Whether or not a Panel will allow a generic word to give rise to a right or legitimate interest in a domain name will, like most other things, depend on the evidence. Often, the Panel has to read between the lines to find what the registrant of the domain name really intended by the use of the domain name, particularly when it was used for pay-per-click links -was it a genuine use of the word as a generic word or was it just a pretence to trade on the Complainant’s trademark? There has been a good illustration of how a Panel goes about this job in
ClearBank Limited v. Privacydotlink Customer 2450865/Kwangpyo Kim Mediabloue Inc
WIPO Case 2018-2481
15 January 2019
In this case the generic words that went to make up the domain name were two words “clear” and “bank” and the combined domain name was clearly generic : <clearbank.com>.
The Complainant who wanted the domain name was a London bank that also had trademarks for CLEARBANK.
The domain name expired, was put up for auction and in August 2014 when it was bought by the Respondent who was a professional domainer. At that time, neither the Respondent not its trademarks existed.
The case focussed on the use the Respondent had been making of the domain name and it emerged that it had been used for subjects like “bank accounts” and “loans”, so they were “genuinely related to the dictionary meaning” of the words in the domain name. So it was not trying to trade off the complainant’s trademark or pretending it was the complainant, but was simply using the domain name for what the words meant. This was legitimate and the registrant therefore had a win on the second element- rights and legitimate interests.
It also won on bad faith, as when it registered the domain name, the complainant did not exist and its trademarks for CLEARBANK had not yet been registered.
You might think the Complainant was a candidate for a finding of Reverse Domain Name Hijacking being made against it. But the Panel put everything in balance and decided not to make that finding. The fact that the complainant lost was not enough and, probably more important, was the finding that the complainant could well have believed that on a fair reading of the facts it could prove its claim, or at least you could not say it knew or should have known it would lose.
Read the decision at https://www.wipo.int/amc/en/domains/search/case.jsp?case_id=42767