DESCRIPTIVE DOMAIN NAMES

IVAN HOFFMAN, B.A., J.D.


        Here is the situation: a trademark owner (“Claimant”) claims rights in what might otherwise be a descriptive word or mark and such rights are either via common law usage or via a registration under the laws of either the United States or another nation.  Another party (“Registrant”) has registered the word as a domain and now the parties are locked in a proceeding under the Uniform Domain Name Resolution Policy (“UDRP”).  Who wins?

        This article assumes you are familiar with some of the essential elements of this type proceeding because you have read the many other articles on my site dealing with the same under the link “Articles About Trademarks and Domain Names.”  Thus, this article deals with only a small slice of the ever-enlarging pie that has become this area of Internet and trademark law.

The Problem

        Descriptive words cannot be the subject of trademark since, by definition, they “describe” the goods or services as opposed to serve to “identify” a particular brand of goods or services.  As with other areas of the law, there are of course exceptions.

        One of the exceptions is that if a particular word or phrase has been identified in the minds of the public with a particular source, in other words has developed a “secondary meaning,” then that word or phrase may be eligible to become protected as a mark.

        The second exception is that if what might otherwise be a descriptive word or phrase is used in a manner that is not descriptive so that in the context of the particular product or service it is “fanciful.”  As but one example, the word “staples.”  Clearly descriptive of the product that holds papers together but fanciful when used to identify the office products store chain.  Some other examples are represented by the cases discussed below.

        The third exception is if, in the exercise of its discretion, the United States Patent and Trademark Office (“USPTO”) has granted a registration and no one has opposed it during the contestability period.

The Decisions

        Under the UDRP, the Complainant must prove the elements of the claim including, among other elements, that:

        1. The Claimant has rights of trademark in a word being used as a domain and that the domain is identical or confusingly similar to the mark; and
        2. The Registrant has reserved and is using the domain in “bad faith” and has no “legitimate interests” in the domain.

        Both of the elements in number 2 are related to the issues of descriptiveness.  Let me cite just 3 examples of the many decisions that discuss the issue of descriptiveness within the context of these issues.  They go in opposite directions making prediction difficult.

        In one case, Drake Bliss v. Cyberline Enterprises, WIPO Case No. D2001-0718, the Claimant owned a federally registered mark in the name “singlesite.com” and operated a site under that domain while the Registrant had the domain “singlessite.com.”  Registrant’s use of the domain was merely to serve as a page filled with links to advertiser sites.  While expressing some doubt as to the validity of the mark because it does in fact appear to be descriptive of a web site for singles, the Panel held that because of the federal registration, there was a presumption of validity (Note: this should be a reminder to register your marks so you can get such benefits!!)  While discussing other elements of bad faith and legitimate interests, the Panel actually decided the case on the basis of the issue of descriptiveness.  The Panel stated:

