2014_rosie_the_riveter_flexing_her_arm_muscles_we_can_do_itIt is often noted in UDRP decisions that the strength of a trademarkis not relevant to the determination as to whether or not the domain at issue is confusingly similar to the Complainant’s mark.  On this issue panels do not usually get involved in assessing the strength of the trademark at issue.  This can be confusing for attorneys and lay people alike who look at UDRP decisions which concern common names/terms, and are confused when the decision does not discuss the strength of the mark as a factor.

The often cited support for this is Policy Rule 4(a) which only speaks to whether the Complainant has rights and whether the domain is identical to the mark at issue. See Vance Int’l, Inc. v. Abend,FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)).

Thus, arguments that the domain at issue is an often used term or has a generic meaning usually fall short under this part of UDRP analysis.  There is the exceptional.  For example, in Starwood Hotels & Resorts Worldwide, Inc., Case No. D2011-0781 the arbitrator held that even though there was obvious bad faith and no legitimate rights held by the Respondent, because the mark at issue “W” (for the W Hotels) was so weak that even attaching geographically descriptive terms to the mark was enough to distinguish it from the Complainant.  In that case the panel cited the test for confusing similarity in the following manner:

“[t]he threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms … typically being regarded as insufficient to prevent threshold Internet user confusion.” (citation omitted)

Thus, having a mark which is identical to a part of the domain is usually enough to pass the confusing similarity test even if the mark is weak or descriptive.

A panel is more likely to factor in the relative strength of a mark when looking at whether there is evidence of bad faith – so that a Respondent that registers a domain name that is descriptive or commonly used can make the argument that it did not register the domain in bad faith because it is not uniquely associated with the Complainant and, thereby, that the Respondent did not have the Complainant in its crosshairs with the intent to divert business or confuse customers.  See Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where Respondent used the descriptive domain name thelowestfare.com to lead consumers to site which listed low fare air tickets).

In True Value Company v. Tackle Tamer a recent NAF case, the domain at issue was www.greenthumbstuff.com. The Respondent did not file a response, so the panel did not have the other side weighing in with their arguments, but I was struck that there was no discussion of the fact that the term “green thumb” is one that is commonly used throughout the gardening community. A simple Google search for the term “green thumb” turns up multiple third parties using the term and a search of the USPTO database finds 117 references which include the term. At the very least the “bad faith” element of looking at whether the Respondent was acting with the requisite intent would seem to require looking at how the term can fairly be used and how it could be unfairly used – a conversation that cut’s directly to the relative “strength” of the mark.

Although I don’t necessarily think the panel got this decision wrong, the decision lends itself to questions without an analysis of this issue.

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