question Thoughts on TM issues for partial matches

[MadAboutDomains]

Hi All,

I consider myself reasonably clued up on domains and trademarks, I own some of each. However there is a bit of a grey area that I'd like explore to get your opinions about, so as not to lose the rights to my domains.

If I'm trying to sell a generic domain, and the generic term makes up only part of a registered trademark, is there potential for TM issues if I offer a domain for sale to an existing trademark holder if the only the generic bit matches their TM?

Example:
Assume that I own the domain takeout.biz...

The term 'takeout'. It is a widely used industry term for food that can be taken away. The trademark 'takeout' alone cannot be registered for 'Take out food/beer/wine', it would simply be too descriptive of the product/service that is being provided and it lacks distinctive character alone and therefore cannot be registered.

People have tried to register this mark and failed for this reason see this, here's a quote:

REFUSAL TO REGISTER – DESCRIPTIVE MARK

Registration is refused because the applied-for mark merely describes a feature or characteristic of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.

However, it's perfectly legitimate for someone to register a mark that contains 'takeout' that makes it distinctive, for example:

Bob's takeout
Takeout monster
iTakeout

If I were to approach Bob's Takeout Co, the company that owns the rights to the trademark "Bob's takeout" for his takeout food business and offer the domain for purchase, do I open myself up to the reasonable likelihood that I'll lose my domain if Bob's Takeout Co were to file UDRP proceedings against me as a result. Would they find that the name is identical or confusingly similar because the generic part of the name partially matches the trademark?

I've looked it objectively based on the pros and cons by using the criteria that is used to determine the outcome of a UDRP decision (see the rules here), which are as follows:

• (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (see this):
  It's not identical (pro), but it is contained within the existing trademark (con)
  It's a dictionary term (pro) - see http://www.dictionary.com/browse/takeout?s=t
  
• (ii) you have no rights or legitimate interests in respect of the domain name; and
  I haven't yet used the domain for business or other legitimate purposes other than to sell it once acquired (con)
  
• (iii) your domain name has been registered and is being used in bad faith.
  I've offered the domain to a potential trademark holder (con)
  I've bought the domain and intended to sell it for a profit (con)

It looks like a bad picture to me, but as it states in the rules: all of the above assertions (1, 2, AND 3) have to be correct in order for them to order for the UDRP claim to be successful, so if the first point isn't proven to be correct, the entire thing falls apart.

If a generic term in the domain is subject to being classed as "identical or confusingly similar" to a trademark that contains the term, then I'd risk having to say "bye bye!" to my domains if I offer it to anyone.

Whilst I've used 'takeout' for this example, it could apply to most generic terms. Imagine 'hotel.net' for example, there are plenty of people that have trademarks that end in 'Hotel(s)', does that mean that all possible Hoteliers are off the table for outbound sales as a domainer?

Interested to know if you have any knowledge in this area and to know your thoughts...

 

[Ategy]

Unfortunately while it should be simple and clear, each domain is unique .. just as each trademark is unique (well .. kinda). More unfortunately .. each UDRP panellist is unique as well so is their interpretation of the rules/laws.

That being said .. in the cases like "Take Out", I'd say that if the term itself was too generic or too used in the industry to be trademarked, then I'd think you SHOULD be safe. But again .. there have been some very questionable UDRP decisions in the past, so don't take anything for granted.

Most importantly .. never consider trademark advice in a forum as being definite (including my own). If you really want to be sure .. seek professional help .. although even then I'd be careful!

 

[BGH150]

Here’s my opinion (please don’t take as legal advice.)

If you type in takeout (your example ) into the TESS database pretty much every registered TM will say



“NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "TAKEOUT" APART FROM THE MARK AS SHOWN”

Under disclaimer.

So long as the word you are using in your domain also carries that same disclaimer, which is standard for generic terms from hotel to coffee, I think you would be okay. If some trademarks include the disclaimer and others don’t, I personally wouldn’t reach out to the particular businesses without the disclaimer to be on the safe side.

Also never a bad idea to search for copyright cases pertaining to that specific word and see if they exist.

 

[bmugford]

"Takeout" is a totally generic term. If a company is called "Bob's Takeout" they have no legal rights to the generic word itself.

There was a finding of RDNH before for an absurd UDRP filing on takeout.com -
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1668

Brad

 

[MadAboutDomains]

Thanks for the responses. I'm not sure that there is any way to defend a domain without using it legitimately first. Some of the UDRP texts say that buying and selling domains in of itself isn't bad, but the UDRP rules appear to indicate otherwise. Use of a domain appears to be the cornerstone for legitimate interest in a domain.

