It is often said- because it is often true- that if someone has registered a domain name that incorporates the complainant’s trademark, then the complainant is well on the way to showing that the respondent has no right or legitimate interest in the domain name. After all, registering a domain name that includes someone else’s trademark looks as if the registrant was copying the trademark or preparing the ground to confuse or mislead the market. But is it always true?
It is not true that in all cases where the domain name includes the complainant’s trademark, the respondent had no right to register the domain name. In the recent case, Parnassus Investments v. ZULFIQAR ALI, FA1707001739234 (24 August2017) the argument was made in all its simplicity and was rejected by a unanimous three person panel[1].
The Complainant in the Parnassus Case argued that it had a trademark for PARNASSUS, which it did, broadly covering investment services; that the Respondent’s domain name, <parnassusgroupllc.com> included the PARNASSUS mark, which it did and that, therefore, as night follows day, the Respondent had no right to register the domain name.
The fallacy in this argument was twofold. First, the Respondent was not using the word Parnassus in connection with the goods and services for which it was registered as a trademark by the Complainant. The Respondent was using it to solicit partners to buy its online trading platform, not for investment management. So there was no infringement of the Complainant’s trademark.
Secondly, and probably more importantly, the word “Parnassus” is generic, as both sides asserted, as it is a mythological Greek mountain, the home of the Delphic oracle. If the Respondent was using the word in its generic sense and with no targeting of the Complainant, it had as much right as anyone else to use the word “parnassus” in a domain name. It passed those tests, as it was invoking Parnassus in its mythological sense and was working in a clearly different field from that of the Complainant.
Being at large to use “parnassus” for a use outside the terms of the Complainant’s trademark, especially as it is a generic word which anyone case use in a domain name, therefore gave the Respondent a strong basis for its right or legitimate interest in the domain name, which the Panel found, leading to the Complainant’s loss.
[1] The Hon Neil Brown QC was a member and Chair of the Panel