The value of generic dictionary words
There is a bit of a disconnect between the physical world of business and trademark, and the Internet world of domain names and, importantly, search. In the physical world, everything hinges on branding, recognizability, fame — a “mark” that is generic or descriptive in nature, like “Tissues,” is generally speaking not a mark at all, because it could refer to a huge number of different products made and sold by different businesses.
But in the Internet world, where domain names act as the real estate where business and commerce happen, there’s real value in these words. Why? Because people are often using these generic words when they’re searching for something through one of the many search engines. A user might search for “travel agency,” and then perhaps narrow it down to “hawaii travel agency.” There’s probably a million such businesses (having been to Hawai’i, let me assure you, it is well deserved, the place is just awesome, particularly Maui), but only one of them could own, for example, hawaiitravelagency.com. Indeed, that’s an interesting site to look at, because note how they don’t claim a trademark or service mark right in their name, but put their company name “A division of Vacations To Go” underneath? Would anyone ever search for “vacations to go”? They might, if they knew about the business beforehand (I didn’t until just now), but I guarantee you that many, many more would search for “hawaii travel agency.”
And that’s the value of generic words in domain names, even if there is little or no trademark or service mark value.
As a case in point, a recent WIPO decision denied a complaint against TicketsNetwork.com. The Complainant had obtained a federal trademark registration on TICKETNETWORK in 2005, although it originally filed in 2003. But the Respondent pointed out that this registration was filed after the domain name was registered, and even claimed that it had done some due diligence before registering the domain name and found no existing trademarks that would cause it any concern in registering the domain name at that time.
Assuming that the Respondent conducted a search of the USPTO trademark database before registering the disputed domain name, it is clear that such a search would not have disclosed the Complainant’s mark. Nor, based on the record before this Panel, can it be said with any certainty that an Internet search would have alerted the Respondent to the Complainant or the Complainant’s asserted rights in the TICKETNETWORK mark. As noted above, the Panel has no means of determining from the record how long the Complainant has had a web presence, and the Complainant’s own website indicates it was not founded until 2002, and then as a software development company. (emphasis added)
Although this discussion occurs under the Rights or Legitimate Interests heading of the Panel’s decision, this really speaks directly towards the bad faith registration of the domain name. Where a registrant is wholly unaware of a complainant’s mark at the time of the registration, logic and common sense dictate that there can be no bad faith, absent some other circumstances.
The Panel went on to grouse about the generic nature of the claimed mark, or at least it’s descriptiveness:
In addition, the TICKETNETWORK mark when used with the Complainant’s online ticket exchange service does not have a high degree of inherent distinctiveness, and to some degree might be considered descriptive in relation to that business. The Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. See also National Trust for Historic Preservation v. Barry Preston, supra.
The Panel didn’t feel that it was at all clear that the Respondent was seeking to capitalize on the good will created by the trademark owner, however small that good will might be. And, as I pointed out above, it went on to decide the case on the basis of a lack of evidence of bad faith registration:
After careful consideration of the totality of facts and circumstances in the record, the Panel finds that the Complainant has not satisfied its burden of demonstrating that the Respondent registered the disputed domain name in bad faith. For the reasons discussed under the preceding heading, the Panel is unable to conclude based on the record before it that the Respondent registered the disputed domain name seeking to profit from and exploit the Complainant’s trademark rights [because such rights didn't exist at the time of registration].
One final, and important, note. In using a domain name like this one, which was used as a parked page with pay-per-click advertisements related to “tickets” and travel and suchlike, if there had been any evidence that the ads were targeted at tarnishing the mark (as through pornography) or intentionally misleading customers to click on competitors, etc, then the Complainant may have had a much stronger argument. There just doesn’t seem to be any evidence of that nature here.
Tagged bad faith registration and use, denied, evidence, generic keywords, gtld, ppc, registered trademarks, rights or legitimate interests, WIPO