The Takeout.com case is interesting, it was a blatant attempt at reverse domain name hijacking by someone without established trademark rights and also the negotiation communications were initiated by the complainant to the domain owner rather than the other way around.

It still begs the question whether if I approach a trademark holder that contains the generic term I wonder what the outcome would be?

I'm trying to dig out some UDRP cases for generic names where the trademark holder had been offered a generic name. I'll let you know if I can find any. If you can find any too that would be very interesting to me.

The point about the disclaimer I feel would be very useful in a dispute situation. It looks like a lot of trademarks don't have any disclaimers... I wonder whether they are implied for most generic terms and would otherwise be proven in the court room.

 

[Bob Hawkes]

Thank you for laying out the case so clearly @MadAboutDomains !

I general I would see the name as fine to hold. I mean a trademark (unless very specific) does not, as noted, include all words that also include that.

However, if it was mine, I would not contact a company a name that includes it, since it muddies the water and is a huge step helping them, if they want, to claim you bought the domain name and want to sell it to help profit from their trademark. I mean I think strictly speaking the full UDRP case would not be met even if they were contacted, but some of the case decisions worry me.

As others have said this is not legal advice (I did not finish a legal MOOC 4 times - does that count as expertise? )

 

[jberryhill]

Some of the UDRP texts say that buying and selling domains in of itself isn't bad, but the UDRP rules appear to indicate otherwise.

The relevant part of the UDRP is this:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;

Now, look at what I've highlighted here:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;

In other words, what they are after are circumstances where it appears that the point of registering the domain name is for the purpose of selling it to the trademark owner.

That purpose can be inferred where the trademark is inherently distinctive (e.g. MICROSOFT, COCA-COLA, LOUISVUITTON) because there is no other entity that would have a legitimate reason to want to buy the domain name.

But where you have a situation in which the domain name is something like "shoes.com" then it is most likely that you are selling it because it is the generic term for shoes. Sure, could there be someone who has a trademark in "SHOES" for some product/service other than shoes? Yes, there could be. But absent some sort of evidence that you were specifically targeting that trademark owner, then a general offer of sale of the domain name to anyone, is not the same thing as circumstances indicating that the name was registered primarily for the purpose of selling it to that trademark owner.

 

[jberryhill]

You might find this UDRP decision helpful. The domain name was "arcade.com". Now, "arcade" is a generic term for arcades. It is also a trademark owned by the complainant for specific goods/services:

http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-1116.html

The fundamental obstacle for the Complainant is that the term “arcade” has a broad variety of meanings in English, ranging from an architectural term, to a term used in connection with amusement centers and video games. The Panel accepts the Complainant’s evidence that, in a specific area, music, “arcade” is well-known and associated with the Complainant’s group and trademark. However, the basic issue in most cases under the Policy is whether the respondent has sought to take advantage of the complainant’s reputation as embodied in the trademark for the respondent’s commercial benefit.

In this case, the Panel finds that the Complainant has been unable to establish that this is the case. The registration of the domain name appears to have been aimed at exploiting the ability of the word itself to attract Internet users, and not aimed at taking advantage of the Complainant’s reputation or trademark. The Panel accepts that the name “arcade” probably does attract Internet users interested in a broad range of products that have nothing to do with the Complainant or the Complainant’s business. In fact, the Respondent may well have an interest in using the domain name with respect to various areas other than music, such as computer games.

The Complainant’s trademark has been registered for categories, such as computer devices, that are beyond the music category. However, the fact that the Respondent is seeking to appeal to Internet users interested in those products does not suffice to show bad faith under the Policy. The essence of the Policy is to protect trademark holders from use of their trademark by third parties. The existence of a trademark is one of the necessary conditions to meet the requirements of the Policy. However, other conditions are also applicable. The Policy also requires bad faith on the part of the respondent. To establish bad faith, there must be some attempt by the respondent to profit from the trademark owner’s use of its trademark.

 

[jberryhill]

@MadAboutDomains - if you click on the link in my signature, you will find many cases of the type you are looking for.

Circus.com is a classic example of the sort of thing you are driving at:

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-1208

Relevantly, paragraph 4(b)(i) provides that there is evidence of bad faith where there are circumstances indicating that a respondent registered a domain name primarily for the purpose of selling it to the complainant who is the owner of a trademark, for valuable consideration in excess of the respondent's out-of-pocket costs directly related to the domain name. A mere willingness to sell a domain name, as alleged by the Complainant, does not necessarily satisfy this test.

In the circumstances of this case, there is no evidence that the Respondent had the Complainant in mind when it registered the disputed domain name – let alone that the Complainant was the "primary" focus of the registration. The cumulative evidence from the Complainant and the Respondent does not clearly show that the sale of the disputed domain name to the Complainant was a primary motive of the Respondent when it registered the disputed domain name in 2010.

