HealthyPets, a U.S. company specializing in animal nutritional products, owns and operates a brand called JOINT MAX for its flagship products. HealthyPets had registered <jointmax.com> as early as 2001. Two decades later, this domain name had become a significant asset of the company. It was printed on every “Joint Max” product, and it redirected consumers to the company’s merchant site. In short, the domain name was at the heart of the commercial strategy of HealthyPets. It considerably strengthened the value of the JOINT MAX brand.
However, HealthyPets “inadvertently” failed to renew the domain name. On September 15, 2020, a domain investor acquired it (on investing in domain names, v. iptwins.com, 2021-12-28). HealthyPets realized that it had lost possession and control of what was then one of its primary domain names only on January 29, 2021 (i.e., several months after the expiry of the registration period: see below).
To date, the domain name provides access to a page of sponsored links. It is offered for sale as a “premium domain name”: i) first, the composition of the domain name consists of the juxtaposition of two generic words, two keywords: ii) the past use of the domain name, quantitatively and qualitatively, can ensure enviable SEO and traffic quality.
1. The arguments of the parties
With a trademark registered in the United States in 2003 and continuous commercial exploitation for twenty years, the complainant could reasonably believe in its chances of success. HealthyPets insisted on the validity of its JOINT MAX trademark, rightly pleading with the principle of the presumption of validity of the registered trademark.
Firstly, the respondent argued that combining the words “joint” and “max” gave the domain name an intrinsic value independently of the brand. Secondly, the respondent is in South Korea, and the trademark is registered only in the United States. Based o these circumstances, the respondent assured that he was not aware of the trademark. Thirdly, and more convincingly, he revealed that he owned numerous domain names containing the word “max”, including <keymax.com>, <gamemax.com>, <megamax.com>, <climbmax.com>, < seniormax.com>, <drivemax.com>, <studiomax.com> or <grassmax.com>.
2. Lack of distinctiveness
The following disclaimer restricts the scope of the trademark in question (USPTO No. 2695014): “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “JOINT” APART FROM THE MARK AS SHOWN”. Indeed, the trademark designates products to relieve joint pain. Admittedly, the restriction relates only to the word “joint”. However, “joint” is associated with the superlative “max” which suggests a product’s quality or characteristic. As a result, the vitality and scope of the trademark are lowered. Panelists are not competent to rule on the validity of a trademark. However, the panelists can decide on the trademark’s distinctiveness, taking into account the circumstances of the case. A trademark made up of generic or descriptive words is less resistant. This principle, a pillar of trademark and UDRP laws, was applied in many decisions involving trademarks and domain names composed of two generic or descriptive words. Many of them are unfavorable to the trademark owner, i.e:
3. The domain name lifecycle
The life cycle of a domain name is divided into three significant periods. The first is the registration period, which covers the period of time for which the domain name is registered. At the end of the registration period, the registrar has an obligation to notify the domain name holder of the imminent expiry of the registration contract. On this occasion, the registrar invites the domain name holder to renew the domain name. In the absence of renewal, the grace period begins during which the domain name holder still has the possibility of renewing the domain name with the help of the registrar. Finally, if the domain name is still not renewed, a new phase starts, called the “redemption period“. Here, the domain name can be renewed directly with the competent registry.
Throughout this process, at each stage, the registrar notifies the domain name holder several times, following the Expired Domain Deletion Policy (known as “EDDP”: icann.org), adopted in 2009 by the Internet Corporation for Assigned Names and Numbers (ICANN) and imposed on all accredited registrars. However, under the EDDP, the domain name holder may rely on “extenuating circumstances” such as legal proceedings or bankruptcy (art. 3.7.5.1 of the EDDP: icann.org
4. Inadvertence or negligence?
The use of the word “inadvertence” is relatively frequent in out-of-court decisions involving complainants requesting the transfer of a domain name that they have failed to renew. “Inadvertence” contains no legal reality, unlike “negligence”. By choosing “inadvertence”, the complainant surreptitiously invokes the leniency of the panelist (errare humanum est…), while “negligence” ostensibly refers to the complainant’s omission. In any case, panelists are subject to a duty of impartiality.
