How generic word marks can prevail in cybersquatting cases

May 31, 2022, 11:34 AM

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This article was first published in the World Trademark Review magazine on 26 May 2022.

When a complainant initiates a UDRP procedure against a domain name that contains a generic or dictionary term, it is easy to assume that the complaint was brought in bad faith.

However, several UDRP cases involving a generic word have resulted in the brand owner successfully recovering the domain name at issue. Those decisions were not incorrect. On the contrary, if there is strong evidence that the registrant is cybersquatting on a brand, there should be no issue for complainants attempting to recover domain names.

The Polkadot case

In a case dated 3 February 2022, Web 3.0 Technologies Foundation filed a domain dispute against Su Tingtingfor the domain name ‘polkadot.com’ (WIPO Case D2021-3593).

The domain name contains only the generic term ‘polka dot’. Polka dots are a pattern consisting of an array of large, filled circles of the same size. The complainant was an open source blockchain platform and cryptocurrency released in 2020. It owns, among others, trademark rights in the POLKADOT brand in the European Union (registered on 25 June 2019), the United Kingdom (registered on 26 March 2020) and the United States (registered on 4 May 2021). With registered trademarks in multiple jurisdictions, Web 3.0 had the legal standing to bring a UDRP complaint.

The domain name ‘polkadot.com’ was first registered in 1995. However, on 28 March 2021, it was sold to a new entity. Following this change of ownership, the original website resolved to a site headed ‘PolkaHub’ with the strapline “Unify your Polkadot experience” that used a similar colour scheme and font as the complainant’s. The new registrant was willing to transfer the domain name to the complainant for $80 million.

Following these changed circumstances, Web 3.0 filed a UDRP complaint.

With trademarks for POLKADOT registered in different countries, the complainant had no issue satisfying the first element of the policy (showing that the domain name is identical to the complainant’s mark). Regarding the second element, a panel must look at the content of the site at the time of filing. It is common practice for some respondents to change content after receiving notification of a complaint, which was the case here.

The panel was quick to address that while

“Polkadot” is an ordinary English word […] the website to which the disputed domain name resolves is not directed to the dictionary meaning of “polkadot” or the study or some other activity related to “polkadot”.

Therefore, the panel found that the complainant had satisfied the second UDRP element, proving that the respondent had no rights or legitimate interest.

Finally, it was agreed that there was enough evidence to prove that the registrant registered and used the domain name in bad faith at the time that it acquired ‘polkadot.com’.

Although it was not possible to determine the exact date on which the registrant acquired the domain in 2021, the panel concluded that the registrant was well aware of the complainant’s mark. Moreover, the respondent was found to hold numerous other domain names infringing on third-party trademarks (eg, AMAZON, EBAY, VISA). With regard to use, the panel agreed that the registrant misled Internet users and tried to appear as if it was the official POLKADOT platform or closely associated with it.

For these reasons, it was clear that the registrant registered and used the domain name in bad faith and, therefore, the complainant successfully recovered ‘polkadot.com’.

Comment

This case is not the only UDRP precedent in which brand owners have recovered domain names containing generic terms or phrases: ‘footballmedia.com’ (WIPO Case D2020-2402), ‘ovation.com’ (NAF Claim 1517659) and ‘yourareok.com’ (NAF Claim 1773041) were all successfully recovered by brand owners.

In one recent case (11 May 2022), the brand owner of CARSFORSALE.COM successfully recovered the domain name ‘cars4sale.com’ from the registrant, after the latter used it to advertise identical services (in the same region) as the complainant prior to receiving a cease and desist letter, and offered the domain name for sale for $100,000 (WIPO Case D2022-1124).

As highlighted above, with the right evidence – such as proof that the registrant targeted a specific brand or evidence of an abusive pattern of conduct – brand owners can prove that registrants are taking advantage of the brand’s reputation. This results in success under the UDRP.

Usually, the burden of proof for complainants with weaker trademarks is higher. A complainant must prove that its mark has acquired secondary meaning and that people associate the terms with their products or services. However, if the targeting of the brand is obvious, complainants should be able to satisfy this with fewer hurdles.

Many well-known companies have chosen brands that contain generic word(s). In practice, it is common to come across generic domain names that could also be someone’s mark. However, to ensure that the domain name cannot be taken away, registrants must use it for its generic meaning.

Acquiring and later reselling dictionary terms in domain names is a business for many domainers who are well aware that those types of domain names could also be of interest to some companies using the term as part of their branding. There is nothing wrong with this practice. However, if a registrant is using a domain name in a way that directly relates to a trademark (like the POLKADOT case), then brand owners are justified in using the UDRP procedure, which was created to deal with clear-cut cases of cybersquatting.

So, if registrants do not want to get into any trouble, they should refrain from using a generic domain name in a way that directly relates to a trademark.