Even if the Complainant had shown some willingness to sell the disputed domain name to the Complainant, this by itself would not be evidence of bad faith. As relevantly noted by the Panel in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, "where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name's value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith."

 

[MadAboutDomains]

@jberryhill Thank you for taking the time to respond to this.

Based on what you have said and also after examining the UDRP decision texts for Circus.com and Arcade.com (and mobicom.com which is cited), it appears to me that registering dictionary words in of itself seems like it could be considered enough to establish ligitimate interest in a domain. With this in mind, I assume that this alone is enough to make a UDRP case fall apart.

However, in these cases the trademark matches the registered rights exactly and it's unclear as to whether the domain owner explicitly contacted the owner in order to sell the name.

Hypothetocally, if the owner of Circus.com had actively offered their domain for sale to the holder of the trademark "Bob's Circus" a partial match, rather than an exact match, would that case have found "identical or confusingly similar"?

Also, for the quote:
"where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name's value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith.".
What would be the exception to this rule, if it is not simply that they tried to sell the name to the trademark holder? I wonder under what circumstances would they find bad faith for a generic domain?

Thanks again!

 

[jberryhill]

I wonder under what circumstances would they find bad faith for a generic domain?

This is not exactly rocket science. The basic point is "was the registration undertaken for the purpose of shaking down a trademark owner, specifically, or not?"

Lots of dictionary words are trademarks.

Let's take one - TIDE - it's the #1 selling brand of detergent in the United States. Immensely valuable trademark.

If someone had TIDE.tld, what kinds of things would make you believe that the registrant of that domain name was, or was not, premising the registration and sale offer on the value of the detergent brand?

Let's take some hypothetical facts, independent of each other, and you say, for each one, whether it "helps" or "hurts" the argument that the domain registrant was acting in bad faith specifically motivated by the detergent brand:

1. The registrant keeps sending emails to people at Procter & Gamble, telling them that they should pay $10M for the domain name or he'll point it at porn.

2. The tide.tld webpage resolves to a pay-per-click page where most of the links are about laundry detergents, washing machines, and other laundry related items.

3. The tide.tld webpage resolves to a pay-per-click page where the most of the links are about fishing, surfing, and boating accessories.

4. The tide.tld webpage resolves to a "buy this domain page" saying, "this is a really valuable brand".

5. The tide.tld webpage resolves to a "buy this domain page" saying, "this is a great domain name for anyone involved in surfing, fishing, boating, or providing information about tides and weather".

6. The domain name is registered to a fake name and address.

7. The domain name is used for spam emails selling detergent.

8. The registrant sends hundreds of emails to operators of marinas, fishing charter companies, and surfing rental companies telling them it would be a great domain name for their business.

So, there you are. A "dictionary word domain name" and various sets of facts. For each one, just say whether it would be more or less likely to lead someone to believe they registered the name in bad faith relative to the "TIDE" trademark for detergent.

What would be the exception to this rule

It's not about whether there is a "rule". It is about whether the facts of the situation - which are ALWAYS more than "here's a trademark and here's a domain name" - suggest that the registrant was acting out of a motivation arising from the trademark, or from a motivation arising from something else.

That's not unusual. It's like asking whether or not it is legal to kill someone. Well, there are all sorts of situations in which it may be legal or illegal to kill someone. You have to have more facts that "Bob killed Joe" in order to figure out whether "Bob murdered Joe." Were Bob and Joe soldiers in two different armies at war? Was Joe trying to kill Bob? Did Joe jump in front of Bob's car on a highway at night?

 

[jberryhill]

Hypothetocally, if the owner of Circus.com had actively offered their domain for sale to the holder of the trademark "Bob's Circus" a partial match, rather than an exact match, would that case have found "identical or confusingly similar"?

If the "matching" part is a generic word, then the complainant would have a hard time, absent other facts.

One of the more amusing cases I've defended involved the mark "My Friend's Hot Mom" versus the domain name <hotmomnextdoor.com>. The point of similarity between the mark and the domain name were the words "hot mom".

http://www.adrforum.com/domaindecisions/479579.htm

The Panel believes Respondent’s domain name is not confusingly similar to Complainant’s mark as only the words “hot mom” are the same. The identical part, “hotmom,” is not likely to cause confusion, those terms being common in the adult entertainment industry (<hotmom.com>, <hotmom.net>, <hornyhotmom.com>, <onehotmom.com>, <hotmoms.com>, etc.) as mentioned by Respondent.