5. Complainant’s negligence and defendant’s bad faith
Can the complainant’s negligence dispel the respondent’s bad faith? The legal provisions governing the UDRP cannot be interpreted as mitigating the respondent’s bad faith when the complainant made a mistake in managing its domain name. There are many transfer decisions to support this assertion (see not. WIPO, D2001-0670, The Governing Council of the University of Toronto v. Polanski, July 9, 2001, <utoronto.com>, Sole panelist Clive L. Elliott ; WIPO, D2002-0009, Enterbrain Inc. v Domain For Sale/Email Your Offers!, February 25, 2002, <famitsu.net>, transfer; sole panelist Warwick Alexander Smith ; WIPO, D2014-1662, Austrian Airlines AG v. Protection Domain, November 25, 2014, <austrianairlines.com>, transfer ; sole panelist November 25, 2014).
However, when the complainant relies on a trademark whose scope and strength are diminished by its intrinsic characteristics (for example, low distinctiveness) and the lack of notoriety, proving the lack of right/legitimate interest and the bad faith is more complicated. For example, the request for transfer of the domain name <radioitalia.com> was rejected in part because of the descriptive nature of the trademark “RADIO ITALIA” ((WIPO, D2010-0329, Radio Italia S.p.A. v. Mdnh Inc, Brendhan Hight, May 14, 2010, <radioitalia.com>, denied ; panel Warwick A. Rothnie (pres.), Massimo Introvigne and Alan L. Limbury)). Similarly, transfer requests relating to the domain names <upim.info> (trademark acronym “UPIM”; WIPO, D2021-1691, OVS S.p.A. v. Kiyoshige Takeda, Kiyoshige Takeda, November 27, 2021, <upim.info>, denied; sole panelist Douglas Clark), <cecia.com> (trademark “CECIA” which may also refer to a first name; WIPO, D2021-2504, CECIA v. Abid, AbidNetwork.com, September 21, 2021, <cecia.com>, Matthew Kennedy), or <moanapacific.org> (trademark consisting of the combination of a first name and a place name; WIPO, D2021-1742, Association of Apartment Owners of Moana Pacific v. Robert Allman, Moana Pacific Association of Apartment Owners, September 7, 2021, <moanapacific.org>, denied; sole panelist W. Scott Blackmer), were rejected.
Besides, there are exceptions to which it is reasonable not to give too much credit. The history of the domain name <hra.com.au> is unusual. Twice, the domain name expired, was re-registered by a third party, was the subject of a auDRP procedure in which the same complainant explained that it had omitted to renew the domain name. Twice, the complainant proved the respondents’ bad faith. In both cases, the respondents did not participate in the procedure, which made more effortless the decisions to transfer the domain names (WIPO, DAU2016-0017, Harness Racing Australia Inc v. Electronic Communities Pty Ltd, May 9, 2016, <hra.com.au>, transfer ; sole panelist James A. Barker et WIPO, DAU2011-0007, Harness Racing Australia v. Acronym Wiki Pty Ltd v. May 13, 2011, <hra.com.au>, transfer; sole panelist John Swinson). The second part of the adage errare humanum est, perseverare diabolicum was not implemented. However, the complainant owes its salvation only to the lack of opponents. In the same vein, the transfer decided in the WIPO case D2009-1356, which also concerns a three-letter acronym (<mid.org>) was mainly motivated by the respondent’s blatant bad faith (WIPO, D2009-1356, The Royal National Institute for Deaf People v. Galina Budko N.A., December 15, 2009, <rnid.org>, transfer; sole panelist Desmond J. Ryan AM).
Conclusion
The Forum FA2112001976154 <jointmax.com> case illustrates again and wonderfully the need for the owners of so-called “weak” trademarks to maintain a high level of vigilance in the management of domain names.
