registered.


Then the Complainant argued that the Respondent had never even used the domain name. But, said the panel, it was under no obligation to do so. Indeed,

“Nowhere in the Policy is there a requirement that a respondent is under a positive obligation to use (or surrender an unused) domain name. Failure to use a domain name is not per se evidence that its owner has no right or legitimate interest in the name.”


Then the main point, we think. The panel said:

“In this case the domain name is a dictionary word… Respondent was free to place whatever market value it chose on the name… (and)… Respondent was under no positive obligation to use the name or to sell it at any particular price.”


Thus, the Respondent DID have an RLI in the domain name, because it was a dictionary word and the Respondent could do what it liked with the domain name…including nothing, if it wished.


The Complainant had therefore lost two out of the three elements. Things were not looking so good. But they were worse when the next issue was considered, bad faith.


BAD FAITH REGISTRATION AND USE

The Complainant argued that there was bad faith registration because of how the Respondent might use the domain name in the future. But as the Panel said, in effect although not in these words, it is not a clairvoyant, so how could it know how the domain name would be used in the future.


Also “… (even if they existed) Respondent’s speculative intentions are not a source of bad faith in this case.”


It MIGHT have been different if the Respondent had acquired the domain name from another party AFTER the Complainant had acquired its trademark rights; i.e. it might be possible then to prove bad faith registration. But that was not this case because in this case the Respondent had been the owner all along.


The Complainant had a last try by arguing that the Respondent was “wilfully blind to any current or future trademark rights.” The panel dismissed this argument very quickly, saying that it was “fanciful.”


Any analogy with Telstra Corporation Limited v. Nuclear Mushrooms was also dismissed because “Telstra” was an invented word (whereas “karma” is a generic word).


REVERSE DOMAIN NAME HIJACKING

The panel also found Reverse Domain Name Hijacking against the Complainant because, “…on any construction of the facts, … Complainant knew or should have known that it was unable to prove its Complaint. The explicit claims to bad faith registration and use made in the Complaint are largely specious and the accusations levelled at Respondent are groundless and malicious.”


A good case, therefore that shows the value and strength for a Respondent of having a generic word as the domain name, with the additional factors in this case of the Complainant not being able to prove a trademark and not coming into existence until after the domain name was registered.