Complainant has selected and attempted to enforce a mark that is highly descriptive, if not generic, of its activities. In the absence of supporting evidence that Complainant’s mark has become famous [see discussion above re: secondary meaning] or that Respondent deliberately sought to trade on Complainant’s goodwill, I find Respondent’s version of the facts as to selection of the Domain Name to be more plausible. Not every case of similarity is a case of bad faith. Here, it seems more likely than not that Respondent registered the Domain Name to use <singlessite.com> in its apt dictionary sense for a site relating to singles, and not for the purpose of trading on Complainant’s mark. Accordingly, I find that Complainant has failed to meet its burden of proof on the issue of bad faith.
        In another WIPO case, Strongarm Designs, Inc. v. Arisu Tech, Case No. D2001-0776, the Complainant owned a federal mark in the word “Strongarm” for mounting brackets for computer and related equipment.  The Registrant owned the domain “strongarm.com” and was using the domain for its company site, which company site provided web hosting and related services.  The Registrant claimed that because the mark was descriptive, any use for domain purposes was a “legitimate interest.”
The Respondent submits that it has a legitimate interest or rights in the domain name, because the domain name incorporates a common term and, prior to the initiation of this dispute, Respondent has planned to use it for a web site related to healthy living.
        However, the Panel concluded that while such a principle was generally correct, it did not apply in this instance.  It stated:
Alternatively, the Respondent argues that, whatever its intention with the domain name, it has a legitimate interest in registering a descriptive name (Energy Source Inc. v. Your Energy Source, Case No. 96364 (NAF Feb. 19, 2001)). Though this principle may be correct, the application of the case cited does not assist the Respondent. In that case the domain name in issue was <yourenergysource.com>, which is clearly descriptive. Here we are faced with a domain name that is not wholly descriptive, and is likely to be the basis of a trademark claim. It is not correct in our view — and the precedent cited does not stand for the proposition — that any descriptive name carries with it a presumption of legitimate interest. [emphasis added]. There are many domain names which stem from a descriptive word, but which infringe registered trademarks and which have been held not to carry with them any legitimate interest of themselves (see eg Susan Miller v. John Zuccarini d/b/a Cupcake-Movie, WIPO Case No D2001-0064 (<astrologyzone.org>; Marine Toys for Tots Foundation v. Jim Gales, WIPO Case No D2001-0088 (<toysfortots.com>). Respondent does not claim to be in the business of domain name speculation, so it does not obtain a legitimate interest in a domain name based merely on its registration or acquisition. We conclude that the Respondent does not have any rights or legitimate interest in the domain name, based on the argument that any descriptive domain name establishes its own legitimate interest.
        What the above paragraph means is that in general, if a domain is a descriptive, i.e. generic, word then the Registrant cannot be held to be operating in “bad faith” since there is no intent to divert traffic or otherwise usurp the rights of the Claimant.  This is because the Claimant has no sufficient rights in the said descriptive i.e. generic name, to be entitled to the protection of the UDRP.  It further means, by logical extension, that the Registrant has a “legitimate interest.”

        However, in that case, the Panel found that the word was protectable under the UDRP since, even though it was “not wholly descriptive,” meaning that it had some protectable interests, especially since it was the subject of a federal registration and thereby was entitled, by law, to a presumption of protectability.  [Note yet again to register your marks].

        However as well, the case was decided in favor of the Registrant because the Panel concluded that there was no evidence presented as to “bad faith.”

        Finally, at least for this article, is the WIPO case of Home Interiors & Gifts, Inc. v. Home Interiors, Case No. D2000-0010.  In that instance the domains homeinteriors.net and homeinteriorsandgifts.com were at issue.  The Complainant had federal trademarks on the marks Home Interiors and Home Interiors and Gifts, among other marks.

        The Panel stated, as to homeinteriors:

However, "home interiors" is descriptive in nature, and while it is conceivable that an Internet user entering "www.homeinteriors.net" is searching for a web site belonging to Complainant, and may thus be confused at arriving at Respondent’s site, it is at least equally likely that a user is entering the descriptive term, and when the user arrives at the web site featuring advertisements and links to various suppliers of goods and services related to home interiors, the user feels that the web site satisfies his need for information related to the general topic.
        However, the Panel then went on to state, as to homeinteriorsandgifts:
However, just because Respondent’s conduct does not fall within the “particular” circumstances set out in paragraph 4,b, does not mean that the domain names at issue were not registered in and are not being used in bad faith. The combination of the descriptive terms “home interiors” and “gifts” into one phrase results in a name that is more distinctive than descriptive, and an Internet user entering “www.homeinteriorsandgifts.com” is more likely than not expecting to arrive at a web site hosted by Complainant, the holder of numerous registered trademarks and service marks dating back to as early at 1958.
        Both domains were ordered transferred to the Complainant.

Conclusion

        As domain name law continues to evolve, there will continue to be conflicting decisions.  This is in part because decisions under the UDRP are not binding on any other party nor on the deciding bodies.

        What does come through loud and clear is that you should register your trademarks since that gives them potentially greater rights and remedies than if you fail to register those marks.  The money so spent may turn out to be the wisest investment you can make.

        Each matter is subject to a case by case, fact by fact analysis.  And yes, this leads to a lack of predictability and thus potentially confusion.

        But that is what makes the Internet so interesting.

© 2001 Ivan Hoffman

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This article is not intended as a substitute for legal advice.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  You should consult with an attorney familiar with the issues and the laws.
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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.


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