SummerTech Inc. v. Jimmy Hill / iD Tech Camps, NAF Case FA1512001652542 (Feb 4, 2016).
The argument is often raised by respondents that the domain name they chose is a generic or descriptive word which gives them a right or legitimate interest. Sometimes it does and sometimes it does not. To succeed, the Respondent will have to show that it is using the domain name “for activity that corresponds to the plain meaning of those generic or common descriptive names and not to trade upon the mark holder’s goodwill or notoriety” ( a quote from the case under discussion here). Successful complainants can sometimes rebut the argument by showing that the respondent did not use the domain name in the generic sense but as part of a targeting exercise aimed at the trademark owner or to give the impression that the site is approved by it.
SummerTech Inc. v. Jimmy Hill / iD Tech Camps, is a case where the Respondent’s argument succeeded. The Complainant had a trademark for SUMMERTECH, and the Respondent had a domain name < summertechcamp.com>, adding the generic word “camp” and in effect constructing a generic expression: summer tech camp. It claimed it used the domain name for “activity that corresponds to the plain meaning of those generic or common descriptive names”, namely running summer tech camps, the same activity as the Complainant. The Panel ruled the evidence showed exactly that, so the Respondent had a right or legitimate interest in the domain name.
That conclusion was helped along by a serious defect in the Complainant’s evidence. It did not show how famous or well known it was and thus”… (t)he Panel is hard pressed to conclude that Respondent is using the disputed domain name to usurp or intrude upon Complainant’s relatively modest clientele. Instead, the Panel believes that Respondent is indeed using the name, descriptive of its services, to fairly expand its legitimate business.”
For other cases on this issue, see Molly McGowan v. RegTek, FA 1621400 (Nat. Arb. Forum July 21, 2015) (“…a respondent may have a right or legitimate interest to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain name was to profit from and exploit the complainant’s trademark.” )and Public Storage v. Deer Valley, D2011-1397 (WIPO Oct. 17, 2011) (“…the combination of the obvious descriptive quality of Complainant’s mark, Respondent’s actual use of the disputed domain names, and the lack of any evidence that Respondent’s aim in registering the disputed domain names at issue was to profit from or exploit Complainant’s mark, supports a finding of fair use and therefore legitimate rights.”).