Among the types of trademarks that suffer from their coexistence with domain names, weak trademarks stand out, and especially acronym trademarks (see, for example, “Trademarks and domain names: it’s hard to be an acronym trademark!“) and generic trademarks (for a typical example, see Thesun.com: “the sun shines for everyone”).
Warner Bros. Entertainment Inc. failed to recover the domain name dumbledore.com in a proceeding conducted under the auspices of the National Arbitration Forum. Warner Bros. argued that this domain name was identical to its trademarks “Dumbledore,” derived from the Harry Potter series of novels, written by JK Rowling, and referring to the character of Albus Dumbledore, the mentor of the main character, Harry Potter (NAF, FA2002001881913, Warner Bros. Entertainment Inc. v. Karl Allberg , February 19, 2020).
It appears from the decision that the domain name dumbledore.com was created in 2004 and that its holder, Mr. A., would have acquired it in 2019.
In its complaint, Warner Bros. demonstrated the fame of the series, and incidentally that of the trademark “Dumbledore”, by a set of figures concerning the Harry Potter series. The process was aimed at ensuring that no one could ignore Dumbledore.
Since Warner Bros. indicated that it never authorized Mr. A. to use its trademark “Dumbledore”, it was up to the defendant to demonstrate that he had a legitimate right or interest in the word “dumbledore”. To this end, the defendant built his arguments around two pillars: on the one hand, the generic nature of the name “dumbledore” and, on the other hand, the existence of a website being created.
A well-know but a generic trademark
The word “dumbledore” comes from ancient English and means “bumblebee”. It is, therefore, a generic word. Trademarks made up of a generic word (that is, most often, the words that make up dictionaries) are considered weak trademarks. This status of weakness is clearly illustrated in the commented decision:
“However, where the dispute turns on a dictionary word that can plausibly be used lawfully, it would be of no consequence that the respondent had knowledge of the complainant. Prior knowledge becomes a critical factor only when the domain name can have no other reference than to the complainant’s mark. Such is not the case in this dispute. See DK Company Vejle A/S v. Cody Favre, C4 Squared, D2019-2676 (WIPO December 17, 2019) (<shopcasualfriday.com>). It is hardly likely and would be unpersuasive that Respondent had no knowledge of Albus Dumbledore, but whether he did or did not is not material to determining the parties’ rights or Respondent’s bad faith registration.” (NAF, FA2002001881913, Warner Bros. Entertainment Inc. v. Karl Allberg , February 19, 2020)
The third-party decision maker added, with reference to decision NAF FA1009001344653, Halo Innovations, Inc. v. Name Administration Inc. (BVI), November 3, 2010 :
“‘the domain name is comprised entirely of common terms that have many meanings and that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith.’ Here, the disputed domain name is intended for a use consistent with its meaning.” (NAF, FA2002001881913, Warner Bros. Entertainment Inc. v. Karl Allberg , February 19, 2020)
Offer to sell and bad faith
The offer to sell a domain name can be considered a sign of bad faith. However, in the presence of a domain name composed of a generic word, the analysis of such an offer must be regarded with the greatest vigilance. In this case, the parties disagree, including as to whether the defendant has made an offer to sell. Never mind, said the panelist, because, in any event, it was not the defendant who took the first step. In addition, he added:
“Where the challenged domain name is a dictionary word the respondent has every right to respond to an inquiry to purchase without falling afoul of the UDRP, unless it is using the domain name in bad faith and there is proof to that effect.” (NAF, FA2002001881913, Warner Bros. Entertainment Inc. v. Karl Allberg , February 19, 2020).
In other words, according to the panelist, the initiative in making contact can weigh in qualifying in good faith or bad faith. Attention should be drawn to the fact that this solution is only rational if its scope is limited to weak trademarks.
Legitimate rights and interests: domain names and free trade
Warner Bros. claimed that Mr. A. “seemed to be in the business of buying several domains.” On this point, the decision recalls that this practice is not in itself illegal:
“In any event, these activities are routine, legitimate, and permissible on the Internet and not open to censure” ( NAF, FA2002001881913, Warner Bros. Entertainment Inc. v. Karl Allberg , February 19, 2020).
The so-called domainer activity consists of reserving domain names to profit from them by transfer, license, or any other appropriate means. In principle, this activity is not only legitimate but also protected by the freedom of trade. However, it can be considered illegal in several circumstances, in particular, when a domain name is similar or identical to a trademark (cybersquatting). In order to build their portfolio, domainers can register or acquire all kinds of domain names and, with a preference for generic words. Prohibiting, prohibiting, or limiting the registration or acquisition of such domain names would be contrary to freedom of trade. This is what emerges from the commented decision:
“The disputed domain name is a dictionary word that by happenstance corresponds to one of the words in Complainant’s trademark. Complainant does not have a trademark for the word “dumbledore” standing alone. It may be that aficionados steeped in Harry Potter lore will instantly associate “dumbledore” with the fictional character, and possibly with the trademark owner, but that is not enough to grant Complainant a monopoly on a word that has meanings beyond that conveyed by the mark. A dictionary word domain name that corresponds to a word in a trademark is not presumptively abusive of third-party rights. Use alone will determine the outcome of rights. If Respondent is found to be using the domain name in bad faith it will support registration in bad faith, but there can be no abusive registration without proof of use in bad faith.” (NAF, FA2002001881913 , Warner Bros. Entertainment Inc. v. Karl Allberg , February 19, 2020).
