Recent Case Notes & Commentary

GENERIC WORDS - RIGHTS AND LEGITIMATE INTERESTS - EVIDENCE CAN HELP

Naturalia France v. Whois privacy services provided by DomainProtect LLC/IT-Company Ltd, WIPO, D2018-0872.

6 August 2018


Deciding if there is a right or legitimate interest in a domain name can be a tricky business. Sometimes a person who has a domain name will say in its defence that it is a generic, common or dictionary word which gives rise to such a right, provided the registrant is using the word in its generic sense and not just to target a trademark owner who has a similar trademark. But some people who say their domain name is just a common or ordinary word assume this is so without it being very convincing. If the word is odd or unusual, the Panel may want some evidence on this. After all, why should a Panel just assume the word is generic because the Respondent (the registrant of the domain name) says so. An illustration of this came up in this case recently where the Panel decided that the word was not a common or generic word, even if it looked a bit like one.


The domain name at issue was <naturalia.com> and the Respondent claimed that “naturalia” was a generic or common word. But, said the Panel, there was no evidence that it was or was not. Just because “nature” and “natural” were clearly common words did not mean that “naturalia” was one.


Also, the Respondent had claimed that “naturalia” was included in a number of trademarks and trade names and this made the word common or generic. But the Panel rejected that argument because, if businesses were using a word for business, that suggested they wanted it to distinguish their businesses from others, not to give them a common appearance.


As with other issues, try to adduce evidence on this issue if it is a borderline case.


Note also that sometimes an argument can be made out that although a word is not generic in the English language, it may be so in a foreign language. After all, the internet is international.

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