This article first appeared on WTR Daily, part of World Trademark Review, in March 2012. For further information, please go to www.worldtrademarkreview.com.
Under the Uniform Domain Name Dispute Resolution
Policy (UDRP), there can be a relatively fine line between
the permissible use of an acronym as a domain name and the
impermissible use of a trademark. In CEAT Limited v
Vertical Axis Inc (Case D2011-1981), a split decision
by a very experienced three-member panel has highlighted the
vagaries and fact-dependent nature of these cases.
The complainant, CEAT Limited, is a tyre
manufacturer based in India. It owns:
- a number of trademarks consisting of, or including, the term 'CEAT', dating from as early as 1961; and
- a number of domain names incorporating its CEAT mark which postdate the disputed domain name by several years.
The respondent, Vertical Axis Inc, is a Barbados-registered
domain name holding company. It submitted that it registered
'ceat.com' in 2001 as part of a volume registration
programme of acronyms as domain names and subsequently used it as a
pay-per-click parking page which included an offer to sell the
domain name.
The majority of the panel found that the respondent had no rights
or legitimate interests in the domain name, and was making an
improper use of the domain name to divert internet traffic to its
website. The majority held that it was not legitimate to register
an acronym as a domain name and to use it for a pay-per-click
parking page in circumstances where the acronym was also a
trademark, had no descriptive meaning and was not used for related
sponsored links.
Although accepting that the respondent was a domain name speculator
and used automated processes for registering acronyms and domain
names, the majority found that the respondent could not be
"wilfully blind" and that it was incumbent upon it to
check that it was not illegitimately using a trademark. The fact
that the respondent hid its identity behind a privacy service when
registering the disputed domain name, with no apparent reason for
doing so, and that the website featured an offer to sell the domain
name, confirmed the majority's view of the respondent's
registration and use of the domain name in bad faith.
The dissenting panellist found on the facts that the disputed
domain name was in common usage as an acronym and abbreviation and
that, during the 10 years since the domain name had been
registered, there was no evidence of "targeting" of the
complainant by the respondent. Rather, the respondent had used the
domain name to promote legitimate and non-competing services
through pay-per-click links. Finding as a matter of fact that the
respondent's reputation at the point of registration was not
substantial outside India, the dissenting panellist had difficulty
in seeing why the respondent would have, or should have, been aware
of the complainant and proceeded on the basis that
"actual" and not "constructive" notice is
required under the UDRP.
The acknowledgement by both parties that 'CEAT' was an
acronym and the respondent's use of it for activities
unconnected with the complainant confirmed the dissenting
panellist's view that there was no violation of the
complainant's trademark rights or breach of the UDRP. Moreover,
he noted that the use of a privacy shield cannot by itself prove
something as significant as bad faith. Finally, the dissenting
panellist underlined that a general offer to sell a domain name
does not amount to bad faith under the UDRP – it is only
an intention to sell to a complainant trademark owner or its
competitor that is indicative of bad faith. As a result, he found
that the respondent did have legitimate interests in the disputed
domain name and had not acted in bad faith.
In broad principle, an acronym should be available to anyone for
use in top-level domain names, unless there is evidence under the
UDRP that it is being used to trade off someone else's
goodwill, or has been registered and is being used in a manner
which otherwise imputes bad faith. Arguably, there is no reason why
the use of an acronym for entirely unrelated links on a
pay-per-click parking page should, all other things being equal,
amount to an illegitimate use under the UDRP. Although it is always
risky to comment on a panel's determination in this kind of
case without having seen the evidence exactly as presented, neither
does there seem to be a strong case that the respondent was taking
advantage of the complainant's trademark and had registered and
used the domain name in bad faith.
Certainly, the dissenting panellist was very firmly of the view
that the respondent was most unlikely to have been aware of the
complainant at the date of registration and was not targeting the
complainant. Although the use of a privacy service, or the use by a
domain name broker of a sale notice, may in some circumstances be
additional indicia of bad faith, they do not on their own support
such a finding. He also noted the complainant's unexplained
delay in bringing its complaint (some six years after registering
its various other 'CEAT' domain names) which suggests that,
at that time, it had either not been concerned about the
respondent's activities, or did not consider that the
respondent's registration and use amounted to bad faith.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