Domainers have a comprehensive knowledge of the domain name market. They position themselves, in principle, as direct and legitimate competitors of the owners of weak brands.
Legitimate rights and interests: “site under construction”
Article 4.c.i) of the UDRP Principles states that:
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” (Uniform Domain Name Dispute Resolution Policy, icann.org)
In this case, the defendant assured that he had been unable to add content to the dumbledore.com website for lack of time. The chronology is worth remembering:
– “August or September 2019” (according to the decision): acquisition of the domain name; and
– February 4, 2020: filing of the UDRP complaint.
Therefore, the period of time between the acquisition of the domain name and the filing of the complaint is about five or six months. Meanwhile, Mr. A., did not have the time to add content to the dumbledore.com website. Perhaps he was planning to write an exhaustive encyclopedia on bumblebees or to raise funds for the safeguarding of bees. After all, such websites would deserve to exist via a domain name like dumbledore.com, capable of offering a positive impact to a cause often deemed to be important for the preservation of the environment. Alternatively, maybe MR. A. was not a philanthropist, and perhaps he acquired dumbledore.com by cherishing the hope of reselling it by making a substantial profit. The fact remains that Mr. A. claimed that it had made some investments for the construction of a website. Hence the following question: could the preparations for Mr. A. be described as “demonstrable preparations to use” within the meaning of Article 4.c.i)? At most, Mr. A. proved that he had invested in the form of a WordPress subscription. Is this demonstrable? Unfortunately, the decision does not reveal the date of this subscription. On the one hand, assuming it is after the date Warner Bros. initiated contact with Mr. A., this would be likely to demonstrate that the latter would have made this investment in precipitation and without any real interest in bumblebees.
On the other hand, if the date of purchase coincides more or less with that of the acquisition of the domain name, this could reveal a serious intention to build a website. Be that as it may, for the panelist, it is all a question of circumstances, thus recalling the solution adopted in decision D2004-0939 (WIPO, D2004-0939, See DigiPoll Ltd. v. Raj Kumar, February 3, 2005 ). Above all, the status of weak trademark plays a role in the intensity of the evidence that the opposing party must provide:
“‘When domain names are identical, it follows that the reasons for choice must be more specific and convincing to pass the credibility test. The bar is lower with dictionary-word domain names” ( Gullivers Travel Associates v. Gullivers Travel /Gulliver’s Travel Services, Gullivers Travel Agency and Metin Altun / GTA, D2004-0741 (WIPO, December 16, 2004) “.
In other words, in the presence of a weak trademark, superficial preparations to use are enough to demonstrate a legitimate right or interest and to defeat the transfer request. And the panelist adds:
“The Panel finds Respondent’s explanation for acquiring the domain name for a specific purpose consistent with its meaning and his first steps to consummate the intention plausible. Where a disputed domain name is composed of a dictionary word a respondent is not constrained to ‘use it or lose it.’ Here, Respondent states he intends to use <dumbledore.com>and outlines the content of the website in his Response, but even if he did not follow-through with this intention, the law does not decree forfeiture absent evidence of bad faith use.
This is particularly so where the content of the website bears no relation whatsoever to Complainant’s trademarks. If a registrant wants to educate the world about bumblebees there is no reason that it should not be allowed to do so unthreatened by forfeiture” (NAF, FA2002001881913, Warner Bros. Entertainment Inc. v. Karl Allberg , February 19, 2020).
In short, the debate on the existence or non-existence of demonstrable preparations weighs very little in the presence of a weak trademark.
It follows from the above that an additional question deserves to be raised: how much time should be given to the domain name holder to build (or not build) a website? Countless extrajudicial decisions show that the more time passes, the less the weight of the “site under construction” argument is. It is irrebuttable. Therefore, should we give time and, during this time, monitor the use made of the domain name? Several hypotheses should be distinguished. I will retain two. First, if the trademark is highly distinctive, the answer is generally negative. In most cases, it is appropriate and sufficient to act promptly. Second, if the trademark is weak, time can be the accomplice of its owner. In this case, surveillance is necessary to watch for the occurrence of any indication likely to demonstrate the bad faith of the domain name holder. In this case, the time that had elapsed between the acquisition of the domain name and the filing of the UDRP complaint was five or six months, and, eventually, the website was nourished in a very superficial manner after the filing of the complaint. Given that the domain name relates to a generic word, perhaps it was necessary to maintain the monitoring in the hope that the content of the site would concern the universe of Harry Potter.
Conclusion: strategy
The owners of weak trademarks must adopt a strategy aimed at building up a robust domain name portfolio. There are many solutions, and we can help you.
