The US company Catalyzer, Inc. has initiated UDRP proceedings against a Russian national who owns the domain name catalyzer.com. Catalyzer, Inc. unsurprisingly lost the case (NAF, FA2006001900506, Catalyzer, Inc v. Alexander Bitkin, July 27, 2020): the request presented two insurmountable deficiencies.
The first concerns the generic nature of the word “catalyzer.” In this case, the gaucherie was more strategic than legal. Catalyzer, Inc. operates in the business training industry. It follows that the “CATALYZER” trademark, not being descriptive, must be presumed valid. However, in 2019, adopting a generic word as a brand is somewhat perilous, unless you have the financial means to acquire the desired domain names. In this regard, although .COM remains outrageously the preference of entrepreneurs, let us remember that the new top-level domains offer abundant opportunities. In this case, since Catalyzer, Inc. was considering using the domain name catalyzer.com, it could not be unaware that it would have to budget for its acquisition. In any case, it is strictly advised, for legal and marketing reasons, to follow the two following recommendations: check the availability of the domain names whose use is envisaged before filing the trademark and pick a trademark that is not made up of generic terms. As a reminder, a commercial identifier can only be used against third parties if it is distinctive.
The second deficiency concerns the fact that the domain name was registered in 2004 while the “CATALYZER” trademark was filed by Catalyzer, Inc. in 2019, with a designation of first use in the course of the same year. In principle, the complainant cannot succeed if the respondent’s domain name predates the complainant’s trademark. There is nevertheless an exception if the complainant demonstrates that the domain name was registered fraudulently, to anticipate the filing of a trademark (WIPO Jurisprudential Overview 3.0, 3.8.2 Domain names registered in anticipation of trademark rights). However, in this case, the domain name had been registered fifteen years previously, which precluded any possibility for Catalyzer, Inc. to demonstrate: i) prior rights; ii) that the owner of the domain name had no right or legitimate interest in that domain name and iii) that he had registered it knowingly, that is to say in bad faith.
In conclusion, by initiating a UDRP procedure under such conditions, the complainant had no chance to succeed. The UDRP complaint was doomed to failure. Finally, given the request’s frivolous nature, there were grounds for declaring the complaint abusive (reverse domain name hijacking).
This case should remind entrepreneurs of the need, during the process of creating commercial identifiers (company names, trade or service marks, domain names), to seek advice from legal professionals and, in this case, from an intellectual property lawyer. In the case of Catalyzer, Inc., consultation before filing the complaint (or even before filing the trademark) would undoubtedly have steered this young company in a more appropriate direction.
