On the 5th of October 2020, Picture organic Clothing has seen its UDRP Complaint on picture.com curtly rejected by a 3-members panel of the WIPO arbitration and mediation center. The decision (WIPO, D2020-2016, Picture Organic Clothing v. Privacydotlink Customer 4032039 / James Booth, Booth.com, Ltd., October 5, 2020) also qualified the Complaint as « Reverse Domain Name Hijacking » — a label used for abusive, meritless UDRP complaints — by a two to one vote.
This case is a good opportunity to remind the hurdles faced by owners of trademarks composed of generic, dictionary terms in UDRP proceedings.
As a trademark, « Picture » can be distinctive with help of figurative elements or considering the goods and services covered. However, a domain name such as <picture.com> is composed only of a verbal sign and will, at first sight, refer to the corresponding dictionary word.
During the analysis of the registration and use in bad faith condition (UDRP, paragraph 4(a)iii) ), the Panel reminds that the Complaint is subject to a heavier burden of proof when the disputed domain name consists of a generic, dictionary word. In the present case, proving the bad faith of the domain name registrant in the acquisition of <picture.com>, with regards to the trademark rights on « Picture », seemed particularly difficult.
It is useful to remind that it is well-established that the activity consisting of acquiring and domain names identical to dictionary words in order to make a profit is not, in itself, reprehensible under the UDRP (see WIPO, D2000-0016, Allocation Network GmbH v. Steve Gregory, March 24, 2000). Without proof suggesting the bad faith of the Respondent towards the concerned Trademark Rights in a tangible way, a UDRP complaint on a domain name consisting of a dictionary word such as « picture » appeared doomed to failure.
The IP Twins team, made of IP Lawyers, is at your disposal to assist you in defending your Trademark rights, notably by preparing and filing UDRP complaints or equivalents.
