Recent Case Notes & Commentary

WHAT IS TRUTH? A GENERIC WORD?

The Resource Center for Pregnancy and Personal Health v. Abigail Hutchings

FORUM Case. Claim Number: FA2002001885848, 30 March 2020.



It is often said that generic words, like dictionary words and acronyms, have a good chance of surviving a challenge to the domain name in which they are found, provided they are used as generic words and provided the respondent/ registrant has not engaged in any inappropriate conduct. They have a good chance, but do not always succeed. One point where the argument breaks down is that the word turns out not to be a generic word. But no such problem faced the Respondent in this recent case.


The Resource Center for Pregnancy and Personal Health in Greeley, Colorado had made an application for a trademark for TESTS4GREELEY.COM mark in connection with its work in pregnancy testing, education, medical testing, and counseling. But it had no actual trademark. Nor did it argue for a common law trademark. It did, however, have a website at <tests4greeley.com>.


Abigail Hutchings, registered the domain name <truth4greeley.com> and the Complainant made a claim for it. It had an uphill battle and did not have much of a case because, with no trademark, it could not show its standing to bring the claim.


In any event, <truth4greeley.com> was not confusingly similar to TESTS4GREELEY, even if the Complainant had a trademark for TESTS4GREELEY, which it did not. They were entirely different concepts.


Then, the Respondent had another success. The substance of the domain name was “truth” and the panelist had no difficulty in finding that that was a generic word. Moreover, there was no inappropriate conduct by the Respondent. She did not use the domain name as a trademark, and did not pass herself off as the Complainant or confuse anyone. She was using the domain name solely to express her views and that was clearly protected speech. Interestingly, this is also a decision that disseminating news and opinion is using the domain name for a bona fide offering of goods or services within the meaning of paragraph 4 (c) (i) of the Policy.


Finally, the Respondent also succeeded in the issue of bad faith. There was never, by that stage, a danger of it losing on that issue as, if there had been a right or legitimate interest in the domain name, which there was, it would have been very hard to show that the domain name had been registered and used in bad faith. The Complainant mounted an argument that the domain name had been registered in bad faith because it was registered for purposes of criticism, but that argument did not succeed. As the website had been devoted to “pure political speech” as explained in Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693, it could not be the basis for a finding of bad faith. We recommend reading the decision in the Sutherland Institute Case on the issues involved in similar free speech cases.